What am I being asked to do?
At the request of a faculty member, Emerson is entering into an agreement with a third party (likely a foundation or corporation) to perform research or otherwise develop some work product. The third party’s agreement for the sponsored project requires that Emerson either license the intellectual property to the third party or transfer ownership to the third party outright. In order for Emerson to perform such obligations under the agreement, it must gather up those rights from all contributors in the first instance so it can in good faith agree to the third party’s terms.
Because Emerson’s default intellectual property policy is that faculty own all their IP in their work, in order for Emerson to give the rights to the third party, the faculty members must assign the rights to Emerson. The same is true for students who are not working as employees of the Engagement Lab. Collaborators and consultants who are not employed by Emerson also must execute particular documentation to assign their intellectual property to the College. When the agreement with the third party permits, Emerson will license back to faculty their intellectual property.
Does this represent a departure from the College’s IP Policies?
No, nothing has changed in those policies at all. It is consistent with the College’s IP policies. The IP policies state that the terms of the third party agreements must govern. This is procedural clarification about using particular documents to comply with the terms of sponsored projects should you wish to participate in them.
Isn’t this all unnecessary? Don’t the College’s IP policies automatically transfer the rights to the College in the case of sponsored projects?
No. That is the case at many other institutions with stricter blanket rules for assignment of IP. Emerson has a much more open approach to IP ownership and defaults to faculty. With sponsored projects where the projects require a license or assignment, Emerson will agree with the faculty member at the outset and document the assignment of the IP to Emerson so Emerson in turn can fulfill its legal obligations to then assign or license the IP to the sponsor. The relevant policy language states, “The College will make commitments regarding ownership of a faculty member’s Work only with the faculty member’s consent at. The time of the grant application.” We are formalizing that process of consent.
During the pre-approval stage for grants, you will be asked to confirm that you agree to sign the necessary documentation. Once there is a contract, we will provide you the assignment documents we deem appropriate given the terms of the agreement. Since at that point, we will know the contract terms, the assignment document will also include the license back we are permitted to allow. We will always negotiate for broad rights for faculty to protect their scholarship and research needs.
Can I still use my research? Can I still retain any rights?
Unless the sponsor requires otherwise, Emerson will license the work back to you to the fullest extent possible under the contract.
Can I just sign one document?
While it is possible to sign just one document to assign all of your work for the Engagement Lab projects, we couldn’t do a single license back because the terms of the license to the individual work will always be governed by the terms of the agreement with the external sponsors and could vary greatly. The feedback that we have received is also that it is undesirable to have those blanket assignments without the licenses specified.
Accordingly, the College will do a separate agreement with each faculty member that has two main components: (1) assigning the IP to the College so the College can comply with the sponsored project agreements; and (2) granting a license back to the faculty member in as broad terms as possible consistent with those third party obligations.
Will Emerson ever refuse to license the IP back to me?
Only if such a license back is inconsistent with the sponsor’s terms. If you are the PI and involved in the contract formation, you’d be aware before the College ever agreed to such terms. If you are being asked to participate to support an existing agreement, whoever is coordinating your participation would make you aware before you agree to sign an assignment.
Why would Emerson ever agree to a contract that forces the College to assign all ownership to a third party sponsor?
Our default is to avoid that scenario but sometimes the third party sponsor insists on such terms. When faced with such terms, if the faculty member who wants to take on the collaboration wants to agree to the contract anyway, we will of course defer to that faculty member’s judgment.
Who needs to sign agreements?
Faculty members, students who are not working as College employees in the Engagement Lab, and any third parties such as consultants or contributors from other institutions.
Who does NOT need to sign agreements?
Non-faculty staff members of the Engagement Lab and student workers in the Engagement Lab. Under College policies, the College already has the rights to such work.
Why is it important for Emerson to have the ownership of the IP in order to comply with the sponsored research agreements?
The agreements require that Emerson – not the individual faculty members – assign or license the work product to the sponsor. Accordingly, Emerson must have such rights in order to grant them to other people. These agreements often also require Emerson to represent that it has these rights and will pay for any legal fees that the third parties encounter if someone accuses them of infringement.
What if I am heading up a sponsored project and I leave the College?
In that case, we would work with the sponsor to find a way to “relinquish” the grant and cooperate with you to transfer the project to you if you want to bring it with you to a new institution.
Can we give a license back to one of our collaborators who doesn’t work at Emerson?
If the sponsor’s terms allow and it wouldn’t be inconsistent with Emerson faculty members’ ability to use the work in the future, we are happy to discuss how to do this. We wouldn’t, for example, want to grant rights that would later hamper your ability to publish on a project or the Engagement Lab’s need to use software code.
What if one of our collaborators works at another college?
That person will still need to assign the contributions to us so we can deliver on our contractual promises to license the work to the sponsors. In some cases, that individual may work at an institution with a default where the institution owns all of the individual’s work in certain settings (for example, using that college’s resources). We must respect other colleges and our collaborators, so we may need another institution to sign a waiver or collaboration agreement with us.
What about projects that involve use of College resources or significant investments of College funds?
The College IP policy addresses these projects, which are different from the third party sponsored projects we are focusing on here. Unlike other institutions, Emerson’s default is that the faculty member still owns the IP. Under the policy, Emerson does obtain a license to such work, but in most cases, not ownership. Per the policy, there may be situations in which the College conditions the financial support on the College’s ownership of the work. Consistent with the policy, this would be asserted in writing at the outset and the faculty member would receive a license.