14.6 Permitted Uses of University IP

14.6.1 Agreements with Third Parties

As part of their University activities, Policy Subjects may (i) be requested to enter into agreements with third parties; or (ii) seek that the University enters into agreements with third parties. By way of example, such agreements include material transfer agreements (MTAs), collaborative/joint research agreements, sponsored research agreements, consulting agreements, visiting scientist agreements, non-disclosure agreements, assignments of Intellectual Property Rights, or donation agreements tied to University IP or future University IP.

In addition to their review by the General Counsel Office, TDIC shall review all agreements relating to University activities that stipulate terms on Intellectual Property prior to their signing and the Executive Vice President for Technology Development and Innovation shall have authority to approve terms that differ from those set out in this Policy, including, without limitations, terms relating to ownership, assignment or otherwise.

Once the University has entered into an agreement with a third party that stipulates terms on Intellectual Property, all Policy Subjects who are involved with the performance of such an agreement shall act in accordance with its terms. The Policy Subject(s) heading the performance of the agreement shall be responsible for informing all other relevant Policy Subjects of the aforementioned terms.

Although non-disclosure agreements may conflict with the University’s Openness in Research Policy and the objectives of OISTIR, the University may enter into limited non-disclosure agreements for Intellectual Property protection and commercialization. In negotiating non-disclosure agreements, the University endeavors to minimize restrictions on the publication of the research carried out in the University's laboratories.

14.6.2 Public Domain

Creators wishing to see any University IP they Created placed in the Public Domain shall address a joint written request to TDIC, which may, at its sole discretion, place such University IP in the Public Domain.

The University will not assert its rights over any University IP thus placed in the Public Domain.

University IP shall not be placed in the Public Domain if doing so may violate the terms of any agreement that supported or governed the research from which such University IP is derived.

14.6.3 Public Disclosure

Consistent with the University’s Openness in Research Policy and the objectives of OISTIR, the University supports the publication of research results for research and educational purposes and Policy Subjects can make a Public Disclosure of such results for the exclusive purposes of research and/or education; provided that, a Policy Subject shall not make any Public Disclosure relating to, or including any reference to, University IP, without having first (i) disclosed and given the opportunity to protect such University IP to the University in accordance with 14.5; and (ii) confirmed that the Public Disclosure is permitted under the terms of any agreement relating to such University IP.

14.6.4 Distribution of University Authored Works

Policy Subjects shall ensure that all University Authored Works are published or distributed with the following notice:

Copyright © [year of publication] Okinawa Institute of Science and Technology Graduate University. All rights reserved.

No other institutional or divisional name is to be used in the notice, although the name and address of the relevant OIST section or research unit to which the audience can direct inquiries may be listed below it.

The year in the copyright notice should be the one in which the relevant version of the University Authored Works is first published or distributed.

14.6.5 Additional Rules for Software

Creators shall consult TDIC prior to distributing a University-owned software for research purposes where (i) such software has commercialization potential; (ii) the Creators want to control subsequent uses of such software; or (iii) an agreement governs the research from which such software is derived.

The University supports the exploration of open-source software solutions in any areas of application for research use. The University encourages all Policy Subjects involved in software development for research purposes to make University-owned software available under open-source license terms (for example, the GNU General Public License), and to contribute, as appropriate, to existing open source software projects. However, Creators shall consult TDIC in relation to the license terms prior to making a software that they determine, in good faith and using their best judgement, is a Disclosable University IP so available.

University-owned software developed or to be developed under open-source license terms may be commercialized and used in industrial applications. Creators shall consult TDIC as soon as such opportunities or intentions arise.

14.6.6 Additional Rules for Trademarks

Policy Subjects shall consult the Office of Communication and Public Relations for information concerning the use of trademarks representing the University, such as its name and logo.

Policy Subjects shall consult TDIC for information concerning the registration or use of any other trademarks that relate to University IP.

14.6.7 Additional Rules for Tangible Research Property (TRP) Control of TRP
Each faculty member (or project head, if TRP is developed as part of a cross-units project) shall control the development, storage, use, and distribution of TRP made in the course of his/her research activities, subject to applicable laws, the University’s policies and the terms of any agreement with sponsor(s) of the research from which such TRP is derived. Such control includes determining if and when distribution of the TRP is to be made beyond the University for use by others. Dissemination of TRP
The Office of the Provost administers all agreements relating to the distribution of TRP to, and receipt of TRP from, non-commercial entities, such as other universities, research institutions, government bodies, and not-for-profit organizations. TDIC administers all agreements relating to the distribution of TRP to, and receipt of TRP from, commercial entities

Agreements relating to the distribution of TRP, whether with commercial or non-commercial entities, may only be entered into in accordance with the provisions of 14.6.1.

The normal course of business to provide any University’s TRP to a third party for commercial purposes shall be through a licensing agreement, from which the University may receive license fees and/or royalties. However, subject to the prior written consent of the Executive Vice President for Technology Development and Innovation, the University is entitled to sell TRP for commercial purposes.

The University distributes TRP for non-commercial research and educational purposes free of charge, provided that the actual costs necessary to prepare and distribute TRP may be charged to the receiving party.

Table of Contents