An Administrator's Guide to California Private School Law

Chapter 20 - Intellectual Property

D. P ATENTS “A patent for an invention is the grant of a property right to the inventor” [and] is issued by the United States Patent and Trademark Office.” 2600 Federal patent law is governed by a complex set of statutes and regulations that are interpreted by Patent and Trademark Office examiners and federal courts. 2601 Accordingly, the application process and litigation concerning patents is beyond the scope of this section. E. I NTELLECTUAL P ROPERTY P OLICIES It is recommended that schools place teachers and administrators on notice of the school’s ownership of materials created by employees in the course of employment. Schools should develop specific Intellectual Property polices to help the school manage and maintain intellectual property assets. As a best practice, the policies should be included in the school’s employee handbook and/or employment agreements. Such policies foster creation of new intellectual property and delineate an employee’s rights and responsibilities. The policies will also help minimize potential misunderstandings regarding intellectual property ownership and limit the school’s liability in this area. F. I NTELLECTUAL P ROPERTY I SSUES A RISING IN V ENDOR C ONTRACTS Vendor contracts with schools are likely to include provisions related to intellectual property. Schools should carefully evaluate the language in the contract and determine whether particular provisions are appropriate under the circumstances. Below are a list of common intellectual property issues in vendor contracts that schools should pay attention to:  Copyright . Software vendors will likely want to retain the copyright to their

software. If a school hires someone to develop software, by default that software will likely belong to the developer not the school. If the school wishes to retain the ability to use the code the contract should explicitly state the school owns the software, the vendor assigns the rights of the software to the school and the school has obtained an appropriate written license that covers the software. If the software vendor owns the copyright, the vendor can grant the school the use of the software through an express license. A license represents the permission of the owner to use, copy, distribute, or create other works from a copyrighted work. However, software vendors can restrict the scope of the license. Schools should tailor the scope of the license to suit their business needs.  User Restrictions . Vendors will try to impose requirements on “Users” of the software. The school must identify who are the “Users” and whether the school has the authority to contract on behalf of “Users.” Many times, the school does not have such authority and the contract provisions must be tailored accordingly.

An Administrator’s Guide to California Private School Law ©2019 Liebert Cassidy Whitmore 618