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Policy 313 - Patent Policy

313. Patent Policy

Purpose

The University expands the boundaries of knowledge and insight through research, artistic expression, and other forms of scholarship. Inventions may emerge from basic and applied research endeavors. Patenting an invention is often an essential step to fully realizing societal benefits emerging from new knowledge and technologies. Through this patent policy, the University seeks to encourage the development of new inventions and patents and to recognize that it is primarily through discovering, communicating, and applying knowledge that the University exercises institutional responsibility as a voice of reason and conscience in society.

Definitions

Invention: any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.

Inventor: any full- or part-time University faculty, staff, students, postdoctoral fellows and others who use University funds, facilities or other resources, or participate in University-administered research who contributes to the conception of an Invention using any University resources.

Incidental Invention: an Invention that is conceived or reduced to practice in whole or in part making an incidental use of space, facilities, materials or other resources provided by or through the University. Use of an office, the library, and desktop computer is considered to be the incidental use of space, facilities, materials or other resources.

Supported Invention: an Invention conceived or reduced to practice in whole or in part

Assigned Invention: an Invention conceived or reduced to practice in whole or in part as a result of activities related to the Inventor’s assigned employment responsibilities.

Policy

Disclosure

Inventors are required to complete and to submit an invention disclosure to the Office of Research Initiatives for any type of Invention. Well before submitting a disclosure, Inventors may notify the Office of Research Initiatives of potential Invention development so that the Office of Research Initiatives can assist in readying the potential Invention for patent application.

Ownership

Upon review of the disclosure, the Office of Research Initiatives will determine whether the Invention shall be classified as an Incidental, Supported, or Assigned Invention. Ownership will be determined as follows.

Ownership of an Incidental Invention shall remain with its Inventor, subject to any rights owned by the University as required by this policy or voluntarily assigned by the Inventor to the University.

The University owns Supported Inventions and Assigned Inventions. In addition, each Inventor agrees to confirm in writing the Inventor's assignment to the University of all of his/her right, title, and interest in each Supported or Assigned Invention.

Supported Inventions that involve an external sponsor are owned by the University unless otherwise agreed by the University in a separate written third-party agreement between the University and a sponsor. Such a separate agreement may provide some or all rights in the Supported Invention to the third party.

The University ordinarily waives its rights to Inventions by student Inventors developed as part of normal educational activities except when the Invention:

  1. is a Supported Invention;
  2. results from a student’s employment with the University;
  3. involves faculty and/or staff contribution including faculty-mentored academic year or summer research (e.g. undergraduate research projects, thesis research, and faculty-mentored independent projects);
  4. is by a student who is also an employee of an entity sponsoring the work; or
  5. is part of a larger University work or specifically commissioned by the University.

Release of Inventions

An Inventor may request release of a University-owned Invention at any time. The University may agree to a release and, in such case, will assign in writing all interest which it holds or has the right to hold in the Invention to the Inventor. In addition, when the University, through the Office of Research Initiatives, determines that it will not file a patent for a University-owned Invention, the Invention will be released to the Inventor.

University Rights in Incidental Inventions

In recognition of the contribution the University community as a whole makes in support of innovation at the University, as of the time University employment begins, Inventors grant to the University an irrevocable, perpetual, non-exclusive, royalty free, world-wide right to use an Incidental Invention in the University’s non-profit educational and research activities.

Inventor Rights in Inventions owned by the University

In recognition of the need of the Inventor to be able to use an Invention in the Inventor’s University-related educational and research activities, the University agrees, to the extent permitted by any agreements, patent and licensing restrictions, or other obligations, to grant to the Inventor an irrevocable, perpetual, non-exclusive, royalty free, world-wide right to use the Invention in the Inventor’s non-profit teaching and research activities.

Filing and Prosecuting Patent Applications and Licensing

The University, through the Office of Research Initiatives, shall have the sole right, but not the obligation, to prepare, file, prosecute and maintain patent applications and patents worldwide with respect to University-owned Inventions. Through mutual written consent, Inventors of an Incidental Invention may assign ownership to the University so that a patent may be pursued by the University with royalties distributed as described in this policy.

Royalty Sharing

Where royalties are generated as a consequence of licensing an Invention owned by the University, net royalties received by the University will be determined as net of direct and indirect expenses incurred in securing and managing the patent. Of these net royalties, the University will pay 50 percent to the Inventors and the remaining 50 percent will be allocated to a separate University fund to support research and related activities. An agreement with a sponsor that allocate royalties between the sponsor and the University may be entered into with the approval of the Office of Research Initiatives.

Start-up Ventures

To fully realize societal benefits emerging from new knowledge and technologies, a patented Invention may be commercialized through a start-up venture. If an Inventor is interested in launching a start-up venture that involves an Invention owned in whole or in part by the University, then the University will work with Inventors to develop licensing terms that are mutually beneficial. Inventors interested in a start-up venture should contact the Office of Research Initiatives.


Policy Approved: September 7, 2010
Last Updated: September 7, 2010

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