OCR Document

PROPOSED (1/28/04)

PATENT POLICY

POLICY

The University of North Carolina at Wilmington (UNCW) is dedicated to instruction, research, and extending knowledge to the public (public service). It is the policy of the University to carry out its scholarly work in an open and free atmosphere and to publish results obtained there from freely. Research done primarily in anticipation of profit is incompatible with the aims of the University. The University recognizes, however, that patentable inventions sometimes arise in the course of research conducted by its employees and students using University facilities. The Board of Trustees of the University of North Carolina at Wilmington has determined that patenting and licensing of inventions resulting from the work of University personnel, including students, is consistent with the purposes and mission of the University.

The aim of this policy is to promote the progress of science and the useful arts by utilizing the benefits of the patent system consistent with the purposes for which it was established by Article I, Section 8, of the Constitution of the United States:

The Congress shall have power. . . To promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Patents provide a means to encourage the development and utilization of discoveries and inventions. This policy has been established to ensure that those inventions in which the University has an interest will be utilized in a manner consistent with the public good through patents, licenses, or otherwise. The University is also aware of the value of patents in directing attention to individual accomplishment in science and engineering. Where possible, the University should make inventions resulting from its research available to industry and the public on a reasonable and effective basis and, at the same time, provide adequate recognition to inventors. Patents and their exploitation, however, represent only a small part of the benefits accruing to the public from the research program of the University.

A portion of the research conducted by the University is supported by government and a portion by private industry. Service to the public, including private industry, is an integral part of the University's mission. In agreements with private industry or other private organizations, UNCW must keep the interests of the general public in view. The rights and privileges set forth in cooperative agreements or contracts, with respect to patents developed as a result of research partly or wholly financed by private parties, must be fair and just to the inventor(s), the sponsor and the public. Research should be undertaken by the University with support from private parties only if it is consistent with and complementary to the University's goals and responsibilities to the public.

Page 1

II.

OBJECTIVES

The principal objectives of the UNCW Patent and Copyright Policies set forth herein are:

To provide appropriate incentive to creative intellectual effort by faculty, staff, students, and others associated with the University;

To establish principles for determining the interests of the institution, inventors, and sponsors in regards to inventions and/or discoveries;

To enable the institution to develop procedures by which the significance of inventions and/or discoveries may be determined and brought to the point of commercial utilization;

To provide the means for placing in the public realm the results of research, while safeguarding the interests ofthe University, inventor, and sponsor; and

To recognize the right of the inventor to financial benefits from the invention or discovery.

III.

COVERAGE

The UNCW Patent and Copyright Policies apply to all University employees, both full and part time, including faculty, other professionals exempt from the State Personnel Act, staff subject to the State Personnel Act, and students. These policies, as amended from time to time, shall be deemed to be a part of the conditions of employment of every employee, including student employees, and of the conditions of enrollment and attendance by every student at the institution. Upon prior written agreement between persons and the University, these policies may be applied to persons not associated with the University who make their inventions and original works available to UNCW under circumstances where the further development and refinement of the inventions are compatible with the research programs of the institution.

IV.

PATENT OWNERSHIP

Ownership

With the exception of "Inventions made on Own Time," hereinafter defined, every invention or discovery or part thereof. that results from research or other activities carried out at the University, or that is developed with the aid of UNCW's facilities, staff, or through funds administered by the institution, shall be the property of the University and, as a condition of employment or enrollment and attendance, shall be assigned by the inventor to UNCW in a manner determined by UNCW in accordance with this policy.

Patent Application

Patents on inventions made by UNCW employees or students, may be applied for in any country

Page 2

by the institution or through an authorized agent(s) or assignee(s). The University shall exercise its rights of ownership of such patent(s), with or without financial gain, with due regard for the public interest, as well as the interests of inventors and sponsors concerned.

Inventions Made on Own Time

Inventions or discoveries made by UNCW personnel or students entirely on their personal time and not involving the use of university facilities or materials are the property of the inventor except in case of conflict with any applicable agreement between the institution and the federal or state government or agency thereof. For purposes of this provision, an individual's "personal time" shall mean time other than that devoted to normal or assigned functions in teaching, extension, university service, or direction or conduct of research on university premises or utilizing university facilities. The term "university facilities" shall mean any facility, including equipment and material, available to the inventor as a direct result of the inventor's affiliation with UNCW, and which would not be available to a non-university individual on the same basis.

Personnel or students who claim that inventions are made on personal time have the responsibility to demonstrate that inventions so claimed are invented on personal time. All such inventions shall be disclosed in accordance with the University's disclosure procedures applicable to inventions made on university time or with the use of university facilities, materials or equipment, and shall demonstrate the basis of the inventor's claim that only personal time was utilized. In each instance so demonstrated to conform to the definition of personal time, the University shall acknowledge in writing that the invention is the sole property of the inventor in accordance with the "waiver" provision, below.

If the inventor so desires, inventions or discoveries made on personal time and utilizing the inventor's own facilities and materials may be assigned to UNCW. Under this arrangement, the procedures will be the same as for inventions or discoveries made by University personnel on university time and/or with the use of university facilities and materials.

Waiver and Release of University Rights

Pursuant to this policy and the patent procedures, UNCW, after consultation with the inventor, shall cause its rights to subsequent patents, if any, to be waived to the inventor if the University is convinced that no university facilities, time, or materials were used in the development of the discovery or invention, that it was made on personal time, and that such waiver would not conflict with any pertinent agreement between the institution and a sponsoring agency or agencIes.

Pursuant to this policy and to the University's patent procedures, UNCW, after consultation with the inventor, may in its discretion and upon such terms as it deems appropriate, cause its rights to the discovery or invention, if any, to be released and waived to the inventor if the University is convinced that the discovery or invention is clearly one that is non-patentable, that it does not warrant further evaluation as to patentability, or if the discovery or invention has been returned to the University after negative evaluation by the university's agents.

Page 3

INCOME FROM PATENTS

The Inventor

The inventor(s), in aggregate, shall receive not less than fifteen percent (15%) of the gross royalties derived from licensing or income from assignment or sale of each patent resulting from his/her invention and owned by UNCW pursuant to this policy.

Specific Distribution

Income is first applied to reimburse the University for direct costs incurred by it in licensing and patenting the invention in question. Direct costs shall mean attorney's fees, expenses, and costs for seeking, obtaining, prosecuting, maintaining patents, and in marketing, licensing, and defending patents, trademarks, copyrights, and other licensable inventions. The net proceeds are then distributed on a 40/30/30 basis as described herein.

The inventor(s) shall in aggregate receive 40% of the net revenues, which are defined as revenues remaining after the direct costs are satisfied. The inventor(s)' division(s) shall receive in aggregate 30% of the net revenues, and the Chancellor on behalf of the university shall receive 30% of the net revenues. In no event shall the share payable to the inventor(s) in the aggregate by the University be less than 15% of gross royalties received by the University. Each division of the university shall develop guidelines on royalty distribution for its share. To the extent practicable and consistent with state and university budget policies, the funds accruing to the university on account of an invention shall be held in a separate trust fund and be dedicated to research purposes and support capacity of the university at the sole discretion of the Chancellor.

VI.

SPECIFIC CONDITIONS GOVERNING SPONSORED RESEARCH

Government Sponsored Research

Patents on inventions arising from research fmanced by the United States Government may be controlled by the terms of the grants and contracts specified by the government agency pursuant to Federal law. In some cases, the government claims rights to patents resulting from research financed under contracts supported by government agencies. Except as provided by Federal law or by government-supported grants or contracts, or when no patent rights are claimed by the United States Government, or when such rights are waived by the government, patents arising from government sponsored research are controlled by the UNCW Patent and Copyright Policies. When a patent arising out of research supported under government grants or contracts is owned by the university, UNCW shall, if requested, agree to a non-exclusive royalty-free license for use by the government of such patent. If such a patent is owned by the government, UNCW shall be free to use the invention so covered for its own scientific and educational purposes without payment of royalty or other charge, consistent with Federal law.

University Research Sponsored by Non-Governmental Entities

Page 4

The University must ensure that its facilities and the results of the work of its employees are applied in a manner which best serves the interests of the public. Likewise, the legitimate interests of a private sponsor who provides financial or other support to research carried out through the university must be considered. The University reserves the right to ownership of patents on inventions arising out of research supported in whole or in part of grants or contracts with nongovernmental organizations or firms. Contracts or agreements which are entered into between UNCW and such organizations or agencies will contain clauses setting forth such a reservation unless deviations are requested by the sponsor and approved by the University consistent with the public interest. In the interest of fair treatment to the sponsor in consideration for the sponsor's investment and in the interest of discharging the university's obligation to the public in the application of its facilities and its employees' time and talent, special provisions may be negotiated by UNCW in such non-government sponsored contracts, upon request, provided that the University retains the right to use the invention for its own research, educational, and service purposes without payments of royalty fees, that the University requires the sponsor to use due diligence in the commercial use of the invention, and that the University retains the right freely to publish the results of its research after a reasonable period necessary to protect the right of the parties and to allow for the filing of a patent application.

VII.

PUBLICATION

A major function of UNCW is the advancement and dissemination of knowledge. Any practice that unnecessarily restricts the publication of results of scientific work is to be avoided. However, it is recognized that the full development of useful inventions or discoveries may be dependent upon the securing of patent protection that will enable the commercial utilization of the discoveries or inventions. Accordingly, under certain circumstances it may be necessary to delay for a minimum period the publication of results of research.

If a sponsor proposes to support a research effort that will involve a limited exclusive license to use of patents resulting from, the agreement with respect to publication shall include the following. First, the sponsor must agree that the results of the research may be published if desired by the investigators or research workers. Second, in order that patent applications not be jeopardized, UNCW, the investigators, and research workers may agree that any proposed publication will be submitted to the sponsor with a notice of intent to submit for publication. If within a period of no more than 90 days from the date of such notice the sponsor fails to request a delay, the investigators, research workers and institution shall be free to proceed immediately with the publication. However, if the sponsor notifies the university that a delay is desired, the submission of the manuscript to the publisher shall be withheld for the period requested, but in no event shall the total period of delay be longer than one year from the date of the notice of intent to submit for publication mentioned above. Such a period will permit the sponsor to have the necessary patent applications prepared and filed but will not unduly restrict the dissemination of scientific knowledge.

VIII. AVOIDANCE OF CONFLICTS

Conflicts involving patentable inventions and discoveries may arise when the University's personnel, including students, enter into personal consulting agreements with outside firms and

Page 5

organizations. The agreements that business firms wish to have executed by those who are to serve as their consultants frequently contain provisions as to the licensing or assignment of the consultant's inventions and patents. Unless such provisions are narrowly worded, they usually will apply to areas in which the individual's university work lies and thus come into conflict with the obligations owed by the individual to the University under the UNCW Patent and Copyright Policies, either with respect to the rights of the institution itself in an invention or with respect to the rights of a sponsor of research in the same field or subject matter.

Prior to signing any consulting agreement that deals with patent rights, trade secrets, or the like, where any university time, facilities, materials or other resources are involved, UNCW personnel and students must bring the proposed agreement to the attention of the appropriate senior administrator and the Director, Office of Sponsored Programs, in accordance with the University's patent procedures and either obtain a waiver of university rights or otherwise modify the consulting agreement to conform with these policies, as is determined by UNCW in its discretion.

The foregoing requirements are in addition to, and do not eliminate the necessity for, any approval which may be required by the UNCW Policy on External Professional Activity of Faculty and Other Professional Staff.

IX.

DUTY TO DISCLOSE DISCOVERIES AND INVENTIONS

All individuals whose discoveries and inventions are covered by this policy have a duty to disclose their discoveries and inventions promptly in accordance with the UNCW patent procedures. The duty to disclose arises as soon as the individual has reason to believe, based on his or her own lmowledge or upon information supplied by others, that the discovery or invention may be patentable. Certainty about patentability is not required before a disclosure is made. Individuals shall execute such declarations, assignments, or other documents as may be necessary in the course of invention evaluation, patent prosecution, or protection of patent rights, to insure that title in such inventions shall be held by the University, where this policy indicates the University shall hold title, or by such other parties as may be appropriate under the circumstances.

INTELLECTUAL PROPERTY COMMITTEE

The Chancellor shall appoint an Intellectual Property Committee, consisting of no less than three members, one of who shall be designated by the Chancellor to serve as chair. The committee shall review and recommend to the Chancellor or her delegate the procedures for the implementation of the UNCW Patent and Copyright Policies; shall resolve questions of invention ownership that may arise between the university and its faculty, staff, or students or among individuals; shall recommend to the Chancellor the expenditure of the patent royalty fund; and shall make such recommendations as are deemed appropriate to encourage disclosure and assure prompt and expeditious handling, evaluation, and prosecution of patent opportunities.

The chairs of each university intellectual property committees, or their delegates, shall meet as an All-University Patent Committee. The meetings of the All-University Patent Committee shall

Page 6

COPYRIGHT USE AND OWNERSHIP¹ POLICY

I. Preamble

The University of North Carolina at Wilmington (UNCW) is committed to complying with all applicable laws regarding copyright. The university, as an institution devoted to the creation, discovery, and dissemination of knowledge, supports (1) the responsible, good faith exercise of full fair use rights, as codified in 17 U.S.C. § 107, by faculty, librarians, and staff in furtherance of their teaching, research, and service activities; (2) copyright ownership for creative, nondirected works by faculty, staff, and students and university ownership of directed employment-related works; and (3) protection of ownership rights for creators of works that require a different ownership model. The objectives of the UNCW Copyright Policy are the same as those set forth in the UNCW Patent Policy, Section II.

ii.

COVERAGE

III. Copyright Use

To the foregoing stated ends UNCW shall:

1 By resolution, the Board of Governors provides the following:

(1) The provisions of Section XII are effective at the earlier of the following: (1) the date as of which the institution adopts a new or amended policy to conform to the board's policy; or (2) August 1, 2001. Any copyright dispute over a work created prior to the effective date of an institution's policy shall be resolved under such relevant policies and procedures as had existed immediately prior to the effective date, unless the parties to the dispute mutually agree in writing to abide by the new policy.

(2) Nothing in this policy is intended to alter the provisions of The Code of the University of North Carolina, Chapter VI: Academic Freedom and Tenure.

(3) The President is authorized to establish such supplemental policies or procedures, not inconsistent with the policy, as the President may deem necessary or desirable to implement or administer the policy. This may include provision for review by the Office of the President of policies or procedures intended by University institutions and agencies to implement the policy.

Page 8

Inform and educate the University community about fair use and the application of the four fair use factors as set forth in 17 U.S.C. § 107 and as interpreted in applicable case law. The four fair use factors are:

The character and purpose of the proposed use.

The nature of the work to be used.

The amount and substantiality of the portion to be used.

The effect on the market or potential market for the work.

Develop and make available resources concerning copyright laws in general and the application of fair use in specific situations.

3. Ensure that faculty, EP A and SPA staff, and students have access to assistance in

making fair use determinations.

IV. Copyright Ownership

With respect to determining ownership of copyright, the University's policy addresses works by category of copyrightable work (including traditional or non-directed works, directed work, and sponsored or externally contracted works) and by category of author (i.e., faculty, EPA and SPA staff, or student). Ownership of copyrighted subject matter, including software, hinges on which category of work and which category of author pertains to the work at issue. (In this Policy the term "Institution" means the University of North Carolina at Wilmington of which an author or work's creator is employed or enrolled.)

V. Copyrightable Works

Works by Faculty and EPA Non-Faculty Employees.