Approved by Board of Trustees January 11, 1984
Within four weeks of the receipt of the disclosure, the inventor will be notified in writing of the decision of the Committee on (1) the equities involved including financial participation, (2) whether the university plans to file a patent application, or (3) whether the university will accept assignment of the invention for patenting, licensing and/or commercial handling as applicable. If the university chooses neither to file a patent application or otherwise make available commercially nor to dedicate to the public an invention in which it asserts its rights, the invention at the Committee's discretion may be released in writing to the inventor, with the permission of the sponsor, if any. If, after the university has filed a patent application, it decides to abandon the patent, the inventor will be promptly notified in writing, and all rights at the Committee's discretion may be released by written agreement to the inventor, with the permission of the sponsor, if any.
In those cases in which the university has obtained a patent without obligation to sponsors, if no arrangement has been made for commercial development within a reasonable period from the date of the issuance of the patent, the inventor(s) may request in writing a release of the university's patent rights. The Patent Committee will promptly either grant the request or will advise the inventor of the university's plans for the development of the invention.
As to any invention in which the university has an interest, the inventor, upon request, shall execute promptly all contracts, assignments, waivers or other legal documents necessary to vest in the university or its assignees any or all rights to the invention, including complete assignment of any patents or patent applications relating to the invention.
The university strongly encourages scholarly publication of the results of faculty and student research. Though the Patent and Copyright Policies do not limit the right to publish, except for short periods of time necessary to protect patent rights, publication or public use of an invention constitutes a statutory bar to the granting of a United States patent for the invention unless a patent application is filed within one year of the date of such publication or public use. Publication or public use also can be an immediate bar to patentability in certain foreign countries.
In order to preserve rights in unpatented inventions, it shall be the duty of the inventor, or of his supervisor if the inventor is not available to make such report, to report forthwith to the Vice Chancellor for Academic Affairs and to the Chairperson of the University Patent Committee any publication, submission of manuscript for publication, sale, public use, or plans for sale or public use, of an invention, if a disclosure has previously been filed. If an invention is disclosed to any person who is not employed by the university or working in cooperation with the university upon that invention, a record shall be kept of the date and extent of the disclosure, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.
After disclosure to the Patent Committee, the inventor shall promptly notify the Vice Chancellor for Academic Affairs and the Chairperson of the University Patent Committee of the acceptance for publication of any manuscript describing the invention or of any sale or public use made or planned by the inventor.
If the inventor believes that the invention was made outside the general scope of his university duties, and if he does not choose to assign the rights in the invention to the university, he shall, in his invention disclosure, request that the University Patent Committee determine the respective rights of the university and the inventor in the invention, and shall also include in his disclosure information on the following points:
- The circumstances under which the invention was made and developed;
- The employee's official duties at the time of the making of the invention;
- Whether he or she requests waiver or release of any university claims or acknowledgment that the university has no claim;
- Whether he or she wishes a patent application to be prosecuted by the university, it should be determined that an assignment of the invention to the university is not required under the Patent and Copyright Policies; and
- The extent to which he or she would be willing voluntarily to assign domestic and foreign rights in the invention to the university if it should be determined that an assignment of the invention to the university is not required under the Patent and Copyright Policies.
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