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Institutional Patent and Copyright Procedures
The University of North Carolina at Wilmington
Approved by Board of Trustees January 11, 1984
- General
- Responsibilities of university personnel
- Publication and public use
- Inventor requests for waiver of university
rights
- Revenue sharing
- Administration
- Copyright procedures
A. General
- As defined by the patent
and copyright policies of the Board of Governors, to which these procedures are expressly subject, The
University
of North Carolina at Wilmington has an interest in all inventions
of university personnel that are conceived or first actually reduced
to
practice as a part of or as a result of university research, activities
within the scope of the inventor's employment by the university,
and activities involving the use of university time, facilities,
staff,
materials, university information not available to the public,
or funds administered by the university.
- The university may also have an interest in inventions under
the terms of contracts, grants or other agreements. Faculty, staff,
and
students, whose inventions are made on their own time and without
university facilities, materials, or resources and which inventions
are, therefore,
their exclusive property as specified by the Patent and Copyright
Policies, may avail themselves of the opportunity to submit the invention
to
the university for possible patenting and/or commercial exploitation
and management under terms to be agreed between the inventor and
the university.
- The provisions of the Patent Procedures are subject to any applicable
laws, regulations or specific provisions of the grants or contracts
which govern the rights in inventions made in connection with sponsored
research.
- Under the terms of certain contracts and agreements between
the university and various agencies of government, private and public
corporations
and private interests, the university is or may be required to
assign or license all patent rights to the contracting party. The
university
retains the right to enter into such agreements whenever such action
is considered to be in its best interest and in the public interest.
Ordinarily the university will not agree to assign rights in future
inventions to private corporations or businesses.
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B. Responsibilities of university personnel
- University personnel who, either alone or in association with
others, make an invention in which the university has or may have
an interest,
shall disclose such inventions on forms provided for this purpose
by the Office of the Vice Chancellor for Academic Affairs. On the
same
date that the inventor presents the disclosure to the Office of
the Vice Chancellor for Academic Affairs, he/she shall notify the
Chairman
of the University Patent Committee of the University of North Carolina
at Wilmington that a disclosure has been made. The Office of the
Vice Chancellor for Academic Affairs will promptly acknowledge its
receipt
of completed disclosure forms and will distribute such forms to
the University Patent Committee for consideration at its next meeting.
The Patent Committee will review each written disclosure promptly.
The Inventor or his or her representative shall be allowed to examine
all written materials submitted to the Committee in connection
with his or her disclosure and to make a written and, where practicable,
oral presentation to the Committee. The Committee will decide on
the
proper disposition of the invention to secure the interests of
the university, the inventor, the sponsor if any, and the public.
Its decision
may include, but is not limited to, one or a combination of the
following:
- To submit the disclosure for review by a patent or invention
management firm;
- To make inquiries of potential licensees
that may have an interest in the invention, including the financing
of a patent
application,
where applicable;
- To study the practicality of applying for
a patent with university resources (an option with limited application
because of financial constraints);
- In proper cases, to release its rights to
the inventor subject to an agreement to protect the interests
of the
university, the sponsor
if any,
and the public,
including an obligation to pay to the university a percentage
of future royalties; and
- To dedicate the invention to the public.
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.
- University personnel may not: (a) sign patent agreements with
outside persons or organizations which may abrogate the university's
rights
and interests as stated in the Patent Policy or as provided
in any grant or contract funding the invention, nor (b) without prior
authorization
use the name of the university or any of its units in connection
with any invention in which the university has an interest.
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C. Publication and public use
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.
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D. Inventor requests for waiver of university rights
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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E. Revenue sharing
- The university shall share revenue which it receives from patents
or inventions with the inventors. As noted in Section
A.4, specific
provisions of grants or contracts may govern rights and revenue
distribution regarding inventions made in connection with sponsored
research; consequently,
revenues the university receives from such inventions may be exclusive
of payments of royalty shares to sponsors or contractors. Moreover,
the university expects to contract with outside persons or organizations
for the obtaining, managing and defending of patents, and any royalty
shares of expenses contractually committed to such persons or organizations
may be deducted before revenues accrue to the university.
- The revenues (net, if applicable per the preceding paragraph)
which the university receives from a patent or invention will be
applied
first to reimburse the university for any incremental expenses
incurred by it in obtaining and maintaining patents and/or in marketing,
licensing
and defending patents or licensable inventions. After provision
for such expenses, the inventor's share of such revenues received
by the
university shall be as follows: 50% of the first $25,000, 35% of
the next $25,000, 20% of the next $25,000 15% thereafter. In the
case of
co-inventors, each such percentage share shall be subdivided equally
among them, unless the university in its sole discretion determines
a different share to be appropriate. Applicable laws, regulations
or provisions of grants or contracts may, however, require that a
lesser
share be paid to the inventor. In no event shall the share payable
to the inventor or inventors in the aggregate by the university
be less than 15% of gross royalties received by the university.
- To the extent practicable and consistent with state and university
budget policies, the remaining revenue received by the university
on account of an invention will be dedicated to research purposes,
including
research in the inventor's department or unit, if approved by the
chancellor upon recommendation of the University Patent Committee.
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F. Administration
- The university recognizes that the evaluation of inventions
and discoveries and the administration, development and processing
of patents
and licensable inventors involves substantial time and expense
and requires talents and experience not ordinarily found in its staff;
therefore, in most cases it expects to contract with outsiders
for
these services. It may enter into a contract or contracts with
an outside organization covering specific inventions or discoveries
believed to
be patentable and patents developed therefrom, or covering all
such inventions, discoveries and patents in which the university
has an
interest.
- The chancellor shall appoint a University Patent Committee consisting
of no fewer than three members. The Committee shall review and
recommend to the chancellor or his/her delegate changes in these
procedures,
decide upon appropriate disposition of invention disclosures, resolve
questions of invention ownership, recommend to the chancellor the
expenditure of invention royalties, and make such recommendations
as are deemed
appropriate to encourage disclosures and assure prompt and effective
handling, evaluation, and prosecution of invention opportunities
and to protect the interests of the university and the public.
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G. Copyright procedures
- As a general rule, all rights to copyrightable material are
the property of the creator. The distribution of royalties, if any,
is
a matter of arrangement between the creator and his publishers
or licensees. Different treatment may be accorded by the institution
in case of specific
contracts providing for an exception, in cases where the constituent
institution or sponsor may employ personnel for the purpose of
producing a specific work, where different treatment is deemed necessary
to reflect
the contribution of the institution to the work, as in the case
of software or audiovisual material, or where a sponsored agreement
requires
otherwise.
- An institute, center, or other unit of the university that is
itself a publisher and that engages faculty members and other employees
to
write for publication by that unit as a part of their professional
duty or produce other copyrightable materials, such as audiovisual
materials or computer software, may, subject to the approval of
the chancellor, adopt rules providing that copyright in materials
prepared
by such faculty members and other employees in the course of their
professional work for that unit vests in the unit and not in the
author.
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