(B) Policy
(1) Pursuant to section
3345.14 of the Revised Code and
as a condition of university employment, all right, title and interest in
discoveries or inventions, including patents thereon resulting from any
research or investigation conducted in whole or in part in any laboratory or
facility of the Bowling Green state university, (BGSU) shall be the sole and
exclusive property of BGSU. Assignments or waivers of such rights, titles, and
interests may be made by BGSU to external sponsoring agencies or others, as
provided in subsequent clauses of this policy.
(2) Promptly upon the conception of a
potentially patentable invention or discovery and before either filing for
patent or reducing the invention or discovery to practice, the inventor shall
disclose to BGSU such invention or discovery and shall assign, in writing, all
rights to the invention or discovery to BGSU. Such disclosure shall contain a
general description of the field of the invention or discovery, a specific
disclosure of the invention or discovery, any prior part of which the
inventor(s) is aware, a general statement (if possible) of the economics of the
invention or discovery, a listing of the notebooks or other records containing
the first description of the invention or discovery, the name of the person to
whom the invention or discovery was first disclosed, and the date of such
disclosure. Such disclosure shall also contain an election as to the method for
payment of patenting and/or licensing and related costs and schedule of
distribution of net income received as provided in subsequent clauses of this
policy.
(3) All information which
may reasonably be related to inventions or discoveries shall be held
confidential by the inventor and shall be disclosed only to BGSU or others
directed by the officers and agents of BGSU.
(4) All information as described in paragraph
above shall be maintained in confidence unless such information is, or becomes,
publicly available through no fault to the inventor or unless written
permission is obtained from an authorized officer or agent of BGSU to disclose
such information.
(5) Whenever
requested by BGSU, the inventor shall make, sign, execute, and deliver all
applications, assignments, and other papers which, in the opinion of BGSU or
its counsel, are deemed necessary, proper, or desirable for obtaining letters
patent of the United States and any other countries, and for transferring all
such discoveries, inventions, improvements, patentable ideas, methods,
processes, trade secrets, and letters patent and applications therefore to
BGSU, its successors, and assigns.
(6)
Royalty
distributions shall be made in accordance with article 25, section 4.9 of the
collective bargaining agreement.
An inventor
shall select a method for payment of costs to obtain patents and/or licenses
and a related schedule for distribution of net income, for any such inventions
or discoveries selected by BGSU for patenting and/or licensing. An inventor
shall choose at the time of disclosure of the discovery or invention whether or
not to pay all costs of obtaining patents and/or licenses or request the
university to pay all costs. If the inventor elects the first option, then net
income from the invention or discovery will be shared by BGSU and the
inventor(s) (or heirs or legatees of the inventor(s)) according to schedule A
below; if the inventor elects the second option, then net income from the
invention or discovery will be shared by BGSU and the inventor(s) (or heirs or
legatees of the inventor(s)) according to schedule B below.
(a) Schedule A.
(i) All costs are paid by
inventor(s) prior to distribution of income. No university funds may be used to
pay costs.
(ii) Cumulative net income category
Up to fifty thousand
dollars
Fifty thousand and one to one
hundred thousand dollars
One hundred thousand and one dollars
or more
(iii) Distribution (inventor(s) v.
university)
Ninety per cent v. ten per cent
Seventy-five per cent v. twenty-five
per cent
Fifty per cent v. fifty per
cent
(b) Schedule B.
(i) All costs are paid by BGSU prior
to distribution of income.
(ii) Cumulative net income category
Up to two thousand
dollars
Two thousand and one dollars to
fifty thousand dollars Fifty
thousand and
one dollars to one hundred thousand
dollars One hundred thousand and one dollars or more
(iii) Distribution (inventor(s) v.
university)
Ten per cent v. zero per cent
Fifty per cent v. fifty per cent
Forty per cent v. sixty per
cent
Twenty-five per cent v.
seventy-five per cent
(7) Net income from any invention or
discovery shall consist of earnings received by BGSU from the invention or
discovery after payment of all costs incurred by the BGSU or the inventor(s) as
applicable in connection with the invention or discovery and beginning at the
moment of invention. Such costs shall include the cost of pursuing patent
protection, and developing, marketing, and licensing the invention.
If there is a plurality of joint inventors, that part of the
net income accruing to the inventors will be distributed equally among the
inventors unless some other distribution is specifically requested in writing
by the inventors. If a plurality of institutions is involved in an invention,
an agreement will be negotiated by the institutions in consultation with the
inventors.
(8) All income
received pursuant to an invention or discovery shall be deposited in a separate
university account from which shall be deducted an amount equal to the sum of
all BGSU or inventor (whichever is applicable) costs paid or billed for
obtaining a patent, license, or related activities. After such deductions have
been made and distributed, net income distribution according to the elected
schedule shall be made on an annual basis.
(9) The president or designee shall appoint a
patent advisory committee consisting of three or more faculty members and two
or more administrative staff members of BGSU. Such committee shall:
(a) Review all applicable inventions and
discoveries and determine and advise in each individual case whether a
discovery or invention resulted from research, investigation, or activity
conducted in any laboratory or facility of the BGSU and is the property of
BGSU.
(b) Determine and advise the
president whether or not the discovery or invention, which is the property of
BGSU, has a sufficient value or is of a sufficient interest to BGSU to warrant
its retention; or, if the same should be relinquished to the inventor or
otherwise dealt with.
(c) Advise
the president about acquiring on behalf of BGSU, by agreement, on such terms
and conditions as it deems appropriate, an interest in such patentable
discoveries and inventions in those situations in which it shall have been
determined that the discovery or invention does not otherwise belong to
BGSU.
(d) Determine and advise the
president whether or not to pursue the patentability and development of a
discovery or invention that is the property of BGSU.
(e) Recommend to the president appropriate
courses of action, including prospective purchasers or licensees of inventions
or discoveries, and advise the president on the terms and conditions of any
agreements.
(10) The
president of BGSU is hereby empowered and authorized, after receiving the
advice of the patent advisory committee, and after reporting to the board of
trustees, to act on or reject the patent advisory committee's determinations,
and to sell, assign, convey, or grant on behalf of BGSU any such discoveries
and inventions or any rights or shares in such discoveries and inventions,
including patent rights, to such persons, firms, or governmental agencies for
such consideration or upon such terms and conditions, including dedication to
the public, as shall be deemed by the president, after consultation with the
inventors, to be in the proper and best interest of BGSU.
(11) Within six months after disclosure of an
invention, the president of BGSU shall
(a)
Elect whether to apply for a United States patent and shall initiate the patent
search;
(b) Relinquish all rights
to the invention to the inventor(s); or
(c) Indicate how the invention shall be
otherwise dealt with.
(12) The president or designee is authorized
by the board of trustees to make arrangements with external sponsors of
research to obtain research funding from such sponsors. Such arrangements may
include, but are not limited to, assigning all rights to inventions or
discoveries to the sponsor, or granting an exclusive or nonexclusive license to
the sponsor with or without royalties to be returned to BGSU. Any such
agreement must be in writing and signed by an authorized officer or agent of
BGSU. Such agreements will be in consultation with the investigator(s).
Date: November 1st,
2013
