(A)
Policy
statement.
It is the policy of the university of
Toledo "university" to treat all faculty, staff, and students equally with
respect to their rights as inventors of creations, discoveries, inventions or
patents.
Pursuant to section
3345.14
of the Revised Code, all rights to and interests in discoveries, inventions or
patents which result from any research, investigation or work conducted in any
university laboratory or facility or by employees acting within the scope of
their employment or with funding, equipment, or infrastructure provided by or
through university, will be the sole property of university
,
its successors and
assigns.
Employees shall and do hereby assign
such rights, titles and interests to university. Assignments or waivers of such
rights, titles and interests may be made to external sponsoring agencies or
others, as provided in subsequent clauses of this policy.
(B)
Purpose of policy.
Provide a guideline for the ownership
and disposition of any creations, discoveries, inventions, or patents that
result from research, investigation or work conducted by university faculty,
staff, or students.
(C)
Definitions.
(1)
"Net income" from any university intellectual property
means: earnings received by university from a license with a third party for
the university intellectual property, after payment of all costs incurred by
university in connection with the invention or discovery. Such costs will
include, but not be limited to, costs associated with pursuing patent
protection or developing the invention, any investment in the invention, and/or
marketing and/or licensing the invention. If there is more than one university
inventor, that part of the net income accruing to such university inventors
will be distributed on a pro-rata basis, unless another percentage disbursement
of the total university inventors' share is specifically requested in writing
by such university inventors.
(2)
Patent and
commercialization committee "patent committee" means:
(a)
Committee
appointed by the president's designee to serve on one of two committees, one
each on university main campus and health science campus.
(b)
Committees will
consist of faculty, administrative staff, community members and any other
person with expertise deemed desirable for evaluating university intellectual
property.
(3)
"University intellectual property" means:
(a)
Creations,
discoveries, inventions, or patents which result from research, investigation
or work conducted:
(i)
In any university laboratory or facility;
or
(ii)
By university faculty, staff or students while acting
within the scope of their employment; or
(iii)
With funding,
equipment, or infrastructure provided by or through university.
(4)
"University inventor" means any faculty, staff or
students with rights to or interests in creations, discoveries, inventions or
patents developed pursuant to section (C)(3)(a)(i) to (C)(3)(a)(iii) of this
patent policy 3364-7004.
(D)
Procedure.
Promptly after the conception and/or
making of a creation, invention or discovery, university inventor(s) must
complete and submit an invention disclosure form "IDF" and any necessary
supplemental information to university's technology transfer office. The "IDF"
will contain sufficient information for the technology transfer staff to make
an informed judgment regarding the patentability and commercialization
potential of the creation, invention or discovery, and to allow the appropriate
patent committee to make an informed recommendation regarding the desirability
for university to retain rights in the creation, invention or discovery and/or
make application for patent protection with the United States patent and
trademark office or foreign patenting entity. All information which may
reasonably be related to university intellectual property will be treated as
confidential information by university personnel and patent
committees.
(1)
Patent committee will initially advise whether the
university intellectual property has sufficient value or is of sufficient
interest to university to warrant patent protection; whether such university
intellectual property should be relinquished to the university inventor(s) or
to the agency which sponsored the research leading to the invention or
discovery; or be otherwise managed. Notwithstanding the above, the president's
designee may authorize the filing of patent applications when there is an
impending publication deadline or when a company has expressed an interest in
either optioning or licensing the university intellectual
property.
(2)
University may, alone or with the assistance of
external organizations, make application for patents on any such university
intellectual property selected by university for patenting. university
inventor(s) shall, whenever requested by university, make, sign, execute and
deliver all applications, assignments and other papers which, in the opinion of
university or its legal or patent counsel, are necessary, proper or desirable
for obtaining letters patent of the United States and any other countries, and
for transferring all such designs, creations, discoveries, inventions,
improvements, patentable ideas, methods, processes, trade secrets and letters
patent and applications therefore to university, its successors and assigns.
Additionally, university inventor(s) shall cooperate with and assist the
technology transfer staff with its efforts to evaluate, market, and license the
creation, invention or patent.
(3)
University
president may appoint another administrative official as his/her designee for
managing university intellectual property. Unless otherwise specified by the
president, his/her designee is the head of technology transfer.
(4)
University
president or his/her designee is hereby empowered and authorized to act on or
reject the patent committee's determinations, and to sell, assign, convey, or
grant any such university intellectual property or any rights or shares in such
university intellectual property, 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 are deemed by him/her to be
in the proper and best interest of university.
(5)
University
president or his/her 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 university intellectual property to the sponsor, or granting an
exclusive or nonexclusive license to the sponsor with or without royalties to
be returned to university. Any such agreement must be in writing and signed by
university's authorized signatory. Such agreements will be in consultation with
university inventor(s); however, university retains the final decision as to
terms.
(6)
Net income from any university intellectual property
that is licensed to a third party will be shared by university and university
inventor(s) using the following calculation: university inventor(s) or their
heirs and legatees will receive forty per cent of the net income; the remaining
sixty per cent of the net income will be the property of university and will be
distributed in accordance with the distribution schedule below.
|
Distribution
schedule
|
|
University inventor(s) research
account
|
University inventor(s)
college
|
University inventor(s)
department
|
University
|
|
10%
|
5%
|
5%
|
40%
|
|
Will be used solely to support
the ongoing research of the inventor(s)
|
Will be used by the dean(s) of
the college(s) in which inventor(s) has (have) primary
appointment
|
Will be used for departmental
purposes by the chair(s) of the department(s) in which inventor(s) has (have)
primary appointment
|
Will accrue to
university
|
