University of Oklahoma
Patent Task Force Revisions in Legal Counsel Draft
(3-8-99 Faculty Senate additions underlined; deletions double crossed through)
Approved by the University of Oklahoma Faculty Senate 3-8-99; under review by the administration
The following draft of the University of Oklahoma Patent Policy assumes the establishment of a Technology Management Office and recommends that the report, "External review for the University of Oklahoma: Establishment of a Technology Management Office," be implemented. In particular, the Task Force supports recommendation #11.
PROPOSED PATENT POLICY
PREAMBLE
The people of the State of Oklahoma may reasonably expect that their investments in the University of Oklahoma will create new industry and enhance existing industry within the State. Such new industry creates greater employment opportunities for citizens of the State and an improvement in their standard of living.
The creation and development of intellectual property at the University encourages new business and is key to creating strong University and industry partnerships. It is the responsibility of University employees to disclose intellectual property and to foster an entrepreneurial attitude within the work force by involving students in the creation of intellectual property. Nevertheless, intellectual property development must never be allowed to interfere with the University's principle responsibilities of education and knowledge creation.
Therefore, it is in the best interest of the University to adopt a policy that encourages disclosure of inventions and rewards such creative activity. To do so, the University policy must insure inventors a share in any financial success enjoyed by the University through the creation of intellectual property. The individual(s) who make the inventions that become the property of the University under this policy will share in income derived by the University from the marketing of such inventions and patent rights based thereon. As provided below, discoveries and/or inventions made or conceived by employees, faculty, students and staff of the University will become the property of the University and any and all benefits accruing to the University and derived from such inventions will be used to further the research enterprise of the University. The basic objectives of the University's policy concerning patents include the following:
1. OWNERSHIP
1.1 All inventions, whether patentable or unpatentable, and including any and all patents (domestic and foreign) based thereon and applications for such patents, which are made or conceived by any member of the faculty, staff, or student body of The University of Oklahoma, either in the course and/or scope of employment by The University of Oklahoma or substantially through the use of facilities or funds provided by or through the University shall be the property of and owned by the Board of Regents of the University of Oklahoma except as described below:
1.1.1 The Vice President for Research, in conjunction with the Vice President for Technology Development shall negotiate ownership of intellectual property with research sponsors when it is in the best interest of the University to do so. Otherwise, all rights are as described below.
1.1.2 Faculty having intellectual property rights prior to employment at the University of Oklahoma must negotiate ownership to any further development of that same intellectual property at the University of Oklahoma with the Vice President for Research in conjunction with the Vice President for Technology Development.
1.1.3 In the event faculty or staff make discoveries on his/her own initiative in work not directly related to his/her duties; and using no University facilities, equipment, or supplies, or if using such reimburses the University for this use in accordance with a prior agreement with the University and in accord with University policy, title to such discoveries shall remain in the inventor, provided the Vice President for Research and the Vice President for Technology Development determines that the invention was made under these conditions. The inventor shall nonetheless submit a disclosure form to the Vice President for Technology Development. This disclosure shall contain sufficient information to enable the director to make a determination, but no privileged information may be required. Should the director determine that the University does have a proprietary interest, a more complete disclosure may be required. If the committee determines that the inventor has the sole ownership right, and the Vice President for Research concurs, any further action pertaining to the invention shall be the sole responsibility of the inventor. If the University has an interest, the provisions of this policy shall then be applicable.
1.2 All rights in and to inventions described in Paragraph 1.1 shall be assigned to the Board of Regents of the University of Oklahoma as a specific condition of employment with the University and admission to and/or attendance at the University. Faculty, staff and students shall execute any and all documents the University deems reasonably necessary to evidence such ownership, meet its legal obligations and effect patent protection, domestic and foreign, for the University or its nominee. All costs involved in obtaining and maintaining patent protection shall be borne by the University or its nominee.
1.3 The University agrees to act in good faith with respect to the determination of ownership.
2. REVENUE
2.1 The gross revenues/consideration (including without limitation equity) received by the University from a University discovery or invention as described in section 1, will be distributed among the discoverer(s)/ inventor(s), his/her/their primary department(s) and the University, in accordance with the following formula:
Amount Received Inventor(s) Share Dept(s) Share University Share
0 - $2500 100% 0% 0%
$2501 - $1,000,000 35% 15% 50%
$1,000,001 + 40% 10% 50%
Everything above $2500 40% 50% 10% 50% 40%
To further the research mission of the University an appropriate amount of the University's share is expected to support the Vice President for Technology Development and aid in funding of the Vice President for Research.
2.2 When there are two or more discoverers/inventors, each shall share equally in the inventor's share unless all discoverers/inventors agree in writing to a different distribution of such share.
2.3 The discoverer/inventor and his or her department shall be paid their share of the gross revenues in a timely manner and be furnished with regular statements of revenue derived from exploitation of the invention. In the event of any litigation, actual or imminent, regarding patent rights, the University may withhold distribution until resolution of the particular matter.
2.4 The University does not act as a fiduciary for any person relating to consideration received under the terms of this policy.
3. ADMINISTRATION
3.1 The President, or the President's designee, The Vice President for Research and the Vice President for Technology Development shall determine the disposition of University discoveries and inventions described in paragraph 1.1 as he/she deemed prudent and consistent with the University's mission to ultimately convey the benefits of its research to the public for the general welfare of the State and Nation. In determining the proper disposition of University discoveries and inventions, the President or the President's designee The Vice President for Research and the Vice President for Technology Development shall consult as necessary with scientific and/or technical and/or business subject matter experts in fields appropriate to the invention or discovery under consideration. Among other choices, he/she may the Vice President for Technology Development may:
(A) Transfer the invention and/or discovery to the public by entering into license agreements with third parties to further develop and exploit the property;
(B) Transfer the invention and/or discovery to the public by entering into commission agreements with third parties to identify potential licensees to further develop and exploit the property;
(C) Transfer rights to the property to a patent service organization to commercially develop and/or exploit the property;
(D) Allow rights (national and international) to the invention to revert back to the discoverer(s)/ inventor(s) if requested by the discoverer(s)/inventor(s) and if the President, or the President's designee, the Vice President for Research and the Vice President for Technology Development determine that the discovery or invention does not merit exploitation or further development by the University provided,
(1) Such transfer shall be subject to an irrevocable, non-exclusive, free-of-cost, and world-wide right and license in the University to make, use and/or practice the invention for University education, research and/or service purposes. The University also reserves the right to publish information and data obtained in the research project resulting in the discovery or invention being transferred, assuming such rights do not jeopardize the inventor's patent rights. Faculty, staff and students shall execute any and all documents, as the University deems reasonably necessary to confirm or enforce such reserved right and license.
(2) Such transfer shall be limited to the discovery or invention duly disclosed to the University, in writing, as of the time the transfer is requested by the discoverer/inventor;
(3) Discoverer(s)/inventor(s) agrees to pay University fifteen percent (15%) of any moneys or other consideration received by the discoverer(s)/inventor(s) from commercialization of the discovery or invention after the discoverer/inventor has recovered five (5) times his/her/their documented out-of-pocket costs for obtaining legal protection for the discovery or invention.
(3) Such transfer will automatically take place if the Vice President for Technology Development does not declare the University's interest within 90 days of disclosure by the inventor.
(E) transfer rights to the discovery and/or invention to the person(s) or entity sponsoring the research in the course of which the discovery or invention was made if such action is required under the terms of the research agreement or is required by law.
3.2 All transfers of University inventions shall be subject to and contingent upon any rights in third parties as may be governed and/or required by, among other things, sponsored research agreements, other third-party contracts or law.
3.3 The Department and University shares of revenues received from a University discovery or invention will be used for research related purposes as the University or department deems appropriate.
3.4 The Vice Presidents for Research, Norman Campus and the Health Sciences Center, with the Vice President for Technology Development shall be responsible for administering the research and patent affairs of the University in a manner consistent with this Policy. The Vice Presidents for Research with the Vice President for Technology Development shall cooperate to establish written policies to be approved by the President and distributed to the faculty, staff and students of the University, governing procedures to be followed in processing discoveries and inventions generated within the University.
4. DISCLOSURE
Any discovery or invention falling within paragraph 1.1, above, must be promptly disclosed to the appropriate Vice President for Research within such times and in such form as the Vice Presidents may set forth in their published policies. Failure to do so is a violation of this Patent Policy which may result in the loss of valuable rights in the invention and may violate contracts to which the University and its faculty members are legally bound.
Any discovery or invention undisclosed by faculty, staff or student at the University of Oklahoma, that is part of any subsequent patent application by former employees of the University and/or associated institutions or sponsors violates this Patent Policy and may result in the loss of valuable rights in the invention and may violate contracts to which the University and its faculty, staff and students are legally bound.
5. CONTRACTUAL TERM
The terms of this Patent Policy are a part of any contractual relationship of the University of Oklahoma with any member of the faculty, staff or student body. This Policy, as amended from time to time, shall be deemed to be part of the conditions of employment of every University employee or a part of the conditions of enrollment and attendance of every student at the University.
The Office of Technology Advisory Committee shall meet monthly and advise the director on intellectual property developmental milestones, educational program design and creative mechanisms for providing and monitoring technical expertise. The Committee will monitor developmental milestones to ensure timely progress in the development of intellectual property.
The Advisory Committee shall be composed of three faculty from the sciences, three from engineering, three from non-sciences and three from administration. Two members of each subgroup will be appointed by the faculty senate and one member of each subgroup will be appointed by the president. Terms will rotate among subgroups and will be for three years. Upon establishment of the Advisory Committee, initial appointments will be made for one, two and three year terms to begin the rotations. The Director of the Vice President for Technology Development will chair the Committee and the Vice President of Research will serve in an ex-officio capacity.
Although the Advisory Committee will not formally arbitrate faculty complaints about intellectual property rights and development, members will complete an investigation of such a complaint and forward their findings to the Faculty Appeals Board for arbitration.