|
Authority: Board of Trustees
History: First issued on May 11, 1984. Last revised, April 16, 2003. Additional History Information.
Additional References: UNC Code: Appendix II, Speck v NC Dairy FDN, 311 N.C. 679 (1984) and United States Copyright Statutes
Related Policies: Royalty Sharing under NCSU's Patent Policy And Procedures; Copyright Regulation
Contact Info: Vice Chancellor for Research and Graduate Studies (patent) 919-515-2117 and Provost and Associate Vice Chancellor for Academic Affairs (copyright) 919-515-2195
1. PREAMBLE
1. 1 North Carolina State University (hereinafter referred to as “NCSU”, or the “University”) is dedicated to teaching, research and extending knowledge to the public.
1. 2 It is the policy of the University to carry out its scholarly work in an open and free atmosphere and to publish results obtained therefrom freely, limited only by a short time delay in cases in which it is necessary to prepare and file patent applications. Patentable inventions sometimes arise from the research activities of NCSU faculty, staff and students using University facilities, either wholly or in part. As a public service institution, the University has an interest in assuring the utilization of such inventions for the public good. Protection must be provided for at least some of these inventions through patents to encourage their development and marketing. Patents and their commercial exploitation, however, represent only a small part of the benefits accruing from either publicly or privately sponsored research.
1. 3 A portion of the research conducted by the University is supported by government and a portion by private industry. Service to the public, including private industry, is an integral part of the University's mission. As a public institution, the University, in its agreements with private industry or other private organizations, must consider the interests of the general public. The rights and privileges set forth in agreements or contracts, with respect to inventions developed as a result of research partly or wholly financed by private parties, must be fair and just to the inventor(s), the sponsor and the public. Research should be undertaken by the University under support from private parties only if it is consistent with and complementary to the University's goals and responsibilities to the public.
2. PURPOSES
The NCSU Patent Policy and Procedures (hereafter referred to as the “Procedures”) are designed to implement the Patent and Copyright Policies of The University of North Carolina (hereafter referred to as the “UNC Policy”). The Procedures incorporate the interests of the faculty, staff, and students, the institution, and the sponsors of research, because in many cases those interests encourage innovation and assure broad dissemination of the results of research. These Procedures are designed to stimulate and recognize creativity among the faculty, staff, and students, and to establish an institutional process that is flexible enough to accommodate the different types of research and innovative work conducted at a comprehensive research university such as NCSU. Equity and fairness are goals of the Procedures in all respects, not only in the distribution of revenue, but also in the recognition of inventors. Finally, these Procedures should provide an efficient and timely mechanism for patent protection of innovations generated in whole or in party by University employees. The University employs the Director of Technology Transfer, who is the manager and administrator of the NCSU Patent Policy and Procedures on behalf of the University, and associated staff, whose duties include assisting faculty, staff and students in matters related to inventions.
3. OWNERSHIP
3. 1 As defined by the UNC Policy, to which these Procedures are expressly subject, NCSU owns all inventions of University personnel and students, that are made as a part of or as a result of: a) University research; b) activities within the scope of the inventor's employment by, or in official association with, the University; and c) activities involving the use of University time, facilities, staff, materials, University information not available to the public, or funds administered by the University. It is the role of the Intellectual Property Committee to determine ownership of inventions. All University faculty, staff, and students will disclose inventions according to these Procedures, whether the invention(s) fall into the categories above or not, and all relevant information pertaining to ownership issues will be included in the disclosure to permit evaluation by the Intellectual Property Committee.
3. 2 Faculty, staff, and students whose invention disclosures demonstrate that an invention has been made (a) on their own time, (b) outside the scope of their employment or association with the University, and (c) without University facilities, materials, or resources will own such inventions. However, even in these cases, the inventor(s), may, at their discretion, submit such an invention to the University for possible patenting and/or commercial exploitation and management under terms to be agreed upon by the inventor and the University.
3. 3 The provisions of these 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.
3. 4 Under the terms of certain contracts and agreements between NCSU and various agencies of government, private and public corporations, and private interests, NCSU may be required to negotiate agreements to provide the sponsor with intellectual property rights in NCSU inventions. NCSU retains the right to enter into such agreements whenever such action is considered to be both in its best interest and in the public interest. Ordinarily, the University will not agree to grant rights in future inventions to private corporations or businesses except as set forth in these Procedures.
3. 5 All faculty, staff and students engaged in University related or sponsored research shall sign a Patent Agreement, in a format acceptable to the Vice Chancellor for Research and Graduate Studies. Such Patent Agreements will be filed with the appropriate University department and kept on file with that department.
3. 6 Students who are pursuing only non-research related studies are not obligated to sign an NCSU Patent Agreement. However, if the student makes an invention which is, or may be, subject to University ownership in accordance with the UNC Policy, the student must disclose the invention to the University as provided under these Procedures and the Intellectual Property Committee will determine an equitable resolution of ownership rights.
4. RESPONSIBILITIES OF NCSU PERSONNEL
4. 1 NCSU personnel who, either alone or in association with others, make an invention must disclose such inventions to the Vice Chancellor for Research and Graduate Studies or his/her designee. Receipt of disclosures will be promptly acknowledged and disclosures will be reviewed promptly in accordance with Administrative Regulations promulgated by the Chancellor or Chancellor’s designee and in accordance with the Procedures. .
4. 2 For any invention in which the University has an interest, the inventor, upon request of the Vice Chancellor for Research and Graduate Studies or his/her designee must sign promptly all contracts, assignments, declarations, waivers or other legal documents necessary to vest in the University or its assignees any or all rights of the invention, including complete assignment of any patent, patent applications, trademarks, or copyrights relating to the invention.
4. 3 In addition, if the University files any patent, plant variety, or trademark applications on an invention, it is the inventor’s obligation to cooperate with the Office of Technology Transfer and the University’s designated patent counsel in the prosecution of the patent, plant variety, or trademark application(s). Such cooperation includes, but is not limited to:
(a) consulting with, and providing input to, the Office of Technology Transfer and patent counsel concerning (i) the patent, plant variety, or trademark application(s), and (ii) responses to actions, objections, and the like, by the applicable government offices, and
(b) promptly and timely signing all assignments, declarations or other documents requested in connection with the prosecution of the patent, plant variety, or trademark application(s).
Before making any distributions of revenue under the Regulation referred to in Section 7. 2, below, the amount of any fees or charges incurred by the University because of inventor’s failure or refusal to fulfill the obligations in this Section 4. 3 may be deducted from any licensing or other revenue attributable to the invention and credited to the University account from which the fees or charges were paid.
4. 4 NCSU personnel may not: (a) sign agreements with outside persons or organizations that may abrogate the University's rights and interests either as stated in the UNC Policy, these Procedures, or as provided in any grant or contract funding the research which led in whole or in part to making the invention, (b) without prior authorization, use the name, icon, symbol, or trademark of the University or any of its units in connection with any invention in which the University has an interest, unless expressly authorized to do so, nor (c) sign agreements on behalf of or as authorized representatives of the University, except to the extent authorized to do so under the university’s policy on delegation of signature authority.
4. 5 Faculty teaching courses in which students (graduate or undergraduate) do any work that may reasonably be expected to lead to inventions (e. g. , Senior Design Projects) should inform those students, preferably in the course syllabus, (a) of the existence of the UNC Policy and these Procedures, and (b) that the UNC Policy and these Procedures apply to any inventions arising out of the work done for the class in question.
5. RECORD-KEEPING
5. 1 U. S. patent law places a premium on witnessed records when two or more parties claim the same invention. The date the idea occurred (the "conception") and the date it was put into practicable form ("reduced to practice") are vital. Equally important in the eyes of the U. S. Patent Office is the "diligence" shown by contending inventors. They must prove that they regularly and consistently pursued work on the invention, documenting their efforts on a day-to-day basis. The intent of U. S. patent law is to recognize the inventor(s) who first conceived the invention.
5. 2 The careful recording of ideas and laboratory data is generally a matter of routine for industrial researchers. Each entry is complete and up-to-date, signed and witnessed. This comprises a legal record of the day's work. Record-keeping is not traditionally so routine for the academic investigator, for he or she may work at odd hours or on weekends; may be in a laboratory, an office or at home; and often lacks easy accessibility to suitable witnesses. Still, the keeping of a witnessed laboratory notebook is critical. Additionally, such records can serve as valuable repositories of new ideas. As far as is reasonably practical, faculty, staff and students are strongly advised to follow the "Guidelines for Record-Keeping" contained in Appendix A.
6. THE HANDLING OF A DISCLOSURE
6. 1 When faculty or staff members make an invention, it is their responsibility to discuss the invention with their Department Head, at which time disclosure of the invention should be considered. Students will first discuss an invention with their advisor, who will assist them in further discussion within the University. An invention manager is available in the Office of Technology Transfer to answer questions and to assist faculty, staff and students in the preparation of disclosures. If an employee of the University makes an invention through collaboration with other researchers outside of the University, that employee will promptly disclose the invention to the University in accordance with the Procedures.
All invention disclosures will be submitted to the employee(s)’ Department Head(s), who will transmit the disclosure through the Dean of his or her College(s), to the Office of Technology Transfer for consideration by the Intellectual Property Committee (hereafter sometimes referred to as the “Committee”).
6. 2 Upon receiving a disclosure, the Director of the Office of Technology Transfer refers the disclosure to one of several members of the Intellectual Property Committee. These committee members will be asked to review the disclosure, with assistance from the Office of Technology Transfer staff, from the point of view of whether or not, based on their knowledge, they believe the invention, would be most effectively made available for broad public use and dissemination by commercialization or under a cooperative agreement with a commercial or non-commercial partner.
The Director of the Office of Technology Transfer may authorize the filing of patent applications based on the disclosure, as deemed necessary by the staff of the Office of Technology Transfer, subject to the availability of funds. Potential funding sources include, but are not limited to, the University’s Patent Trust Fund; a sponsor under the terms of a sponsored research agreement; or a potential licensee of the subject invention. The Director will report any such authorization to file patent applications at the next scheduled meeting of the Intellectual Property Committee. Committee members and the Office of Technology Transfer staff will report their recommendations to the Intellectual Property Committee at its meetings.
6. 3 The Intellectual Property Committee will meet regularly and review the reports of its members. The inventor shall be allowed to examine materials submitted to the Committee in connection with his or her disclosure and may make a written and oral presentation to the Committee if the Committee finds that such a presentation would be useful. The Committee will advise on a 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:
6. 3. 1 To submit the disclosure for review by an invention management firm or agent;
6. 3. 2 To make inquiries of potential licensees that may have an interest in the invention, including the financial support of a patent application, where applicable;
6. 3. 3 To conduct a search of published and public databases to evaluate the novelty and utility of the invention;
6. 3. 4 To apply for a patent with University resources, if available (an option with limited application because of financial constraints);
6. 3. 5 To release University rights to the inventor subject to an agreement to protect the interests of the University, (under which agreement the University will retain royalty-free license rights to practice the invention for its own purposes), the sponsor, if any, and the public, including an obligation to pay to the University a percentage of future revenue, unless there are exceptional circumstances indicating that such obligation would be inappropriate;
6. 3. 6 To dedicate the invention to the public.
6. 3. 7. To waive further University interest in the invention.
6. 4 The inventor will be notified in writing of the decision of the University concerning a) costs and/or potential revenue of the invention, b) whether the University plans to file a patent application, or c) whether the University will accept the invention for management. According to the specific circumstances of each case, the University may choose to file a patent application, a course of action that will allow the University to protect the subject invention.
Upon written request of the inventor(s) and in the Committee’s sole discretion, the invention may be released to the inventor(s) if the University decides that it will do none of the following: (a) file a patent application for an invention in which it has rights, (b) license the invention, or (c) dedicate it to the public. Where applicable, release of ownership to the inventor will be subject to obtaining the permission of the sponsor of the research that resulted in the invention, if any. To the extent it is reasonably able to do so, the Office of Technology Transfer will inform the inventors within one hundred and twenty (120) days of receipt of the invention disclosure (or a mutually agreeable extended time period) regarding the University’s decision as to disposition of the invention.
Federal Government regulations require that any invention arising out of federally sponsored research must be offered to the sponsoring agency before offering rights to the inventor(s).
If an invention is released to the inventor(s), the inventor(s) may not conduct any commercial research or development on that invention at the University or using University resources. Commercial research or development includes, but is not limited to, research sponsored by a commercial entity, research obligated to a commercial entity, and/or research on behalf of a commercial entity. However, inventors may continue to use the released invention for non-commercial research, educational, or teaching purposes of the University. New invention(s) resulting from any such research, educational, or teaching uses of the released invention must be disclosed to the University in accordance with these Procedures. Potential conflicts of interest that may arise from an inventor’s use of the released invention(s) must be promptly disclosed by the inventor(s) to the appropriate department head(s) and deans for evaluation and management.
6. 5 In those cases in which the University is managing an invention without obligation to any sponsors, it will notify the inventors of any decision to cease its efforts to commercialize the invention, thus permitting the inventors to request the release of the University’s rights in the invention.
6. 5. 1. If no arrangement for commercial development of the invention has been made within three years from the date of the issuance of the patent, the University ordinarily will not continue to support the costs of any patent or patent application based on the invention. The Office of Technology Transfer will inform the Intellectual Property Committee of this decision, and unless the Committee recommends otherwise, will, before allowing any patent rights to lapse, offer rights in the invention to the inventor(s) in an agreement as described in 6. 3. 5.
6. 5. 2 Inventors may, prior to the three year post-issuance deadline described in 6. 5. 1, request in writing an assignment of the University’s rights in an invention on which the inventor is named and for which the University has not made arrangements for commercial development. The Intellectual Property Committee will promptly either grant the request or advise the inventor of the University's plans for the development of the invention.
6. 5. 3 The Office of Technology Transfer, with the concurrence of the Intellectual Property Committee, may elect to continue supporting the cost of developing an invention beyond the three years post-issuance deadline, subject to availability of funds, and provided the Office of Technology Transfer and the Committee believe that such action may ultimately result in identifying a commercialization path for the invention.
7. REVENUES
7. 1 NCSU will share with the inventors revenue it receives from inventions. As noted in section 3. 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 to sponsors or contractors.
7. 2 The gross revenues generated by an invention and actually received by NCSU is the basis upon which the inventor's share of revenue is calculated. The inventor's share of revenue will be determined under Administrative Regulations promulgated by the Chancellor or Chancellor’s designee, with the concurrence of the Intellectual Property Committee, and in accordance with applicable NCSU procedures. In no event may the share payable to the inventor or inventors in the aggregate by NCSU be less than 15% of gross revenue actually received by the University.
7. 3 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 first be used to pay for expenses incurred by the University in operating the Office of Technology Transfer or any successor unit, managing the University’s intellectual property, evaluating inventions, obtaining and maintaining patents and/or in marketing, licensing and defending inventions, investing in new intellectual property, and any other expenses required for proper management of the University’s intellectual property. The remainder will be dedicated to research purposes if approved by the Chancellor upon recommendation of the Intellectual Property Committee.
8. INVENTOR REQUESTS FOR WAIVER OF UNIVERSITY RIGHTS
8. 1 If an inventor believes that the invention is his or her own property under Section 3. 2 of these Procedures, and if the inventor prefers not to assign the rights in the invention to the University, he or she must still disclose the invention, and, in the invention disclosure, request that the Intellectual Property Committee determine the respective rights of the University and the inventor in the invention and must also include information on at least the following points:
8. 1. 1 The circumstances under which the invention was made and developed;
8. 1. 2 The employee's official duties at the time of the making of the invention;
8. 1. 3 The inventor's intention to request an acknowledgment that the University has no claim if such request is deemed appropriate;
8. 1. 4 The extent to which the inventor is 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;
8. 1. 5 The inventor's intention to request that the University prepare and file a patent application if it should be determined that an assignment of the invention to the University is not required under the UNC Policy or these Procedures.
9. PUBLICATION AND PUBLIC USE
9. 1 North Carolina State University strongly encourages scholarly publication of the results of research by faculty and students. Though the Procedures do not limit the right to publish, except for short periods of time necessary to procure intellectual property protection, 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 most foreign countries.
9. 2 In order to preserve the University’s ability to obtain rights in inventions, it is the duty of the inventor, or of his or her supervisor, if the inventor is not available, to report immediately to the Office of Technology Transfer 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 on that invention, a record must 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.
9. 3 After disclosure to the Intellectual Property Committee, the inventor must immediately notify the Office of Technology Transfer of the acceptance for publication of any manuscript describing the invention or of any sale or public use made or planned by the inventor.
10. CONTRACTUAL ARRANGEMENTS
10. 1 NCSU will follow Federal Regulations with respect to election of title in contracts and grants with Federal agencies.
10. 2 The University normally reserves the right to ownership of inventions arising out of research supported in whole or in part by grants or contracts with non-governmental organizations or firms. Contracts or agreements which are entered into between the University and such organizations or agencies should contain clauses setting forth such a reservation unless deviations therefrom are requested by the sponsor and approved by the Vice Chancellor for Research. In the interest of fair treatment to the sponsor in consideration for its investment and in the interest of discharging the University's obligation to the public in the application of its facilities and employee time and talent, special provisions may be negotiated by the Vice Chancellor for Research in such non-governmental sponsored contracts on options such as the following:
10. 2. 1 The University will retain rights to inventions arising out of such sponsored research but, if a significant portion of the research costs is borne by the sponsor, including indirect costs, the sponsor may be assured a non- exclusive, non-reassignable license for the use of the invention under favorable financial terms.
10. 2. 2 Other grants of intellectual property rights may be negotiated in the research contract based on factors which will promote effective and expeditious transfer of the technology.
10. 2. 3 In order to protect the potential intellectual property interests of both parties in such contracts in which the sponsor is accorded intellectual property rights, the following procedure may be specified.
10. 2. 4 When in the course of the sponsored research project the investigator or investigators conceive or reduce to practice an invention, then the inventor(s) will immediately inform the Office of Technology Transfer of such invention. The Office of Technology Transfer will then notify the sponsor of the invention, consistent with the terms set out in the sponsored research agreement. For a specified period as negotiated (normally three months but in any case not more than twelve months), the University will make available to the sponsor all pertinent information and disclosures which may be required for the development of an appropriate patent application. During this period, the investigators agree not to disclose this material to the public and agree to cooperate in efforts to secure the patent. At the end of this agreed period, the investigators and the University will be free to proceed with publications and making public such other documents as they may choose. With the exception of the above-mentioned agreed period, the University will operate industry-sponsored contracts in the normal manner with no other special considerations being given to the sponsor. Under no circumstances will the sponsor have the right to prevent the publication of material or information derived during the conduct of the program or as a result of the research program.
10. 2. 5 Prior to the University’s entering into any agreement which requires the investigator(s) and the University to delay disclosing information as described above, the University must secure written agreement of the principal investigator(s) involved in the research to these conditions.
11. INVENTION MANAGEMENT AND ADMINISTRATION
11. 1 NCSU recognizes that the evaluation of inventions and the administration, development and management of inventions involves substantial time and expense and requires talents and experience not ordinarily found among its faculty and staff; therefore, it employs The Director, Office of Technology Transfer to provide assistance. The University may contract with outside agents for certain services. It may enter into a contract or contracts with an outside organization regarding specific inventions in which the University has an interest. The University may manage an invention using its own resources.
11. 2 The Chancellor shall appoint an Intellectual Property Committee (sometimes referred to herein as the “Committee”) with majority faculty representation. The Vice Chancellor for Research and Graduate Studies serves as Chairman of the Committee. The Committee reviews and recommends to the Chancellor, or the Chancellor's delegate, changes in these Procedures, decides upon appropriate disposition of invention disclosures, resolves questions of invention ownership, recommends to the Chancellor the expenditure of invention-derived revenue, and makes such recommendations as are deemed appropriate to encourage disclosures and to assure prompt and effective handling, evaluation, and management of inventions, and to protect the interests of the University and the public. The Director of the Office of Technology Transfer (or designee) serves as staff for the Committee and attends all meetings.
12. APPENDIX A
12. 1 Guidelines for Record-Keeping
12. 1. 1 Good practice is to use bound notebooks for records, making entries on a daily basis. This "diary" format provides among other things, a day-to-day chronology.
12. 1. 2 Use the notebook to record a conception (a complete description of an idea to accomplish a particular purpose or result), laboratory data and drawings. Each entry should be headed with a title and continued on successive pages.
12. 1. 3 Make entries in ink and do not erase or use correction fluid to cover errors. Draw a line through text or drawings to be deleted, and enter the material in corrected form. Draw a line through blank spaces on the page.
12. 1. 4 Separate sheets and photographs pasted to notebook pages should be referred to in an entry. Material that cannot be incorporated in the notebook should be keyed to an entry.
12. 1. 5 Sign and date all entries at the time they are made, and have them witnessed. A witness must be someone who has read the material and is capable of understanding it, yet has nothing to do with producing it. Secure additional witnesses when something important or highly unusual is discovered. Remember that an inventor and his or her potential co-inventors cannot serve as their own witnesses.
12. 1. 6 Set aside a time for making notebook entries and faithfully observe it. Arrange to have two or more colleagues serve as witnesses on a consistent, frequent basis.