14.3.7 Patent Licensing

The University encourages the development of inventions and technology resulting from University research by industry for public use and benefit. It recognizes that protection of proprietary rights in the form of a patent or copyright are often necessary - particularly with inventions derived from basic research - to encourage a company to risk the investment of its personnel and financial resources to develop the invention. In some cases an exclusive license may be necessary to provide an incentive for a company to undertake commercial development and production. Nonexclusive licenses allow several companies to exploit an invention.

Not all inventions are patentable. Questions relating to patentability are often complex and usually require professional assistance. Nonetheless, it can be said that an important criterion of patentability is that an invention must not be obvious to a person with ordinary skill in that particular field. It must also be novel, in the sense that it not have been previously publicly known or used by others or patented or described in a printed publication anywhere. Priorities. The research and teaching missions of the University always take precedence over patent considerations. While the University recognizes the benefits of patent development, it is most important that the direction of University research not be established or unduly influenced by patent considerations or personal financial interests. This priority to research and teaching does not exonerate inventors of their obligation to disclose inventions to TLS. Responsibility for Licensing. The TLS handles the evaluation, marketing, negotiation and licensing of University-owned inventions with commercial potential. Royalty Distribution and Equity Participation. Cash royalties and equity participation shall be handled, in principle, as set forth below. Cash Royalties. After deductions for TLS expenses, royalty income is divided one-third to the inventor, one-third to the inventor’s laboratory, and one-third to the University. When more than one laboratory is involved, the inventor shall designate the distribution of the one-third allocated for the laboratory based on support of the work. If the inventor’s laboratory dissolved, the University shall assign the distribution of the laboratory to the University. A deduction of 15% to cover the administrative overhead of the TLS is taken from gross royalty income, followed by a deduction for any directly assignable expenses, typically patent filing fees. Disagreements involving royalty distribution will be reviewed and resolved by the TLS; involved parties may appeal the TLS resolution to the President. Equity Participation. The University may at times accept equity from a corporate licensee as part of the licensing agreement (all other cash payments, including royalties based on sales, will be distributed in accordance with the provisions of, above.) Loss of Patentability. Inventions that are patentable initially may become non-patentable for a variety of reasons. An invention becomes non-patentable if a formal application is not filed with the Patent Office within a prescribed period of time of disclosure in a publication or of any other action that results in the details of the invention becoming generally available. Filing for International Patent Protection. International patent protection is important for industry to develop its product world-wide. An International Patent application may be executed through the Patent Cooperation Treaty (PCT) route. The PCT procedure has many advantages for the applicant, including giving the applicant up to 18 months to seek protection in foreign countries.

Table of Contents