 | Board of Visitors minutes October 16, 1964 |  |
STATEMENT OF PATENT POLICY AND PROCEDURE
The following resolution was adopted:
WHEREAS the Armed Services Procurement Regulations require the University of Virginia to have
"a definite, established policy, approved and promulgated by its governing body, of retaining
title to inventions made by its employees or of requiring its employees to assign title to such
inventions to a patent holding entity for the benefit of the institution, ",
NOW THEREFORE BE IT RESOLVED by the Board of Visitors of The Rector and Visitors of the
University of Virginia that the following statement of patent policy and procedure be and it is
hereby approved:
I. Purpose, Coverage, and Objectives.
1. Purpose. The purpose of this statement is to establish the patent
policy of the University with respect to inventions with which it may
be concerned and outline uniform procedures to be followed in seeking
their patenting and development. It is intended that all provisions
of this statement, whether relating to policy or procedure shall be
construed and administered in accordance with the research policy of
the University which has been separately stated.2. Coverage. This statement covers all inventions made by a faculty
member, official, employee or student of the University or made by any
other person occupying a position which the University deems to be such
as to make him a member of the academic community of the University,
when the invention results from University research as herein defined.45It also covers inventions that do not result from University research
when any such invention is referred to the University for handling as
hereinafter provided in Section V.For the purpose of administering this statement "University Research"
means. Any research supported by funds administered by the University
or for which facilities operated or controlled by the University are
used.Although an invention may result from activities which fall within
the above definition of University research, nevertheless, if it
results from a project undertaken by the University pursuant to a
contract between the University and an outside sponsor and during
the effective period of such contract, the terms and conditions
of that contract, instead of the provisions of this statement, will
govern the handling of the invention and the rights of the parties
interested. It is contemplated that all such contracts between the
University and an outside sponsor of research will be made in
accordance with the University's stated research policy. When, by
the terms of a contract between the University and an outside sponsor
of research, the University is given the right to elect whether or
not it will take over an invention, or when the outside sponsor
renounces any rights under the contract in favor of the University,
in either such event, the invention will be handled by the contracting
authorities of the University in accordance with the circumstances
and merits of the individual case.3. Objectives. The principal objectives of this statement are:
(1) To adhere to the University's research policy in the
administration of the policies and procedures set forth in this
statement.(2) To provide adequate recognition and incentive to inventive
talent by securing to the inventor a just share of any proceeds from
the development of his invention, and at the same time to recognize
and protect the equity to which the University is entitled in
inventions resulting from University research.(3) To make inventions resulting from University research and
other inventions handled through the University, as provided in
Section V, widely available to qualified users in the public interest,
under conditions calculated to promote their most effective development
and utilization in the public interest, free from unnecessary exclusions
or restrictions.(4) To assure as far as practicable that funds accruing to the
University from its equity in inventions which result from University
research or from other inventions which may be handled through the
University as hereinafter provided, will be employed for the purpose
of advancing and encouraging further research within the University.
II. The University Patent Committee.
The Patent Committee is a standing committee appointed by the President
of the University to administer the policies and procedures established
by this statement. Except as may be herein otherwise provided with
respect to the referral of inventions to research corporation, the
Patent Committee cannot commit the University to act, but can only
recommend and report to the President of the University to whom it is
responsible. Any contract or agreement to which the University is
party must be entered into on behalf of the University by its duly
authorized contracting officials.The Patent Committee has no authority initially to pass upon the
propriety or acceptability of any research project or any contract
tendered to the University by an outside sponsor of research. The
Patent Committee will, however, investigate, report, and make its
recommendations on any specific questions referred to it by the
President and relating to an invention or patent in which the
University is interested, including questions that may arise from
contracts for sponsored research.III. Relations Between the University and Research Corporation.
Research Corporation, hereinafter referred to as "Research" is a
non-profit foundation which distributes its total net income as
grants-in-aid of research to colleges, universities, and scientific
institutions. As stated in its charter, it was established to
receive and to acquire inventions and to render the same more available
and effective in the useful arts, to provide means for the advancement
of scientific investigation by contributing the net earnings of the
corporation to scientific and educational institutions, and to receive
other monies and property and to apply the same to the objects specified.In general, it is not the University's policy to take title to an
invention or patent. The University has, however, entered into an
agreement with Research whereby if the Patent Committee recommends
the assignment of an invention to Research and it accepts this
assignment, Research patents and commercializes the invention without46
expense to the inventor and agrees to pay a share of the gross income
to the inventor. The net income from the invention, after the payment
of the inventor's share and certain special expenses in connection with
the invention, is shared between the University and Research. The
University, in turn, is free to allocate its share of the net income
received from Research for any purpose it deems advisable. In making
such allocations, however, it is to be understood that preferential
considerations will be given to requests from the school or department
from which the invention arose.IV. Relations Between the University and Faculty Members, Officials, Employees
and Students and Others, Procedure.All faculty members, officials, employees and students of the University,
in consideration of their association with the University and of their
privilege of using funds administered and facilities controlled by it,
are urged to handle all inventions and patents during such associations,
and resulting therefrom, as follows:1. Every person covered by this statement shall promptly inform the
Chairman of the Department in which he is conducting the research, of any
invention made by him during the progress of such research. If the
Department Chairman is of the opinion that the invention resulted from
University research or is doubtful as to whether or not it resulted from
University research, he shall report the invention together with all
pertinent information to the Patent Committee.2. If the Patent Committee, after consultation with the Department Chairman
and the inventor, finds that the invention resulted from University research,
the Committee will submit the invention to Research Corporation for its
consideration pursuant to the contract between the University and Research
Corporation described in Section III, unless, because of extraordinary
circumstances the Committee further finds that the best interests of the
University and the inventor require a different method of handling the
invention. The inventor shall furnish the Patent Committee with all
necessary drawings and other pertinent data, to be forwarded to Research
Corporation to enable that Corporation to give full consideration to the
merits of the invention.3. If the Patent Committee finds that the invention did not result from
University research, it will report the fact to the President of the
University with the recommendation that the University, through its proper
contracting officer, inform the inventor that the University has no interest
in the invention.4. If Research Corporation accepts an invention submitted to it by the
University as herein provided, the inventor shall in accordance with the
contract between the University and Research Corporation, execute all
papers which may be necessary or appropriate to assign the invention to
Research Corporation for handling on the terms set forth in the aforesaid
contract.5. When an invention resulting from University research is accepted by
Research Corporation under its contract with the University, the inventor
will receive 15 per cent of the gross income accruing to Research
Corporation from the invention. The University's share will be its
percentage of the remaining net income pursuant to the terms of its
contract with Research Corporation.6. If an invention resulting from University research is submitted to
Research Corporation but is not accepted by that Corporation, the Patent
Committee shall promptly notify the inventor and, after consultation
with the inventor and his Department Chairman, shall report the matter to
the President of the University with the Committee's recommendation either
(a) that the invention be relinquished to the inventor to be handled by
him as he may see fit, free from any claim of the University, or (b) that
the University and the inventor enter into an agreement for the assignment,
patenting or licensing of the invention in such manner and upon such terms
as will best promote and protect the interests of the inventor and the
University, including the terms upon which any proceeds of the invention
will be shared by them. If the Committee's recommendation to relinquish
the invention to the inventor is accepted, the President or the authorized
contracting officer of the University will so inform the inventor by
appropriate letter. If the recommendation of the Committee to pursue the
invention further as outlined in this paragraph is accepted, the inventor
shall abide by the University's decision and shall execute all papers and
instruments which may be necessary or appropriate to carry that decision
into effect.7. If an invention resulting from University research is not submitted to
the Patent Committee to Research Corporation for the reasons mentioned in
paragraph 2 of this section IV, the subsequent procedure shall be the same
as that prescribed in paragraph 6 of this section IV for inventions
submitted to, but not accepted by, Research Corporation.478. If a research unit exists independently of a department,
reference herein made to the Chairman of the Department shall
mean the Administrative Officer of the unit.
V. Privilege to Refer Inventions Which Do Not Result from University
Research.Any person covered by this statement may refer an invention made by
him which did not result from University research to the Patent
Committee with the request that it be submitted to Research Corporation
pursuant to the contract between the University and that Corporation
The Patent Committee shall thereupon forward a description of the
invention and such other data as the inventor may provide, to
Research Corporation for its consideration. If the invention is
accepted by Research Corporation, the inventor shall agree to
execute all papers which may be required to assign the invention
to Research Corporation in accordance with its contract with the
University and to effectuate its handling of the invention. In
such cases the inventor shall be entitled to whatever share he may
specify of the gross income received by Research Corporation from
the invention, not to exceed 40 per cent thereof, and the University
will inform Research Corporation accordingly. Any such amount in
excess of 15 per cent will be deducted from the University's share
of the net proceeds to be received by it from Research Corporation.
If Research Corporation does not accept an invention submitted to it
under the terms of this section V, the Patent Committee shall promptly
so notify the inventor and he shall be free to handle the invention
as he may see fit, free from any claims on behalf of the University.
| Board of Visitors minutes October 16, 1964 | |