University of Virginia Library

PATENT POLICY FOR THE UNIVERSITY OF VIRGINIA

The following resolution was adopted:

• RESOLVED by The Rector and Visitors of the University of Virginia that the following is adopted as the official policy with respect to the Patent Policy for the University of Virginia:

PATENT POLICY
FOR
THE UNIVERSITY OF VIRGINIA

Policy

The policy of the University of Virginia is to consider and, where appropriate, assist in the patenting and commercial development of any discovery or invention which is the product of University research. Any person who may be engaged in University research shall be required to execute a patent agreement with the University in which the rights and obligations of both parties are defined.

This policy is intended to:

1) provide an incentive to creative intellectual effort and the advancement of knowledge for the welfare of mankind;

2) insure that the respective interests of the researcher (as faculty or staff member or student), the University, any supporting sponsor, and society are considered and protected through the development of fair contracts and procedures;

3) assist the researcher and the University to realize tangible benefits from inventions or discoveries; and

4) advance and encourage further research within the University with whatever funds accrue to the University from inventions resulting from University research.

Definition of University Research and Researcher

For the purpose of this Patent Policy and any documents developed for its implementation, University research is defined as research and related activities by any person a) which are related in any way to duties or responsibilities for which he has been compensated either by or through the University or b) for which facilities owned, operated, or controlled by the University are used.

Products of research eligible for copyright protection are excluded from this definition.

Modification of this definition of University research may be effected by the terms of a contract between the University and another public or private agency or, in exceptional circumstances, in the patent agreement with an individual University researcher.

A researcher is any person who may be engaged in University research.

Administrative Responsibilities

1. Associate Provost for Research

Responsibility for the administration of the University of Virginia Patent Policy is assigned to the Associate Provost for Research.

The Associate Provost for Research shall

1) develop standards and procedures appropriate for the implementation of this policy;

2) obtain, maintain, and insure compliance with signed patent agreements 1) between the University and each researcher and 2) between the researcher and a sponsor agency as required by the terms of a grant or contract;

3) judge whether an invention or discovery is the product of University research;

4) determine whether an invention or discovery which is the product of University research is patentable;

5) determine whether the University should claim equity in the patenting of an invention or discovery which is the product of University research, or whether all rights should be waived in favor of the inventor. In the latter case, the inventor should be informed in writing by the Associate Provost for Research that the University relinquishes all claims to the invention or discovery;

6) investigate possible courses of action for the patenting and/or marketing of an invention or discovery in which the University has an equity;

7) after soliciting the review and comments of the appropriate academic dean on (3), (4), (5) and (6), investigate and select alternative plans for implementation of the chosen course of action for the patenting and/or marketing of an invention or discovery in which the University has an equity;

8) recommend for the signature of the University Comptroller any formal agreement between the University and an outside agency which may be required in executing the course of action in (7);

9) be responsible, with appropriate support from the Office of Sponsored Programs, for preparing all reports for inventions, discoveries, and patents which are the product of University research;

10) maintain a file for each disclosure which will contain complete records of all actions;

11) prepare an annual report for the University Research Policy Council.

All actions shall be taken and decisions made within a reasonable time so that an inventor's options are not compromised unfairly.

2. The Office of Sponsored Programs

In implementing the Patent Policy, the Office of Sponsored Programs shall

1) inform the Office of the Associate Provost for Research and principal investigator of all requirements regarding patents in any grant or contract accepted by the University of Virginia;

2) with the aid of the principal investigator and in conjunction with the Office of the Associate Provost for Research, provide all invention reports and other pertinent information regarding patents as required by the terms of a grant, contract, or agreement.

3. The University Patent Committee

A Patent Committee, appointed by the President from recommendations by the University Research Policy Council, will consist of at least five members, including representation from the Schools of Engineering, Arts and Sciences, Medicine, Law and Graduate Business. The University Patent Committee shall

1) review and recommend to the University Research Policy Council for approval the standards and procedures and any amendments thereto developed by the Associate Provost for Research for the implementation of the Patent Policy;

2) when agreement among the parties cannot be reached, serve as a board to which the researcher may appeal decisions of the Associate Provost for Research, subject to appropriate review standards and procedures, and make subsequent recommendations to the University Research Policy Council;

3) consult with the Associate Provost for Research when requested.

4. The University Research Policy Council

The University Research Policy Council shall

1) recommend to the President appointments to the University Patent Committee;

2) approve the standards and procedures and any amendment thereto developed by the Associate Provost for Research for the implementation of the Patent Policy;

3) conduct an annual review of the patent program with the Associate Provost for Research;

4) administer the special fund which shall be established for any royalties accruing to the University as a result of the implementation of this policy;

5) where the actions of the Associate Provost for Research are appealed to the University Patent Committee, review the recommendations of the University Patent Committee and instruct the Associate Provost for Research on appropriate subsequent action.

Distribution of Royalties to the Inventor(s)

In general, the inventor(s) will receive from any product of University research fifteen percent of the gross royalties which accrue from inventions for which the University obtains and holds patent.

An institutional agreement between the University and an outside patent management firm, such as Research Corporation, or between the University and a Federal agency, such as the National Institutes of Health, will specify a distribution of royalties.

Individual grants or contracts for sponsored University research with public or private agencies may specify an assignment of patent(s) ownership and distribution of royalties of which the researcher shall be informed before research is conducted under such an award or contract.

Inventions and Discoveries which are not the Result of University
Research

The University normally will relinquish any claim to an invention or discovery which is judged by the Associate Provost for Research not to be the product of University research. However, in such cases the researcher may request that the invention or discovery be appraised by and, if appropriate, assigned to the University. In such cases, the terms of the agreement will be determined by the inventor and the University.