The Catholic University of America

Patent Policy

 

Approved by: Academic Senate
History: Issued   -- April 19, 1984  
  Revised  
  Additional History
Related Policies: Conflicts of Interest (Faculty Research); Copyright Policy
Additional References: Disclosure Form (for submission to Associate Provost for Research)
Responsible Official: Associate Provost for Research
 

I.      Preamble

The discovery and revelation of information is an important objective of The Catholic University of America. As a rule, original contributions of faculty members are revealed in the published literature for all to read and use. University scholars have historically accepted their moral obligation to enlighten at least the scholarly world of their original research, whether the research adds new information or whether it may be put to practical use. The aims of the University traditionally have included the desire to "search out truth scientifically, to safeguard it, and to apply it to the molding and shaping of both private and public life" (Statutes of 1937).

II.      Introduction

The inventor and his or her institution have the clear obligation to make research contributions factually available to the public. Realization of this end may involve patenting the contribution in order to provide maximum benefit to the public from scientific research findings.

The University, recognizing the obligation to encourage research and a spirit of inquiry, and to play an active part in invention disclosure and development, publishes this patent policy. It is the official statement of the University on this matter, and is approved by the President and the Academic Senate. The responsibility for the review and overall management of University Patent Policy will be carried out by a committee made up of members appointed by the Provost and administered by the Office of Technology Transfer.

III.      Policy

A.   Applicability

This policy applies to all schools, departments, and administrative units of the University. It applies to: all full and part-time faculty members, lecturers and instructors; full and part-time staff (including student employees); and students not employed by the University but who generate inventive concepts using substantial University resources (including any University funds, facilities [including laboratories, equipment, supplies] or information [including computer programs, computer time, and computer data bases]).

It applies to the individuals described above in any scholarly or scientific research situation under the auspices of the University or affiliated corporations or institutions and to any inventive concept or invention (as defined by the U.S. Patent Act, Title 35 U.S. Code as amended) that arises as a result of an employment relationship with the University or its affiliates or as a result of substantial use by a researcher of University resources, facilities, or information.

Research work financed wholly or in part by an outside sponsor comes under the provisions of the grant or contract covering such work, but inventions under such sponsors must be reported as required in Section III.

The University has no vested interest in inventions discovered by faculty, lecturers, instructors, staff or students entirely on their own time and without the use of University resources as defined above. It is the policy of the University that all such inventions shall be reported to the Office of Technology Transfer to determine the degree of University interest.

Any person otherwise within the terms of this policy may request a waiver or modification of any or all of the terms of the policy. The Patent Committee of the University shall consider such requests and report to the Provost for resolution.

B.   Establishment of the Inventor Commitment

In all instances where the results of research should be investigated for patent possibilities, a request for such investigation should be submitted to the Office of Technology Transfer for review by the Patent Committee.

Any person to whom this policy is applicable is required to report any inventions or inventive concepts in which he or she is involved to the Office of Technology Transfer.

Any inventors covered by this policy shall cooperate in the disclosure, patenting, development and licensing of any inventions with which he or she is involved and in which the University has an interest as defined herein. Every University employee or student to whom the patent policy is applicable shall agree to assign to the University, to a patent development agency designated by the University or to a sponsoring agency (if required under agreements governing the research activity) any and all inventions in which the University has an interest. In addition, all employees or students shall agree to execute such documents of assignment of patent title as are necessary at the time a patent application is forwarded to the U.S. Patent Office and to do everything that may be reasonably required to assist all assignees to obtain, protect, and maintain patent rights.

C.   Patent Development

If the University determines that it has no interest in an invention or decides to forego the patenting of an invention, or fails to file a patent application within six months from the date of submission of the patent disclosure to the University, it shall formally waive its rights to the invention. Only as a service, and not as an obligation, the University then may provide assistance to an inventor in pursuing a patent.

On the recommendation of the Patent Committee the Office of Technology Transfer may transmit the invention disclosure to a patent development organization to obtain an evaluation of the invention. Contacts between the inventor and patent development organizations are coordinated by that Office. The Office will transmit invention disclosures to the Federal Government where the terms of the grant or contract so provide, and will be cognizant of any special requirements of granting or contracting agencies.

When it is determined by the Patent Committee that an invention in which the University has an interest requires development beyond the capability or proper function of the University, the University may secure such development through appropriate agreements with outside agencies. If an invention has been developed to the point of practical commercial application, the inventor and the University may determine that it is in their best interests for the University to be responsible for patent application and management. In such cases, the cost of patent application and related activities leading to active licensed production shall be paid from University funds and this cost shall be a prior charge to any royalty to be recovered.

The Office of Technology Transfer will make recommendations relative to committing the University to the grant of exclusive licenses as a condition of sponsorship for particular research projects.

D.   Income-Sharing Arrangements

To recognize creativity and to encourage the prompt disclosure of inventions, the University policy with regard to distribution of royalty income is as follows:

NET ROYALTY INCOME INVENTOR UNIVERSITY

0 - $10,000 100% 0%

more than $10,000 50% 50%

Royalty payments related to inventions developed with the assistance of Federal funds will be subject to any limitations on the division of royalties imposed by the funding agency.

The University share of net income will be placed in a special account to be used by the University for research related purposes.

E.   Resolution of Disputes

This Patent Policy is administered by the Office of Technology Transfer under the direction of the Patent Committee. In the event of any differences between the Committee and an inventor which cannot be resolved directly, the dispute shall be submitted to a special three-member panel consisting of one person representing the inventor, one person representing the Patent Committee, and a third person designated by the first two. The panel shall make their recommendation for the resolution of disputes to the Provost.