- PREAMBLE
1.1 North Carolina State 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 this is necessary to prepare and file applications. Patentable inventions
sometimes arise out of research activities of its faculty, staff and students
which are carried out wholly or in part with University facilities. 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 and licenses to encourage their
development and marketing. Patents and their 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 agreement with private industry or other private organizations, must
keep the interests of the general public in view. The rights and privileges
set forth in cooperative agreements or contracts, with respect to patents
and copyrights 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.
- PURPOSES
The North Carolina State University
Patent and Copyright Procedures are designed to implement the Patent and Copyright
Policies of The University of North Carolina. The procedures incorporate the
interests of the faculty, staff, and students, the institution, and the sponsors
of research, because in many cases those interests are congruent in desiring
to 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
patentable 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 royalty, but also in recognition. Finally, these procedures
should provide an efficient and timely mechanism for reaching a decision about
patenting with a minimum involvement of the inventor's time so that he or
she may continue to be productive in the laboratory and classroom. To this
end the University employs a patents administrator whose duties include providing
assistance to faculty, staff and students in matters related to inventions.
- OWNERSHIP
3.1 As defined by the Patent and
Copyright Policies of the Board of Governors of The University of North Carolina,
to which these Procedures are expressly subject, North Carolina State University
has an interest in all inventions of University personnel, including students,
that are conceived or first actually reduced to practice 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.
3.2 Faculty, staff, and students,
whose inventions are made on their own time, outside the scope of their employment
or association with the University and without University facilities, materials,
or resources and which inventions are, therefore, their exclusive property
as specified by the Patent and Copyright Policies, may submit their 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 the NCSU
Patent 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 license patent rights to the contracting party. 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.
3.6 Students who are pursuing
only non-research related studies shall not be obligated to sign an NCSU Patent
Agreement. However, if the student should make an invention which is, or may
be, subject to University ownership in accordance with the Patent and Copyright
Policies, the student shall disclose the invention to the University as provided
under these Procedures and the University, together with the student, shall
determine an equitable resolution of ownership rights.
- RESPONSIBILITIES OF NCSU PERSONNEL
4.1 NCSU personnel who, either
alone or in association with others, make an invention in which NCSU has or
may have an interest shall disclose such inventions to the Vice Chancellor
for Research. The Vice Chancellor for Research will promptly acknowledge receipt
of disclosures and will distribute the disclosures to the Intellectual Property
Committee for consideration at its next meeting.
4.2 For any invention in which
the University has an interest, the inventor, upon request of the Vice Chancellor
for Research shall execute promptly all contracts, assignments, 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 patents
or patent applications relating to the invention.
4.3 NCSU personnel may not: a)
sign patent agreements with outside persons or organizations that may abrogate
the University's rights and interests either as stated in the Patent Policies
or as provided in any grant or contract funding the research which led in
whole or in part to making the invention, nor b) without prior authorization,
use the name of the University or any of its units in connection with any
invention in which the University has an interest.
4.4 All faculty teaching courses
in which students do work that may lead to patentable inventions should inform
the students of the existence of the NCSU Patent and Copyright Policies and
of these Procedures.
- SUGGESTED PROCEDURES FOR RECORD-KEEPING
5.1 U.S. patent practice 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 practice 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 pursued
work on the invention, documenting their efforts on a day-to-day basis. The
intent of U.S. patent laws is to recognize the first inventor; the one who
originated the idea. Under these laws, the first to conceive and reduce to
practice will receive a patent if the records bear out the claims; the first
to conceive and the last to reduce to practice may win if the records show
diligence.
5.2 The careful recording of ideas
and laboratory data is a matter of routine for industrial researchers. Each
entry is complete and up-to-date, signed and witnessed; a legal record of
the day's work. Record-Keeping is not nearly so simple for the academic investigator,
for he or she may work at odd hours or on weekends; may be closeted 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 advisable. Additionally,
such records can serve as valuable repositories of new ideas. As far as practical,
faculty, staff and students are encouraged to follow the "Guidelines
for Record-Keeping" contained in Appendix A.
- THE HANDLING OF A DISCLOSURE
6.1 When faculty or staff members
make an invention, it shall be their responsibility to discuss their discovery
or invention with the Department Head at which time the possibility of exploring
patenting should be considered. Students should first discuss an invention
with their instructor, who shall assist them in further discussion within
the University. The patents administrator is available to discuss possible
inventions and to assist faculty, staff and students in the preparation of
disclosures. If the invention appears to be a matter that should be considered
for patenting, the inventor(s) should prepare a disclosure utilizing guidelines
for invention disclosures which can be obtained from the patents administrator.
The Department Head should transmit the disclosure through the Dean of his
School to the Vice Chancellor for Research for consideration by the Intellectual
Property Committee.
6.2 Upon receiving a disclosure,
the Chairman of the Intellectual Property Committee may refer the disclosure
to one of several technical advisory committees to the Intellectual Property
Committee. Technical advisory committees will be appointed by the Vice Chancellor
for Research and will be composed of faculty and staff who are knowledgeable
and experienced in broad disciplinary or cross-disciplinary areas. These individuals
will be asked to review the disclosure from the point of view of whether or
not, based on their knowledge, they believe the invention, if patented, would
be a strong, viable, commercial product that would have a large market. The
technical advisory committee in each area will meet prior to each Intellectual
Property Committee meeting if they have any disclosures presented to them,
and will discuss the disclosures and make to the Intellectual Property Committee,
prior to its meeting, one of the three recommendations:
6.2.1 That the disclosure has
significant commercial possibilities.
6.2.2 That the disclosure does
not appear to have significant commercial possibilities.
6.2.3 That the technical advisory
committee could not determine, based on its knowledge, whether or not the
disclosure has significant commercial possibilities.
6.3 The Intellectual Property
Committee will review each written disclosure promptly. The inventor or
a representative shall be allowed to examine materials submitted to the Committee
in connection with the disclosure and to make a written and oral presentation
to the Committee. The Committee will decide 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 a patent or invention management firm or agent;
6.3.2 To make inquiries of potential
licensees that may have an interest in the invention, including the financing
of a patent application, where applicable;
6.3.3 To conduct a patent search
concerning the patentability of the disclosure;
6.3.4 To apply for a patent
with University resources (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, the sponsor, of any, and the public, including an obligation
to pay to the University a percentage of future royalties or profits in
cases where it is necessary to recognize the University's contribution;
6.3.6 To dedicate the invention
to the public. To waive further University interest in the invention.
6.4 Normally, within four weeks
of the receipt of the disclosure, the inventor will be notified in writing
of the decision of the Committee on a) the equities involved including financial
participation, b) whether the University plans to file a patent application,
or c) whether the University will accept assignment of the invention for patenting,
licensing and/or commercial handling as applicable. If the University chooses
not to file a patent application for an invention in which it has rights,
or not to license the invention, or not to dedicate it to the public, upon
the inventor's written request the invention, at the Committee's discretion,
may be released in writing to the inventor, with the permission of the sponsor,
if any.
6.5 In those cases in which the
University has obtained a patent without obligation to sponsors, if no arrangement
has been made for commercial development within five years from the date of
the issuance of the patent, the inventor(s) may request in writing an assignment
of the University's patent rights. 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.
- ROYALTY
7.1 NCSU shall share with the
inventors revenue it receives from patents or 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 of royalty shares to sponsors or contractors.
7.2 The gross royalty revenues
(net amount received by the University if there is a specific agreement in
a grant or contract with a sponsor) generated by a patent or invention shall
be the basis upon which the inventor's royalty is calculated. Unless otherwise
agreed, the inventor's share of royalty revenues shall be 25% of the gross
revenue. In the case of co-inventors, the 25% of gross revenue shall be subdivided
equally among them, unless the inventors, with the concurrence of the Intellectual
Property Committee, determine a different share to be appropriate. Applicable
laws, regulations or provisions of grants or contracts may, however, require
that a lesser share be paid to the inventor. In no event shall the share payable
to the inventor or inventors in the aggregate by the University be less than
15% of gross royalties received by the University. Further, when 10% of annual
gross revenue from a specific license agreement equals or exceeds $1,000,
that amount shall be distributed to the laboratory which generated the invention
which is the subject of the license agreement; provided, however, that the
maximum annual distribution under this provision shall not exceed $50,000.
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 applied
to reimburse the University for expenses incurred by it in obtaining and maintaining
patents and/or in marketing, licensing and defending patents or licensable
inventions and the remainder will be dedicated to research purposes that may
include research in the inventor's department or unit, if approved by the
Chancellor upon recommendation of the Intellectual Property Committee.
- INVENTOR REQUESTS FOR WAIVER
OF UNIVERSITY RIGHTS
8.1 If an inventor believes that
the invention was made outside the general scope of his or her University
duties, and if the inventor does not choose to assign the rights in the invention
to the University, he or she shall, in the invention disclosure, request that
the Patent Committee determine the respective rights of the University and
the inventor in the invention and shall also include information on 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 prosecute a patent application if it should
be determined that an assignment of the invention to the University is not
required under the Patent and Copyright Policies.
- 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 Patent and Copyright Policies do not limit the right
to publish, except for short periods of time necessary to protect patent rights,
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 certain foreign
countries.
9.2 In order to preserve rights
in unpatented inventions, it shall be the duty of the inventor, or of his
or her supervisor if the inventor is not available to make such a report,
to report immediately to the Vice Chancellor for Research 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 upon that invention, a record
shall 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 shall immediately notify the Vice Chancellor
for Research of the acceptance for publication of any manuscript describing
the invention or of any sale or public use made or planned by the inventor.
- CONTRACTUAL ARRANGEMENTS
10.1 North Carolina State University
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 patents on 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 patents arising out of such sponsored research but, if a significant
portion of the research costs are borne by the sponsor, including indirect
costs, the sponsor may be assured a non- exclusive, non-reassignable license
at a most favorable royalty rate for the use of the patent.
10.2.2 Other patent or licensing
alternatives may be negotiated in the research contract based on factors
which will promote effective and expeditious transfer of the technology.
Research sponsors are encouraged to seek guidance from the Office of the
Vice Chancellor for Research.
10.2.3 In order to protect the
potential patent interests of both parties in such contracts in which the
sponsor is accorded patent 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 a discovery which appears to be patentable, then the
inventor(s) will immediately inform the sponsors and the University of such
discovery and will, for a specified period as negotiated (normally three
months but in any case not more than twelve months), 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 thereof
other than for the agreed period indicated above.
10.2.5 Prior written agreement
of the investigators involved in research investigations to be carried out
under these conditions must be secured by the University to enable the University
to discharge its agreed obligations under such a contract.
- PATENT MANAGEMENT AND ADMINISTRATION
11.1 North Carolina State University
recognizes that the evaluation of inventions and discoveries and the administration,
development and processing of patents and licensable 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 Administration 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 covering specific inventions or discoveries
believed to be patentable and patents developed therefrom or covering all
such inventions, discoveries and patents 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 consisting of no fewer than three members.
The Vice Chancellor for Research shall serve as Chairman of the Committee.
The Committee shall review and recommend to the Chancellor, or the Chancellor's
delegate, charges in these Procedures, decide upon appropriate disposition
of invention disclosures, resolve questions of invention ownership, recommend
to the Chancellor the expenditure of invention royalties, and make such recommendations
as are deemed appropriate to encourage disclosures and to assure prompt and
effective handling, evaluation, and prosecution of invention opportunities
and to protect the interests of the University and the public. The Director
of the Office of Technology Administration shall serve as staff for the Committee
and shall attend all meetings.
- COPYRIGHT PROCEDURES
12.1 As a general rule, all rights
to copyrightable material are the property of the author. The distribution
or royalties, if any, is a matter of arrangement between the author and his
or her publishers or licensees. Different treatment may be accorded by the
University in case of specific contracts providing for an exception, in cases
where the University or sponsor may employ personnel for the purpose of producing
a specific work, where treatment is deemed necessary to reflect the contribution
of the institution to the work, as in the case of software or audiovisual
material, or where a sponsored agreement requires otherwise. All agreements
concerning copyright ownership should be in writing and should be signed by
the parties and approved by the Vice Chancellor for Research prior to the
commencement of the work.
12.2 An institute, center, or
other unit of the University that is itself a publisher and that engages faculty
members and other employees to write for publication by that unit as a part
of their professional duty or to produce other copyrightable materials, such
as audiovisual materials or computer software, may, subject to the approval
of the Vice Chancellor for Research, adopt rules providing that copyright
on materials prepared by such faculty members and other employees in the course
of their professional work for that unit vests in the University and not in
the author.
12.3 Guidelines and procedures
for determining faculty, staff and student ownership of computer software
were adopted by the NCSU Board of Trustees, effective July 1, 1987, and are
available under separate cover from the Office of the Vice Chancellor for
Research or the Office of Technology Administration.
- APPENDIX A
13.1 Guidelines for Record-Keeping
13.1.1 Good practice is to use
bound notebooks for records, making entries on a daily basis. This "diary"
format provides a day-to-day chronology.
13.1.2 Use the notebook to record
a conception (a complete description of a means to accomplish a particular
purpose or result), laboratory data and drawings. Each entry should be headed
with a title and continued on successive pages.
13.1.3 Make entries in ink and
do not erase; 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.
13.1.4 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.
13.1.5 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
coinventors cannot serve as their own witnesses.
13.1.6 Set aside a time for
making notebook entries and faithfully observe it. Arrange to have two or
more colleagues serve as witnesses on a regular basis.
