University of Missouri

Business Policy Manual

General Administration

BPM-103 Patents

Revised February 1, 2000

This section is only a general statement regarding the University's policy on patents and does not contain the complete University patent regulations. If this section indicates that an individual has made an Invention which comes under the provisions of the patent regulations, he should consult the University pamphlet, University Patents & Licensing Practices and Policies Booklet, available from the Research Office of each campus or the University Patents and Licensing Office.

Employee Inventions Made within Scope of University Duties

An employee or student, whether paid or unpaid, who makes an Invention or a Plant Variety within the general scope of his or her duties as an employee of the University is required to assign to the University all domestic and foreign rights to the Invention or the Plant Variety and to report the Invention or Plant Variety to the University Patents and Licensing Office.

Definitions

The term "employee" includes:

• Persons receiving compensation from the University for services rendered, regardless of whether they are employed full-time or part-time.
• Persons receiving compensation from any funds placed in the University's hands for distribution.
• Students and graduate assistants working with or without monetary compensation on any project which is under the control of the University or which uses University facilities.

The term "Invention" means either:

• The completed conception of the idea, or
• Both the completed conception of the idea and the physical reduction to practice of the conception.

The term "Plant Variety" means a self-pollinating seed or plant.

An Invention is considered as having been made within the "general scope" of the employee's duties:

• When an employee's duties include research or investigation, and the Invention or Plant Variety arose in the course of such research or investigation and is relevant to the general field of inquiry to which the employee was assigned, or
• When the Invention or Plant Variety was in a substantial degree made or developed through the use of University facilities or financing, or on University time or through the aid of University information not available to the public.

Failure to Report Invention

If an employee of the University files a patent application on an Invention or a Plant Variety Protection Certificate which he or she has made within the general scope of his or her University duties, but has not reported the Invention or Plant Variety in accord with regulations, title to the Invention or Plant Variety Protection Certificate will immediately vest in the University, and the contract of employment shall be considered as an assignment of such right.

University patent regulations form a part of the employment contract, constituting a condition of employment of all employees and are applicable to all Inventions or Plant Varieties made during any period of employment from and after the date of their adoption.

Division of the Financial Returns from a Patent

Whenever the University receives money from any source for the sale, waiver, assignment or licensing of University-owned patents, Inventions, discoveries, or Plant Varieties the entire amount of such money (except that money received for reimbursement of U.S. Patent and Trademark Office Fees, external attorneys fees or other external expenses incurred by the University in connection with reexamination of the patent, patent infringement, other defense of the patent or the enforcement or defense of a license agreement and that portion which is for the negotiated Facilities and Administrative (indirect) cost rate associated with the research project from which the patent, Plant Varieties, Invention, or discovery resulted) shall be divided, distributed and allocated as follows unless otherwise agreed in writing by the inventor:

1. For Inventions and Discoveries
   1. Thirty-three and one-third (33.3) percent shall go to the inventor.
   2. After reimbursement of the University or research sponsor for reasonable costs of procuring and defending the patent rights and reducing the Invention to practice and payment of the inventor's share, all monies derived by the University shall be allocated as follows:
      1. Sixty-six and seven tenths (66.7) percent to the campus from which the patent, Invention or discovery originated, half of which the campus must allocate to the originating department
      2. Thirty-three and three tenths (33.3) percent shall go to the University.
   3. Funds allocated to the departments, campuses and the University are restricted to the support of research, development and other scholarly activities.
2. For Plant Varieties
   1. Ten (10) percent shall go to the inventor.
   2. After reimbursement of the University or research sponsor for reasonable costs of procuring and defending Plant Variety rights and payment of the inventor's share, all monies derived by University shall be allocated as follows:
      1. Ninety-five (95) percent to the breeding program from which the Plant Variety originated.
      2. Five (5) percent to the University.
         

Employee Inventions Made Outside Scope of University Duties

If the University finds that an Invention or Plant Variety has been made by an employee outside the general scope of his University duties and that it may be used in the public interest and executes a certificate to that effect, the employee may request that an application for patent or Plant Variety Protection Certificate be filed at the University's expense.

Under such circumstances, the Invention or Plant Variety may be manufactured or grown and used by or for the University, the State of Missouri or the Government of the United States for governmental purposes without payment of any royalty.

If the inventor believes that the Invention or Plant Variety was made outside the general scope of his/her University duties, and if he/she is unwilling to assign the rights in the Invention or Plant Variety to the University, he/she shall, in his/her Invention or Plant Variety report, request that the Patent Committee determine the respective rights of the University and the inventor in the Invention or Plant Variety, and shall also include in the Invention or Plant Variety report information on the following points:

1. The circumstances under which the Invention or Plant Variety was made and developed;
2. The employee's official duties at the time of the making of the Invention or developing the Plant Variety;
3. Whether he/she wishes a patent application or Certificate of Plant Variety Protection to be prosecuted, if it should be determined that an assignment of the Invention or Plant Variety to the University is not required under Section 100.020 D.1; and
4. The extent to which he/she would be willing voluntarily to assign (foreign) rights in the Invention or Plant Variety to the University if it should be determined that an assignment of the Invention or Plant Variety to the University is not required under Section 100.020 D.1.

Protection of Rights

For the protection of the rights of the inventor and the University: Laboratory notebook diaries, Invention reports, memoranda and correspondence concerning them are considered University restricted documents and should be so marked.

Publication, Public Use and/or Sale

Publication, public use, or sale of an Invention or Plant Variety constitutes a statutory bar to the granting of a U.S. Patent or Certificate of Plant Variety Protection unless a patent application or Certificate of Plant Variety Protection is filed within one year of the date of such publication, use, or sale.

Publication, public use, or sale also can be an immediate bar to patentability in certain foreign countries.

If any publication disclosing the Invention or sale of a Plant Variety comes to the attention of the inventor or the inventor's supervisor, he or she must report the publication, public use, or sale to the Patent Administrator.

Research Sponsors

The patent rights and/or Certificate of Plant Variety Protection of the University provided under these regulations may be waived, assigned or licensed by the President of the University if the President is satisfied that the patent and Plant Variety provision will reasonably and substantially discharge the obligations of the University of Missouri consistent with the University's interest.

Notification of Abandonment

In the event a decision is reached not to file a patent or Plant Variety Protection application or to abandon a filed application, notice shall be given to the inventor and to the sponsor if the sponsor's contract with the University so provides.