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100.020 Patent and Plant Variety Regulations

Bd. Min. 6-25-71, p. 35,974, Amended 9-17-92, 4-25-96, 4-8-05, 11-29-07, 7-23-10, 6-24-21.

  1. Purpose – These regulations are adopted by The Curators of the University of Missouri in order to:
    • Secure for the people of the State of Missouri and the United States the full benefits of research and investigation performed at the University of Missouri;
    • Establish the rights and obligations of Employees with respect to any Invention made or developed by them during employment by the University and to establish the definite rights and obligations of Students with respect to any Invention made or developed by them during their period of enrollment with the University;
    • Establish a uniform process by which these rights and obligations may be equitably determined in each case;
    • Provide for a Patent Committee to assist the University with policy recommendations and to operate as a mechanism to advise on resolving disputes;
    • Encourage and recognize individual and cooperative achievement in research and investigation; and
    • Provide and support a technology transfer office to manage the day-to-day technology transfer activities at each campus of the University.
  2. Application of Regulations – These regulations constitute (1) a term and condition of employment of all Employees of the University and form a part of the employment contract, and (2) a term and condition of enrollment and attendance at the University by Students. These regulations shall be effective as to all Inventions disclosed during any period of employment, enrollment, or attendance from and after the date of their adoption.
  3. Definitions
    1. Chancellor” means the Chancellor of a University campus, and shall include, when applicable, the interim Chancellor or acting Chancellor.
    2. Dean” as used herein means the Dean of the college or school having jurisdiction over the Employee or Student, and in case of those Employees not under jurisdiction of any Dean, the Employee’s Supervisor shall perform the duties herein prescribed for the Dean.
    3. Employee” as used herein means (a) any person receiving compensation from the University for services rendered, regardless of whether the Employee be full-time or part-time, (b) any person receiving compensation paid through the University from any funds placed in its hands for distribution, (c) any person who has voluntarily elected to enter into a written agreement with the University in exchange for the University’s agreement to treat such person as an Employee for purposes of these regulations, or (d) any person with adjunct, courtesy, emeritus or “no salary” appointment (e.g., unpaid leave or unpaid sabbatical) if such person is participating in research and investigation with Substantial Use of University Resources except where the University and such person have a written agreement whereby the person is paying the University for use of such Substantial Use of University Resources. For purposes of the definition of Employee and for the avoidance of doubt, Student financial aid including, but not limited to, scholarships, grants, loans, tuition waivers and educational fee reductions, generally available to Students and unrelated to any provision of services by the Student to the University shall not be interpreted as compensation. Also, for purposes of these regulations. Students (including graduate research assistants and graduate teaching assistants) receiving compensation from the University shall be considered “Employees” if their actual duties and responsibilities include research and investigation or the creation of computer software that led to the Invention – regardless of the position title.
    4. "Gross Proceeds" as used herein means money received by the University from third parties (on a cash basis, as opposed to an accrual basis) from the sale, assignment, lease, licensing, optioning, or other transfer of rights in an Invention to such third parties, including but not limited to license fees, option fees, earned royalties, minimum royalties, and milestone payments. Gross Proceeds also includes money recovered (on a cash basis, as opposed to an accrual basis) by the University from lawsuits or dispute resolutions involving infringement by third parties with respect to the applicable Invention. Equity, convertible notes, or other similar ownership interests (or portions thereof) obtained by the University shall not be considered Gross Proceeds unless and until the University receives money for the equity, convertible notes, or other similar ownership interest (or portions thereof); provided that in the event that such equity is readily liquidable (for example, in the case of an IPO), then such equity may be considered Gross Proceeds for purposes of distributing the Inventor Share such that the Inventors may receive such equity. For clarity, Gross Proceeds does not include:
      1. The reimbursement by third parties to the University of any costs, expenses, or fees associated with the preparation, filing, prosecution, or maintenance of any Patents or PVP certificates owned in whole or in part by the University (whereby such reimbursement may include an equity, convertible note, or other similar ownership interest in the third party in consideration and in lieu of the University not seeking monetary reimbursement, in whole or in part, of such costs, expenses, or fees associated with the preparation, filing, prosecution, or maintenance of any Patents or PVP certificates); or
      2. The reimbursement by third parties to the University of any costs, expenses or fees associated with investigating, defending, or enforcing a claim or potential claim with respect to the Invention or associated license agreement, including but not limited to infringement/non-infringement, invalidity/validity, unenforceability/enforceability, and including those before any court, administrative tribunal (e.g., United States Patent and Trademark Office), or dispute resolution forum (e.g., arbitration or mediation), whether U.S. or foreign; or
      3. Money received by the University for the negotiated indirect cost rate (facilities and administration costs) associated with a research agreement or grant from which an Invention, was conceived, reduced to practice, or otherwise made; or
      4. Money received by the University for equity, convertible notes, or other similar ownership interest (or portions thereof) obtained from third parties in exchange for the University making a case investment in the third party or foregoing, in whole or in part, the right to obtain reimbursement from the third party for costs, expenses, or fees associated with the preparation, filing, prosecution, or maintenance of any Patents or PVP certificates owned in whole or in part by the University. Such exchange will be treated as an investment in the third party and any proceeds to the University from such investment will not be included in Gross Proceeds.
    5. Head of the Department” as used herein means the person having charge of the department of the Employee reporting the Invention, and in case there be no such head of the department, the Dean, or on campuses with no schools and colleges, the Provost shall perform the duties herein provided for the Head of the Department.
    6. "Invention" as used herein means any Invention, design, process, machine, manufacture, composition of matter, tangible research materials (e.g., cell lines, virus isolates, antibodies, prototype devices), whether or not patentable, together with any associated or supporting technology, data, know-how, or show-how necessary or useful for the protection, development or application of the same, and also includes all Patents or PVP certificates derived therefrom. A "Plant Variety" is a type of Invention.
    7. "Inventor" as used herein means an Employee who individually or jointly with others makes an Invention. More specifically:
      1. Inventions Covered by a Patent. For Inventions that are the subject of a Patent, "Inventor" refers to those Employees who meet the criteria for inventorship under United States patent law and are thus named on the applicable Patent. For an Invention covered by a Patent, the Inventors may change over time due to the prosecution of the Patent and the possible addition or deletion of Inventors from such Patent. Inventorship is a legal determination.
      2. Plant Varieties Covered by a PVP Certificate. For Inventions which are Plant Varieties which are not the subject of a Patent but which are covered by a PVP certificate, "Inventor" refers to those Employees who meet the criteria for being a plant breeder under United States PVP law.
      3. Unpatented Technologies. For Inventions that are not the subject of a Patent or PVP certificate, "Inventor" refers to those Employees who have jointly executed the Invention Disclosure Form and contributed to the making or development of the Invention. If one or more Employees cannot agree that they are all "Inventors," the matter may be referred to the Patent Committee by the Patent Administrator.
    8. "Net Proceeds" as used herein means Gross Proceeds minus the following out-of-pocket expenses, costs, fees or other and payments incurred by the University that are associated with the applicable Invention:
      1. costs, expenses and fees related to the evaluation, licensing, and protection of the Invention, including, but not limited to, those paid to government agencies (e.g., U.S. Patent and Trademark Office, European Patent Office) or the University's outside legal counsel associated with the preparation, filing, prosecution and maintenance of Patents or PVP certificates for the Invention; and
      2. payments made to joint owners or external sponsors of an Invention pursuant to an agreement with the joint owners or external sponsors. For the avoidance of doubt, such payments may include (1) revenue sharing payments due the joint owner or external sponsor and/or (2) the reimbursement to the joint owner or external sponsor of the costs, expenses, or fees related to (a) the preparation, filing, prosecution, or maintenance of a Patent or PVP certificate covering the applicable Invention; or (b) the investigation, defense, or enforcement of a claim or potential claim with respect to the applicable Invention; and
      3. costs, expenses, and fees for investigating, defending or enforcing a claim or potential claim with respect to the Invention, including but not limited to infringement/non-infringement, invalidity/validity, unenforceability/enforceability, and including those before any court, administrative tribunal (e.g., United States Patent and Trademark Office), or dispute resolution forum (e.g., arbitration or mediation), whether U.S. or foreign.
    9. "Patent" as used herein means any pending patent application (including an unexpired provisional patent application) or issued patent anywhere in the world. The term includes both United States patent applications and issued patents, as well as patent applications and issued patents from other regional patent offices (e.g., a European patent application) or national patent offices (e.g., a Canadian patent application). The term also includes pending or issued plant patents under 35 U.S.C. § 161 (which covers asexually reproduced plants, excluding tuber propagated plants), and pending or issued utility (non-provisional) patents directed to a Plant Variety. The term also includes design patents under 35 U.S.C. § 171.
    10. "Patent Committee" as used herein means the committee referred to in Section G. The Patent Committee may also be referred to as the "Patent and Copyright Committee" when dealing with copyright matters pursuant to CRR 100.030.
    11. "Plant Variety" as used herein means a plant (including germplasm) which is sexually reproduced or tuber propagated and that is eligible from a subject matter standpoint for protection under a PVP certificate, regardless of whether PVP protection is actually filed or not. A Plant Variety is a type of Invention.
    12. "PVP" as used herein means plant variety protection through a pending application or issued certificate under the United States Plant Variety Protection Act or similar protection in a foreign country.
    13. President” as used herein means the President of the University and shall include, when applicable, the “Interim” President or “Acting” President.
    14. "Student" as used herein means a person enrolled in the University. The term includes full-time and part-time students and both graduate and undergraduate students. The term includes a student enrolled for credit and not-for-credit.
    15. "Substantial Use of University Resources" means more than incidental use of University resources, facilities, financing, or time by Employees. The following are non-limiting examples of Substantial Use of University Resources (in the absence of written agreement or written approval from the President or his/her designee that explicitly states they will not be deemed to be considered Substantial Use of University Resources or otherwise addresses ownership):
      1. use of funds from an external sponsor;
      2. use of funds from an internal (University) sponsor or account;
      3. use of University-owned intellectual property (unless licensed or otherwise transferred from the University to the person or entity using such University-owned intellectual property);
      4. use of University information not available to the public;
      5. use of University support staff;
      6. use of University research, clinical, production, laboratory, studio, specialized computing, or other equipment without payment of fees, where such fees are equivalent to those normally paid by third parties; and
      7. reduction in levels of teaching, service, or other typical activities (e.g., course load, student advising responsibilities, division/department meetings, office hours, administrative responsibilities). Substantial Use of University Resources does not typically include use of office supplies, computers, telephones, utilities, or minimal administrative/clerical support. Substantial Use of University Resources does not typically include use of University libraries on a basis similar to scholars who have no association with the University.
    16. "Supervisor" as used herein means any Employee of the University in charge of an Employee under the supervision of the Head of the Department or some other superior officer.
    17. "TTO" means the technology transfer office, department, unit, or other organization designated by the President or his/her designee to manage the day-to-day technology transfer activities at each campus of the University.
    18. "University" as used herein means The Board of Curators of the University of Missouri. Any action or consent on the part of the University herein shall be an action or consent duly taken or given by the Board of Curators, or its authorized officer.
  4. Inventions by Employees of the University
    1. Rights of University and of Employees
      1. Assignment by Employees. The University shall have the ownership and control of any Invention developed in the course of the Employee’s service to the University. Each Employee hereby irrevocably assigns to the University all rights, title and interest in and to Inventions made by the Employee within the general scope of his/her duties as an Employee, and ownership of such Inventions shall immediately vest in the University. Further, the University may elect to have Employees, as a condition of hiring or continued employment (as well as a condition of persons with “no salary” appointments participating in research investigation as set forth in Section C.3), to sign a written assignment or written acknowledgment of the Invention and Patent Regulations (CRR 100.020) and Copyright Regulations (CRR 100.030) prepared by the Office of the General Counsel in consultation with the Patent Committee. The written assignment or written acknowledgement may contain assignment language directed to Inventions (and associated Patents, and PVP protection) owned by the University in accordance with these regulations. The failure of an Employee to sign the written assignment or written acknowledgement does not relieve the Employee of the Employee’s obligations under these regulations and such Employee remains bound by the regulations. Each Employee is further required to execute any and all documents the University deems reasonably necessary to evidence such University ownership, including but not limited to any confirmatory assignments requested by the University. Remuneration to the Employee for such assignment(s) is detailed in Section J.
      2. Scope of Duties. An Invention shall be considered as having been made within the general scope of the Employee’s duties for the University if either of the following conditions are met:
        1. Whenever the Employee’s duties include research or investigation, and the Invention arose in the course of such research or investigation and is relevant to the Employee’s general field of inquiry; or
        2. Whenever the Invention was made or developed through the Substantial Use of University Resources. In assessing Section D.1.b.i, the University may take into account the Employee’s department/college, other appointments (like joint appointments), classes taught, fields in which the Employee advises Students, publications/presentations made by the Employee, conferences attended by the Employee, journals/publication in which the Employee provides peer review, sponsored projects involving the Employee, grants submitted by the Employee through the University, and other relevant factors.
      3. Inventions Made Outside the Scope of Duties. An Employee of the University shall be entitled to all rights resulting from any Invention which was made by him/her outside the general scope of his/her University duties as defined in Section D.1.b. For example, subject to the Inventor’s compliance with the Conflict of Interest Policy set forth in Collected Rule and Regulation 330.015 (including any applicable Conflict of Interest Management Plan), the University shall have no rights to Inventions developed in the course of consulting activities for third parties other than the University, and not resulting from Substantial Use of University Resources.
      4. Disposition Rights. Except as provided herein, the President or his/her designee may approve the following:
        1. Assignment of Inventions owned by the University
        2. Optioning of Inventions owned by the University;
        3. Licensing of Inventions owned by the University;
        4. Non-Assertion of Rights in Inventions (see Section D.3.);
        5. Waiver (re-assignment) of the Inventions by the University back to the Inventor (see Section D.4.); or
        6. Any other transfer or disposition of Inventions owned by the University.
          In determining whether to approve the foregoing i-vi, the President or his/her designee shall consider all relevant factors and be satisfied the action will reasonably and substantially discharge the obligations of the University consistent with the University’s missions.
      5. Patent and PVP Filings. An Employee of the University shall not file (or assist others in filing) in any domestic or foreign jurisdiction any Patent or PVP certificate relating to an Invention made within the general scope of his/her University duties (see Section D.1.b.) without the prior written consent of the President or his/her designee. The University’s consent to file shall not constitute a waiver of or otherwise affect the University’s ownership interest in the Patent or PVP certificate.
    2. Invention Disclosures.
      1. Every Invention made by an Employee of the University shall be reported by such Employee to the TTO in an Invention Disclosure Form, except such report shall not be required in situations in which the Employee has a reasonable belief that the Invention was made clearly and demonstrably outside the general scope of the Inventor's duties as set forth in D.1.b, but such exception shall not apply if (a) the Inventor has any reason to believe that the University may have cause to assert ownership of such Invention or (b) the University has requested disclosure of the Invention so that the University may make a determination of ownership. Even if an Employee does not believe that reporting is required, the Employee shall nonetheless (i) promptly notify the TTO whenever any patent application is filed on such Invention naming the Employee as an Inventor and (ii) if requested by the TTO, promptly provide the TTO with a complete copy of such patent application and any patent office correspondence regarding the patent application, if requested by the Employee the University may agree to treat an unpublished patent application confidential if such circumstances are warranted. The Patent Committee shall prescribe the form and manner of execution of the Invention Disclosure Form, and such Invention Disclosure Form shall be treated as restricted/confidential reports of the University. The Invention Disclosure Form may include, among other things, confirmatory assignment language and recital of the obligations for the Inventors to cooperate with the University in filing, prosecuting, and maintaining a Patent or PVP certificate on the Invention. The Invention Disclosure Form may also contain language for the Inventors to allocate the Inventor Share among Inventors in accordance with Section J.3. The Invention Disclosure Form may also be different for different types of Inventions (e.g., engineering vs. software vs. Plant Varieties).
      2. The Invention Disclosure Form shall be made as promptly as possible, taking into consideration such factors as possible publication, public use, or sale and the necessity for protecting the Inventor’s and the University’s rights in the Invention. If the Invention is reduced to practice, modified, or improved upon after the Invention Disclosure Form is submitted by the Inventor, the Inventor should promptly notify the TTO and update the Invention Disclosure Form, adding any new information, data or developments.
      3. For the protection of the rights of the Inventor and of the University, laboratory notebook-diaries, Invention Disclosure Forms, Plant Variety development data and memoranda or correspondence concerning them are to be considered University restricted/confidential information, and should be so marked by the Inventor.
    3. Request for Non-Assertion of University Rights in Invention (Invention Ownership Determination).
      1. Request of Non-Assertion of University Rights
        1. Basis for this Request. If an Inventor reasonably believes an Invention is not subject to the University’s ownership rights under these regulations because the Invention was not made or developed within the general scope of the Employee’s duties (see Section D.1.b.), then the Inventor may request a determination as to whether the University will assert ownership rights to the Invention. The initial request should be made by the Inventor to the TTO in writing.
        2. Terms and Conditions for Non-Assertion of University Rights. The University may condition agreement to a request for a non-assertion of rights in an Invention on certain terms and conditions as determined by the President or his/her designee.
        3. Scope: Enabled Inventions. If the University makes a determination that the Invention described in the Invention Disclosure Form pursuant to Section D.2. is not “enabled” such that one skilled in the art can make and use the Invention without undue experimentation under U.S. patent law or that the Invention Disclosure Form is premature or incomplete, then the University may, in its discretion, elect to (1) defer an ownership dispute resolution process under this Section D.3. until such Invention is enabled or more mature/complete or (2) proceed with the ownership dispute resolution process under this Section D.3.
      2. Burden of Proof in making the Request of Non-Assertion of University Rights. The Inventor asserting that the Invention should not be subject to University ownership shall have the burden of showing the same by clear and convincing evidence.
      3. Documentation for the Request of Non-Assertion of University Rights. In connection with the request, the Inventor must provide the TTO with all reasonable information needed or requested to determine ownership (for example, emails, workbooks, laboratory notebooks). Such information may include but is not limited to:
        1. a summary of the circumstances leading to the conception, reduction to practice and development of the Invention;
        2. a summary of any individuals, facilities, equipment, materials, background intellectual property, or other resources used to conceive, reduce to practice, or develop the Invention;
        3. a listing of any possible co-Inventors and their contact information;
        4. the Inventor’s duties at the time of making the Invention;
        5. whether the Invention was conceived, reduced to practice, or developed under an internal funding agreement or funding agreement with an external sponsor;
        6. a copy of any applicable patent application (in accordance with D.2.a); and
        7. whether any third parties have a co-ownership interest in the Invention.
      4. Process.
        1. After receipt of the information set forth in Section D.3.c, the TTO, in consultation with at least the Head of the Department and the Dean, will make a recommendation in writing on whether or not the University should assert ownership rights in such Invention. The recommendation shall be provided to the President's designee, who shall make a decision on whether or not the University will grant the request.
        2. If the President's designee makes a decision that is adverse to the Inventor, the Inventor may appeal the decision in Section D.3.d.i to the Patent Committee by submitting an appeal request to the Patent Administrator. If the Inventor elects to appeal, the Inventor shall be afforded the opportunity to appear before the Patent Committee to present evidence and any information the Patent Committee may request. The Patent Committee, at its discretion, may make an independent investigation of the ownership claim. The Patent Committee shall provide its findings and recommendations in writing to the President for appropriate action. The Inventor shall be afforded a copy of the Patent Committee findings and recommendations and shall have an opportunity to respond to the findings of the Patent Committee by filing a timely written argument with the President. The President shall make the final non-appealable determination with respect to ownership and whether the University will assert rights in the Invention.
        3. In all cases, a decision regarding the non-assertion of rights in an Invention is at the sole discretion of the University.
        4. In the event that the President makes a final determination that the University owns the Invention, the refusal of an Inventor to execute a confirmatory assignment to the University of such Invention may result in sanctions against the Inventor (see Section K).
      5. Duty to Disclose. For clarity, the Inventor must still disclose the Invention in accordance with Section D.2 and provide the requested documentation in accordance with D.3.c of these regulations. However, the Inventor need not execute any assignment language in the Invention Disclosure Form for so long as there is a legitimate ownership dispute and the Inventor has filed a request for non-assertion of rights. In the event that the President makes a final determination requesting assignment, then the Inventor shall promptly execute the assignment language in the Invention Disclosure Form and any confirmatory assignments requested by the University.
      6. Commercialization Restrictions.
        1. An Inventor who has any reason to believe that that the University has an ownership interest in an Invention or the University may assert ownership of the Invention shall not attempt to commercialize (e.g., license, sell, lease, assign or otherwise transfer) such Invention or file (or assist others to file) a Patent or PVP certificate covering the Invention without a final resolution of ownership as set forth in Section D.3 of these regulations, unless prior written approval is obtained from the President or his/her designee. In such a case of receiving such prior written approval, the Inventor must provide the University with a copy of any such patent applications and any patent office correspondence regarding the patent application as set forth in Section D.2.a. The University's consent to file shall not constitute a waiver of or otherwise affect the University's ownership in the Invention.
        2. When an Invention is owned by an Employee, the Inventor shall not further create, develop, or commercialize an Invention with Substantial Use of University Resources unless pursuant to a written agreement with the University executed by the President or his/her designee that sets forth the terms and conditions of such Substantial Use of University Resources. A term or condition of the written agreement may involve, for example, University ownership of the Invention, University/Inventor co-ownership of the Invention, or other revenue sharing with the University if such further creation, development, or commercialization of the Invention involves Substantial Use of University Resources. By way of example, if an Employee in the school of music files a patent application directed to a new engine that is not subject to University ownership under Section D.1.b, and the Employee is then desirous of obtaining federal funding through the University to build and test the new engine, the University and the Employee should enter into a written agreement which provides for University ownership of the patent application and Invention so that the University may satisfy its obligations to the federal government in accordance with the Bayh-Dole Act. The Substantial Use of University Resources should also be reported to the Conflict of Interest Committee and subject to a Management Plan in accordance with Collected Rule and Regulation 330.015.
      7. Initiation of Non-Assertion of University Rights in Invention by University. Although the Inventor will typically initiate a request for non-assertion of University rights in an Invention, the University may elect to not assert rights without such a request if the University finds it is in the University's interest to do so.
    4. Inventor Requests for Waiver (Re-Assignment) of University Rights.
      1. Scope.
        1. If the University determines it will not pursue or maintain all Patents or PVPs certificate on an Invention and/or will not pursue commercialization of an Invention subject to the University's ownership under these regulations or the University otherwise finds it is in the interest of the University, the University may consider a written request by the Inventor to waive/re-assign the University's ownership interest in the Invention (and any Patents or PVP certificates covering only the Invention) arising solely from the Inventor who has made the request. Not all Inventors are required to join in the request.
        2. To the extent that the TTO elects to pursue patent protection on an Invention in some countries but not others (for example, the University elects to file and maintain a patent application in the United States but elects to forego or abandon foreign filings), the TTO may summarily deny a request for waiver from an Inventor directed to Patents in countries where the University has not pursued or maintained protection, and the process in Section D.4.d does not apply. If the University makes a determination that an Invention is not "enabled" such that one skilled in the art can make and use the Invention without undue experimentation under U.S. Patent law or that the Invention Disclosure Form is premature or incomplete, then the University may, in its discretion, elect to (1) defer the waiver/re-assignment process under this Section D.4 until such Invention is enabled or more mature/complete or (2) proceed with the waiver/re-assignment process under this Section D.4.
      2. The Request for Waiver/Re-Assignment.
        1. Agreement as to the Request by Multiple Inventors. In those instances, in which there are multiple Inventors, all Inventors do not need to be in agreement and be a party to such a request to waive/re-assign the University's ownership interest in the Invention arising solely from the Inventor who has made the request. The Inventor making the request should make reasonable attempts to seek unanimous approval of all of the Inventors to make the request. If all Inventors do not agree to make the request, then the University may, at its discretion, waive/re-assign only an undivided interest to the Inventor who has made the request, and if the University does so, the University shall retain an undivided interest in the Invention by virtue of the Inventors who have not agreed to the request such that the Invention shall be co-owned by the University and the Inventor making the request. In such a case, any Net Proceeds received by the University shall be shared with the Inventors who have not joined in the request (and not the Inventor making the request) as set forth in Section J of these regulations. The University shall have no obligation to market, protect, or license the Invention where rights have been waived/re-assigned to less than all of the Inventors.
        2. Terms and Conditions for Waiver/Re-assignment. The University may condition waiver/re-assignment of an Invention to the Inventor making the request on certain terms and conditions as determined by the President or his/her designee. At a minimum, (1) the University must retain an irrevocable non-exclusive, perpetual, worldwide, royalty free license to make, use, and otherwise practice the Invention for educational, research, and academic purposes; (2) the waiver/re-assignment must comply with applicable law; (3) the waiver/re-assignment must be subject to preexisting rights of third parties (including the right to approve such waiver/re-assignment where applicable), where such third parties may include external sponsors or co-owners of the Invention; and (4) the Inventor making the request must assume future expenses and costs related to the patenting and commercialization of the Invention.
      3. Documentation for the Request for Waiver (Re-assignment) of Invention from University to Inventor. In connection with the request, the Inventor must provide the TTO with all reasonable information needed or requested to assess the patentability and commercialization potential of the Invention.
      4. Process.
        1. After receipt of the information set forth in Section D.4.c, the TTO, in consultation with at least the Head of the Department and the Dean, will make a recommendation in writing on whether or not to waive/re-assign rights in the Invention to the Inventor making the request. The recommendation shall be provided to the President's designee, who shall make a decision on whether or not the University will grant the request in reasonable period of time.
        2. If the President's designee makes a decision that is adverse to the Inventor making the request, the Inventor may appeal the decision in Section D.4.d.i of these regulations to the Patent Committee by submitting an appeal request to the Patent Administrator. If the Inventor elects to appeal, the Inventor shall be afforded the opportunity to appear before the Patent Committee to present evidence and any information the Patent Committee may request. The Patent Committee, at its discretion, may make an independent investigation of the issue. The Patent Committee shall provide its appropriate findings and recommendations in writing to the President of the University for appropriate action. The Inventor shall be afforded a copy of the Patent Committee findings and recommendations and shall have an opportunity to respond to the findings of the Patent Committee by filing a timely written argument with the President. The President shall make the final non-appealable determination with respect to the requested waiver/re-assignment of rights.
        3. In all cases, decisions regarding the waiver/re-assignment in Inventions are at the sole discretion of the University.
    5. Publication, Public Use and Sale. If an Invention is described in a printed publication, is in public use, is on sale, or is otherwise available to the public before a Patent or PVP certificate is filed, the patentability or protection under the Plant Variety Protection Act may be affected. In order to preserve possible Patent protection or protection under the Plant Variety Protection Act in the Invention, the Inventor (or the Supervisor of the Inventor if the Inventor is not available) must notify the TTO of any such events irrespective of whether an Invention Disclosure Form has previously been filed. If an Invention Disclosure Form has not been filed, the Inventor shall file the Invention Disclosure Form at once. If an Invention is disclosed to any person who is not employed by the University, the Employee making such disclosure shall provide the TTO with 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.
  5. Rights of University and Students
    1. General Rule. In general, Students will be entitled to own any Invention made during their enrollment as a Student of the University and will generally not be required to assign his or her ownership to the University; however, the foregoing general rule does not apply and the Student will be required to assign his or her ownership interest to the University in any circumstance in which the Student meets the definition of Employee, as defined in Section C.3. hereof provided such Invention was developed in the course of the Student-Employee’s service to the University. Should faculty wish to have a non-Employee Student work on a research project where University ownership of resulting Inventions is desired, faculty are encouraged to work with the TTO to obtain written agreements from the Student that address ownership of Inventions made by Student pursuant to Section E.5.
    2. Examples of Student Owned Inventions. Without limiting the language of the foregoing general rule or the language of the foregoing exceptions to the general rule, the following are examples of fact situations in which, in the absence of a written agreement providing otherwise, the University will not claim ownership of an Invention made by a Student of the University:
      1. The Invention was developed by a Student as part of a University class project using no greater University resources than those generally available to all other Students within the class or than those available to the Student as part of his/her enrollment with the University.
      2. The Invention was developed by a Student as part of a University approved Student competition using no greater University resources than those generally available to all other Students within the competition or than those available to the Student as part of his/her enrollment with the University. The Student shall be entitled to receive any monetary or other prize awarded to the Student for his/her performance under such competition in accordance with the rules of the competition and such prize shall not be considered compensation under Section C.3. hereof.
      3. The Invention was developed by a Student as part of a University approved extracurricular activity, using no greater University resources than those generally available to all other Students participating in the activity or than those available to the Student as part of his/her enrollment with the University.
      4. The Invention was developed by a Student on his/her own free time, outside of any University class or sponsored activity, and using no greater University resources than those generally available to all other Students as part of their enrollment with the University.
      5. In determining whether the Invention was developed using no greater University resources than those generally available to all other Students within the class/competition/activity or than those available to the Student as part of his/her enrollment with the University, factors that the University may consider as part of this assessment include:
        1. Whether the University established eligibility criteria for participation;
        2. Whether the University selects the participants from among those eligible;
        3. Degree of presence or lack of presence at the project site by a faculty advisor, University supervisor, or other University employee;
        4. Extent of supervision exercised by a faculty advisor, University supervisor, or other University employee;
        5. Degree to which University-provided tools, equipment, and supplies were utilized in the development of the Invention;
        6. Degree to which University-provided funds were used in the development of the Invention;
        7. Whether a University faculty member or other Employee is co-Inventor;
        8. Existence and terms of any signed agreement required as a condition of participation; and
        9. Any other relevant factors.
    3. Examples of University-Owned Inventions. The following are examples of fact situations in which the University may claim ownership of an Invention made by a Student of the University:
      1. The Invention was developed as part of a graduate school thesis/dissertation project by a Student-Employee paid under a graduate teaching assistantship. Because the Student is an Employee, this section is not applicable and the ownership standards set forth in Section D.1.b shall apply.
      2. If a faculty member provides a Student (who is not otherwise an Employee) with a volunteer opportunity to work on a project sponsored by an external sponsor (e.g. a governmental or industry sponsor) and the Student uses greater University resources than those available to other Students enrolled at the University as part of the sponsored project, then the University may assert ownership of the Invention made by such Student in order for the University to fulfill its contractual obligations to the external sponsor.
    4. Non-Assertion. A Student may, but is not obligated to, make a request for non-assertion of University rights in an Invention using the procedures generally set forth in Section D.3.
    5. Treatment of Student as an Employee.
      1. In the event that the University asserts ownership in an Invention made or developed by a Student under the foregoing standards set forth in this Section E and the Student is not otherwise an Employee under Section C.3(a)-(b), then the University and Student shall typically enter into an agreement whereby the Student is treated as an Employee under Section C.3(c), wherein such agreement addresses, among other things, the sharing of Net Proceeds (if any) with the Student (along with other Inventor-Employees) under Section J.
      2. A Student having ownership over an Invention may, with University consent, elect to assign the Student's rights in the Invention to the University. In such a case, the University and Student shall typically enter into an agreement whereby the Student is treated as an Employee under Section C.3(c), wherein such agreement addresses, among other things, the sharing of Net Proceeds (if any) with the Student (along with other Inventor-Employees) under Section J.
    6. Student Policy Information. The Patent Administrator shall implement reasonable procedures designed to make Students aware of Section E, and to provide one or more avenues for Students to receive information regarding the University’s interpretation of the Student’s rights and obligations with respect to Inventions in which a Student may be an Inventor or co-Inventor
  6. Visitors: Rights of Other Institutions. In general, Inventions made or developed by Inventors who are not Employees or Students but are otherwise visiting from another institution or company (e.g., visiting scientists, visiting scholars) will be treated as having been made or developed by an Employee within the general scope of his/her duties for the University. However, the University recognizes that such Inventors often are subject to intellectual property polices of their home institutions or employers. Accordingly, where it is anticipated that there is a reasonable possibility that a visitor will conceive, reduce to practice or develop an Invention while working at or under the auspices of the University, the TTO should be contacted so an agreement with the visitor's home institution or employer may be executed prior to the start of the visit. In cases in which there are conflicts between the University and the home institution or employer of a non-Employee Inventor visitor, such conflicts will be resolved through good faith negotiations between the University and such home institution or employer.
  7. The Patent Committee
    1. Appointment
      1. Notwithstanding other regulations affecting University committees, the President of the University shall appoint a Patent Committee, which shall include representative voting members from each of the campuses. The Patent Administrator or other person designated by the President shall be an ex officio member of the Patent Committee and shall provide a secretary to the Patent Committee. The General Counsel or his/her delegate shall also be an ex officio member of the Patent Committee. The TTO director(s) shall also be ex officio member(s) of the Patent Committee.
      2. The President of the University shall designate the chair of the Patent Committee.
      3. The Patent Committee shall make and keep minutes of all its meetings.
    2. Duties
      1. The Patent Committee shall assist with policy analysis and development relating to these regulations.
      2. The Patent Committee shall assist with drafting amendments to these regulations resulting from technological and legislative changes affecting Inventions, Patents, and/or PVP rights.
      3. The Patent Committee shall review, report and make recommendations on all matters affecting Inventions as may be referred to the Patent Committee by the Patent Administrator (see Section H.2.d.).
      4. The Patent Committee will consider such other matters regarding the Inventor’s claims, interest or right to patentable findings, as may be referred to it by the Patent Administrator.
  8. The Patent Administrator
    1. Appointment of Patent Administrator – The Patent Administrator will be appointed by the President.
    2. Duties of Patent Administrator - The duties of the Patent Administrator shall be prescribed by the President or his/her designee from time to time. The duties of the Patent Administrator shall include, but not be limited to, a duty to:
      1. Assist with policy analysis and development relating to these regulations;
      2. Assist with drafting amendments to these regulations resulting from technological and legislative changes affecting Inventions, Patents, and/or PVP rights;
      3. Implement procedures to advise Students of their intellectual property rights in accordance with Section E.6 of these regulations;
      4. Refer matters to the Patent Committee in accordance with these regulations.
        1. If there is a dispute about Inventorship, the Patent Administrator shall refer such claims to the Patent Committee in accordance with Section C.7.c.
        2. If an Inventor shall claim an Invention as his/her own, the Patent Administrator shall refer such claims to the Patent Committee in accordance with Section D.3.d.
        3. If an Inventor shall claim that an Invention should be waived/re-assigned to the Inventor, the Patent Administrator shall refer such claims to the Patent Committee in accordance with Section D.4.d.
        4. If there is a dispute about the distribution of Inventor Share of Net Income, the Patent Administrator shall refer such claims to the Patent Committee in accordance with Section J.3.
        5. The Patent Administrator may refer other matters to the Patent Committee as he/she deems necessary to protect the interests or rights of the Inventor and the University.
  9. TTOs.
    The duties of the TTO shall be prescribed by the President or his/her designee from time to time. The duties of the TTO shall include, but not be limited to, receiving Invention Disclosure Forms, determining whether to file or maintain any Patents directed to University-owned Inventions, and making commercialization decisions with respect to such University-owned Inventions.
  10. Use of Net Proceeds Received By University Relating To Inventions
    1. General Rule.
      1. Net Proceeds received by the University from commercializing a University-owned Invention or the copyright in materials subject to Copyright Policy 100.030 shall be distributed as follows;
        1. 33.3 percent shall go to the Inventor(s) for Inventions and authors for copyrightable works (“Inventor share”);
        2. 66.7 percent to the campus from which the Invention originated (“Campus Share”).
      2. To the extent required by applicable law, use of the Campus Share is restricted to support scientific research or education. Each campus shall develop a plan for expenditures related to the Campus Share. Such plans will be approved by the Chancellor with input from appropriate faculty representatives with experience in technology transfer, the campus research office, and the TTO.
      3. In the event the Campus Share exceeds $5 million in any given fiscal year, a separate plan shall be made for the funds in excess of $5 million and approved by both the Chancellor and the President.

      For clarity, the distribution protocols outlined do not apply to personally owned Inventions and copyrightable materials but only to those Inventions and copyrightable materials owned by the University.

    2. Department of Veteran's Affairs. In the case of Inventions made jointly by University Employee(s) and individual(s) employed by the United States Department of Veteran’s Affairs, with or without compensation, the President or his/her designee may execute a written agreement with the United States Department of Veteran’s Affairs which provides for different division, distribution and allocation of Gross Proceeds or Net Proceeds as provided herein.
    3. Inventor Revenue Distribution Agreement. If more than one Inventor is to share in the Inventor Share provided in Section J.1 of these regulations, the Inventors entitled to receive payments should decide among themselves their respective shares and provide the TTO with a written agreement signed by all Inventors. This written agreement may be provided as part of the Invention Disclosure Form or may be a separate written agreement. Such written agreement among the Inventors should be provided promptly to the TTO after receiving a written request from the TTO for such an agreement, at a minimum, and the written agreement should be provided prior to distribution of the Net Proceeds. Any such written agreement will be irrevocable unless it is modified in writing by all Inventors. In the absence of a written agreement, the University may (1) hold the Inventor Share for a reasonable period of time to permit the Inventors to come to an agreement; or (2) after a reasonable period of time, divide the Inventor Share equally among the Inventors. If a written agreement cannot be reached after good faith efforts by the Inventors, an Inventor may request that the matter be referred by the Patent Administrator to the Patent Committee for an equitable recommendation to the President. The Inventor shall be provided a copy of the Patent Committee’s recommendation and shall have an opportunity to respond by filing a timely written argument to the President. The President shall make the final non-appealable determination with respect to the distribution of the Inventor Share. The University is not liable for any distribution of Inventor Share made in good faith but that was later found to be in error.
    4. Assignment of Inventor Share. An Inventor Share payable to an Inventor cannot be assigned by the Inventor to third parties unaffiliated with the University. Notwithstanding the foregoing, prior to the receipt of Gross Proceeds by the University, an Inventor may elect in writing to (a) forego his/her portion of the Inventor Share such that the University retains the same for general use by the University; (b) forego his/her portion of the Inventor Share and direct the same to a University account related to further research and development of the Invention; or (c) redirect all or a part of his/her portion of the Inventor Share to an Employee or non-Employee Student who made a significant, but non-inventive contribution to the development of the Invention and would not otherwise be entitled to share in the Inventor Share. With respect to (c) such redirection may be made as part of the Inventor Revenue Distribution Agreement referenced in Section J.3 of these regulations.
    5. Compliance with the Regulations.
      1. This distribution of the Inventor Share to an applicable Inventor shall be contingent upon the Inventor’s compliance with these regulations. For example, in order to qualify for the Inventor Share, an Employee must have executed any confirmatory assignments requested by the University and must reasonably assist the University with the University’s efforts to commercialize the Invention (including but not limited to reasonable input on the filing, prosecution, and maintenance of any Patents or PVP certificates related thereto).
      2. In the event that an Inventor does not comply with these regulations (for example, the Inventor refuses to sign such a confirmatory assignment and/or does not provide such reasonable assistance to the University), no Inventor Share will be allocated to that Inventor and the Inventor Share shall be allocated to the other Inventors, and the corresponding Campus Share shall be likewise adjusted as if the non-cooperating Inventor did not exist.
  11. Sanctions.
    Conduct by an Employee that violates these regulations shall constitute a breach of the employment contract and may lead to disciplinary action. The Patent Committee may make a determination of a violation of this policy and will report such violation to the Chancellor. After the finding of a violation, the Chancellor of each campus may apply sanctions, including but not limited to, one or more of the following:
    1. Letter of warning or admonishment,
    2. Suspension or termination of research compliance committee approvals,
    3. Suspension or termination of the privilege to submit sponsored activity proposals,
    4. Suspension or termination of sponsored research activity spending authority,
    5. Demotion or removal from assigned administrative roles,
    6. Ineligibility for waivers/re-assignments,
    7. Ineligibility to receive an Inventor Share,
    8. Referral to campus Committee on Tenure or other appropriate committee for discipline or dismissal for cause of faculty,
    9. Suspension or termination of employment (pursuant and subject to CRR 310.060, Procedures in Case of Dismissal for Cause, for those faculty covered by that rule).

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