Employee Policy Manual
Patent Policy
In view of the far-reaching research in the various divisions of the University, it is inevitable that new discoveries and inventions will be made. The University of North Alabama recognizes that the protection and control provided under the patent laws may have to be invoked to obtain the greatest public benefit and usefulness from the products of scientific research. It is recognized that employees of the University might need assistance in determining and evaluating patentability and in prosecuting patent applications of inventions made by them. Many such inventions involve equities beyond those of the inventor himself or herself since the use of university facilities, the assignment of duties as a condition of employment, and the use of research funds with contractual obligations regarding patent rights give rise to complicated questions concerning rights and equities of all concerned. Therefore, in order to appraise relative rights and equities of all parties concerned, to facilitate patent applications, licensing, equitable distribution of royalties or other financial returns, to provide a uniform procedure in patent matters, and to serve the public benefit and interest, the Board of Trustees for the University of North Alabama (herein called the University), on recommendation of the President of the University, authorizes the establishment of a Patent Committee and the adoption of the patent policy as set forth herein.
1. The President of the University is hereby authorized to appoint a
University Patent Committee composed of members
representative of the entire University to administer the patent
policy and to designate a Patent Administrator to administer the
policies of the committee. This committee and the Patent
Administrator shall serve at the pleasure of, and their actions
shall be subject to the approval and right of review of, the
President of the University.
2. Subject to the approval of the President, the Patent Committee
shall have the power to adopt such rules and procedures as are
deemed appropriate; to determine the interest of the University
in all reported inventions; to cause all reported inventions to be
investigated in order to evaluate the interest of the University in
said invention (with due consideration given to the achievement
of the inventor and the financial returns to the inventor and the
University); to authorize the Patent Administrator to execute a
release when the Patent Committee decides that the University
has no interest in the invention or decides that the University
does not desire to pursue the patenting or development of the
patent; to authorize applications for patents on reported
inventions and to retain patent counsel, in association with the
University Attorney, for matters pertaining to patent
applications; and to make recommendations to the President with
regard to the prosecution and protection thereof and any
litigation that may arise therefrom. The Patent Committee shall
have power also to do all things appropriate for the investigation
of patent rights and for the exploitation of patent rights by direct
exercise, exclusive or non-exclusive licensing, and make
recommendations to the President with regard to partial or total
assignment or sale thereof. All questions concerning the
methods by which the patent shall be commercially exploited shall
be decided by the Patent Committee.
3. All faculty members and university employees, both while
employed by the University and thereafter, shall report to the
Patent Committee any invention or discovery related to the scope
of their employment which they have conceived or developed or
which has been conceived or developed under their direction
during their university employment.
4. Any such invention or discovery (a) which is the result of
research carried on by or under the direction of any employee of
the University and/or having the costs thereof paid by university
funds or from funds under the control of or administered by the
University and (b) which has been developed in whole or in part
by the utilization of university resources or facilities belonging to
the University shall be assigned to the University or a university
designated non-profit organization established for its benefit. In
other situations the Patent Committee should determine if the
University has an interest in the invention or discovery. Releases
shall be executed by the Patent Administrator when the Patent
Committee rules that the University has no interest in the patent
or does not desire to pursue the patenting of the invention.
5. The Patent Committee shall cause each invention or discovery to
be investigated in order to determine the interest of the
University and, if the Patent Committee determines that the
University has an interest in the invention which it desires to
pursue, it shall undertake to obtain a patent on the invention. In
determining whether or not the University has an interest in the
invention, the Committee shall consider the benefits that might
accrue to both the University and the inventor. The Patent
Administrator and the Patent Committee are responsible to act
within six (6) months of official notification by the
inventor/discoverer for the purpose of protecting the property
rights of the inventor and the University. Failure to act within the
six (6) months time will serve as a release of the University's
interest in the invention.
6. As further consideration for the assignment rights set forth herein,
the University agrees to pay annually to the inventor, his heirs and
assigns, fifty percent (50%) of the royalties, fees, or other
financial returns received by the University from such invention
after a deduction of fifteen percent (15%) thereof for overhead
costs, plus a deduction for all costs of patenting and protection
of patent rights (incurred by the University). Recoupment of any
unusual expenses paid by the University or the inventor may be
allowed by the Patent Committee on patents assigned to the
University or to a university-designated non-profit organization
established for its benefit. After these specified disbursements are
made, all remaining financial returns from patents realized by the
University are to be placed in the general fund of the University for
distribution by the Budget Committee giving primary consideration
to the University Research Fund administered by the Vice President
for Academic Affairs and Provost.
7. The above policies shall not preclude the properly designated
university officials from approving and executing research
proposals, contracts, grants, and consulting agreements from or
with the United States Government or its agencies, from or with
corporations, or from or with individuals wherein the University's
patent interest and the patent interest of the researcher, with
his/her approval, are at variance with the above paragraphs; and
the terms of said contracts, grants, and agreements shall prevail.
Any of the above University officials may refer said proposals,
grants, contracts, or agreements to the Patent Committee for
recommendations prior to approval. To the extent the provisions
of these proposals, contracts, grants, and agreements permit, the
University shall administer such patents so as to make them
broadly available in the public interest. This may be accomplished
through non-exclusive licensing on a royalty-free, or on a
reasonable royalty basis. Exclusive licensing may be utilized for
limited periods when further development is needed or investment
or risk capital is not readily available, or there is no other incentive
for the development of the invention.
8. This statement of policy shall not apply to copyrights except as
they may pertain to inventions covered by this policy. This policy
shall not apply to commercial ventures, joint ventures, or
agreements to which the University is a party or shall become a
party in the future. An example of such excluded ventures is the
agreement existing for the creation, operation, and management of
the University of North Alabama Laboratory of Applied Technology.
Approved by Board of Trustees, 03/07/1997
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