Policy Statement #7 | Office of General Counsel

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Policy Statement #7

Initially approved February 3, 1984

Revised September 30, 1988

Revised March 15, 1991

Revised June 1, 2001

Revised February 22, 2002

Policy Statement #7

Patent Policy

A. General

1. As defined by the Patent and Copyright Policies of The University of North Carolina Board of Governors (“Patent and Copyright Policies”) [Exhibit I below], to which this Policy is expressly subject, The University of North Carolina at Charlotte has an interest in all inventions of University personnel that are conceived or first actually reduced to practice as a part of or as a result of University research, activities within the scope of the inventor's employment by the University, and activities involving the use of University time, facilities, staff, materials, University information not available to the public, or funds administered by the University.

2. The University may also have an interest in inventions under the terms of contracts, grants, or other agreements. Faculty, staff, and students whose inventions are made on their own time and without University facilities, materials, or resources and which inventions are, therefore, their exclusive property as specified by the Patent and Copyright Policies, may avail themselves of the opportunity to submit the invention to the University for possible patenting and/or commercialization and management under terms to be agreed between the inventor and the University.

3. The provisions of this Patent Policy are subject to any applicable laws, regulations, or specific provisions of the grants or contracts that govern the rights in inventions made in connection with sponsored research.

4. Under the terms of certain contracts and agreements between the University and various agencies of government, private and public corporations, and private interests, the University is or may be required to assign or license all patent rights to the contracting party. The University retains the right to enter into such agreements whenever such action is considered to be in its best interest and in the public interest. Except as provided in specific written agreements, the University will not agree to assign rights in future inventions.

B. Responsibilities of University Personnel

1. University personnel who, either alone or in association with others, make an invention in which the University has or may have an interest shall disclose such inventions on the Invention Report (IR) form provided for this purpose by the Office of Technology Transfer (Appendix A). The Director of the Office of Technology Transfer will promptly acknowledge receipt of completed IR forms and will provide such forms in confidence to the University Patent Committee and its agents for consideration. The Patent Committee shall be appointed and shall have duties pursuant to Section X of the Patent and Copyright Policies.

The Patent Committee will review each written disclosure promptly. The inventor or his or her representative shall be allowed to examine all written materials submitted to the Committee in connection with his or her disclosure and to make a written and, where practicable, oral presentation to the Committee. The Committee will decide on the proper 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:

a. To submit the invention for review by a patent or invention management firm;

b. To make inquiries of potential licensees as to their interest in the invention and their willingness to finance a patent application, where applicable;

c. To study the practicality of applying for a patent with University resources (an option with limited application because of financial constraints);

d. In certain cases, to release the University’s rights to the inventor subject to an agreement to protect the interests of the University, the sponsor, if any, and the public, including an obligation to pay to the University a percentage of future royalties, where necessary, to recognize the University’s contribution.

e. To dedicate the invention to the public.

As soon as practicably possible after receipt of the IR, the inventor will be notified in writing of the decision of the Committee on (1) the equities involved, including financial participation, (2) whether the University plans to file a patent application, or (3) whether the University will accept assignment of the invention for patenting, licensing, and/or commercial handling as applicable. If the University chooses neither to file a patent application, nor otherwise make available commercially, nor to dedicate to the public an invention in which it asserts its rights, the invention, at the Committee's discretion, may be released in writing to the inventor, with the permission of the sponsor, if any. If, after the University has filed a patent application, it decides to abandon the patent, the University will promptly notify the inventor in writing, and all rights, at the Committee's discretion, may be released by written agreement to the inventor, with the permission of the sponsor, if any.

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 a reasonable period from the date of the issuance of the patent, the inventor(s) may request in writing a release of the University's patent rights. The Patent Committee will promptly either grant the request or will advise the inventor of the University's plans for the development of the invention.

As to any invention in which the University has an interest, the inventor, upon request, shall execute promptly all contracts, assignments, waivers or other legal documents necessary to vest in the University or its assignees any or all rights to the invention, including complete assignment of any patents or patent applications relating to the invention.

2. University personnel may not: (a) sign patent agreements or any other agreement with outside persons or organizations that may abrogate the University's rights and interests as stated in the University of North Carolina Patent and Copyright Policies or as provided in any grant or contract funding the invention, or (b) without prior written authorization use the name of the University or any of its units in connection with any invention in which the University has an interest.

C. Publication and Public Use

The University strongly encourages scholarly publications of the results of faculty and student research. Though the University of North Carolina 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.

In order to preserve rights in unpatented inventions, it shall be the duty of each inventor to assure that a report is filed with the Director of the Office of Technology Transfer notifying that office of any publication, submission of manuscript for publication, sale, public use, or plans for sale or public use, of an invention for which an Invention Report has previously been filed. If an invention is disclosed to any person who is not employed by the University or is not otherwise committed to maintain such invention in confidence, the inventor shall keep a written record of the date and extent of each such disclosure, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.

After the invention has been disclosed to the Office of Technology Transfer, the inventor shall promptly notify the Director of the Office of Technology Transfer if he or she submits for publication, or has accepted for publication, any manuscript describing the invention, or if he or she plans or makes any sale or public use of the invention.

D. Inventor Requests for Waiver of University Rights

If the inventor believes that the invention was made outside the general scope of his University duties, and if he does not choose to assign the rights in the invention to the University, he shall, in his invention disclosure, request that the University Patent Committee determine the respective rights of the University and the inventor in the invention, and shall also include in his disclosure information on the following points:

1. The circumstances under which the invention was made and developed;

2. The employee's official duties at the time of the making of the invention;

3. Whether he or she requests waiver or release of any University claims or acknowledgment that the University has no claim;

4. Whether he or she wishes a patent application to be prosecuted by the University, if it should be determined that an assignment of the invention to the University is not required under the University of North Carolina Patent and Copyright Policies; and

5. The extent to which he or she would be 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 University of North Carolina Patent and Copyright Policies.

E. Revenue Sharing

1. The University shall share technology transfer revenue that it receives from patents or inventions with the inventors. As noted in Section A.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. Moreover, the University may contract with outside persons or organizations for the obtaining, managing and defending of patents. Any expenses incurred for the services of such persons or organizations, as well as any and all incremental expenses incurred by the University in obtaining and maintaining patents and/or in marketing, licensing and defending patents or licenseable inventions, shall be deducted before the University distributes revenues as provided in Section E.2 below.

2. The revenues that the University receives from a patent or invention (net of expenses described in Section E.1) shall be distributed as follows:

Net Revenue	Inventor	Department	College	University
First $100,000	50%	10%	5%	35%
$100,000-$500,000	40%	15%	5%	40%
Above $500,000	25%	20%	10%	45%

Applicable laws, regulations or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. In the case of co-inventors, each percentage share described in this paragraph as due a sole inventor shall be subdivided equally among the co-inventors unless all the co-inventors provide the University a written instrument signed by each of them allocating ownership among them other than in equal shares. 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.

3. To the extent practicable and consistent with State and University budget policies, amounts allocated to the University pursuant to the chart in Paragraph E.2. will be dedicated to support University research and commercialization activities, including research in the inventor's department or unit, if approved by the Chancellor.

F. Administration

The University recognizes that the evaluation of inventions and discoveries and the administration, development and processing of patents and 1icensable inventions involves substantial time and expense and requires talents and experience not necessarily found in its staff; therefore it may enter into a contract or contracts with an outside organization or organizations covering specific inventions or discoveries believed to be patentable or covering all such inventions, discoveries and patents in which the University has an interest.

G. Works subject to both copyright and patent protection.

As provided under the UNC Charlotte Copyright Policy (Policy Statement # 113), where an invention is subject to protection under both patent law and copyright law, if the University through the Office of Technology Transfer determines to retain title to its patent rights, the inventor/creator shall assign copyright to the University. On commercialization of such works, the inventor/creator shall be compensated in accordance with the provisions of this Policy and such procedures as may be developed hereunder. The Office of Technology Transfer may on its own initiative investigate whether a copyrighted work reported to it may also be subject to patent protection.

[University Policy Statements] [Office of General Counsel] [UNC Charlotte]

EXHIBIT I

THE UNIVERSITY OF NORTH CAROLINA

PATENT AND COPYRIGHT POLICIES

http://intranet.northcarolina.edu/docs/legal/policymanual/500.2.pdf

[University Policy Statements] [Office of General Counsel ] [UNC Charlotte]

APPENDIX A

REPORT OF INVENTION

Click here for printable form.
(Print form and fill in by hand.)

Please complete all sections and submit an electronic version of this form to the Office of Technology Transfer at mwdowik@uncc.edu for review and comments/suggestions. A final paper version of this Invention Report will be routed for final signatures upon completion of the review process. Concurrent with acknowledgement of receipt by OTT, a copy of this Invention Report will be routed to the Office of the University Attorney for review and retention.

1. Report Date: (Insert date of this disclosure)

2. Inventorship: (Identify all inventors below. In Section 2 (a), if all inventors are UNCC students, staff and/or faculty, place a checkmark next to the first item. If inventors include students, staff, and/or faculty external to UNCC, place a checkmark next to the second item. In Section 2 (b), list contact information for all inventors, identifying the primary contact person in Section 2 (b)(i))

a. UNCC Only _______ UNCC + External _______

b. Inventors:

(i) Full Name: ** Main Contact Person

Affiliation, College, Dept.: ______________________________________

Home Address: _______________________________________________

Phone/Fax/Email: _____________________________________________

Citizenship: __________________________________________________

(ii) Full Name: ________________________________________________

Affiliation, College, Dept.: ______________________________________

Home Address: _______________________________________________

Phone/Fax/Email: ______________________________________________

Citizenship: ___________________________________________________

(iii) Full Name: ________________________________________________

Affiliation, College, Dept.: ______________________________________

Home Address: _______________________________________________

Phone/Fax/Email: ______________________________________________

Citizenship: ___________________________________________________

(iv) Full Name: ________________________________________________

Affiliation, College, Dept.: _______________________________________

Home Address: ________________________________________________

Phone/Fax/Email: ______________________________________________

Citizenship: ___________________________________________________

3. Sponsorship: (Identify any and all sponsors below who have contributed cash and/or in-kind funding/assistance for the efforts associated with this invention. If none, write "n/a" in all spaces provided.)

a. Sponsor Name(s): _____________________________________________

b. UNCC Contract/Grant No.: _____________________________________

c. Funding Period: _______________________________________________

d. Principal Investigator (PI): ______________________________________

4. Title of Invention: ____________________________________________________

PATENT PRIMER

According to the United States Patent and Trademark Office ("USPTO"), patents may be issued for inventions that are novel, nonobvious, adequately described to allow one of ordinary skill in the art to make and use the invention, and claimed by the inventor in clear and definite terms. Patentable inventions include: process, machine, article of manufacture, composition of matter, and improvement of the preceding items. Such patents are defined as "Utility Patents". Patent protection is also available for: (a) ornamental design of an article of manufacturer ("Design Patents"), (b) asexually reproduced plant varieties ("Plant Patents"), and (c) business processes and models ("Business Patents"). Items that cannot be patented: laws of nature, physical phenomena, abstract ideas, literary/dramatic/musical/artistic works (which can be copyright protected.)

Pursuant to Policy Statement #7, "Patent and Copyright Procedures" of the University of North Carolina at Charlotte ("UNCC"), The University of North Carolina Patent and Copyright Policies, and all other UNCC employment and intellectual property policies and procedures, I/we hereby disclose details about the following invention:

5. Invention Abstract: (Attach a one paragraph summary description of your invention. Identify whether invention is a new process, composition of matter, a device, software, one or more products, a new use for or an improvement to an existing product or process.)

6. Field of the Invention: (Describe to what field the invention relates.)

7. Description of Related Art: (Describe all known related, prior art, including published literature, commercial products, and related patents and other forms of intellectual property, and conclude with a summary listing of all known related art.)

8. Detailed Description of the Invention: (Describe in detail the nature, operation, preferred embodiment, and applications of the invention. What technical problem does this invention solve, and for whom is this a problem? Include details of how this invention is nonobvious to those skilled in the art, novel, and useful – how does it differ from the prior art?)

9. Figures and Drawings: (Attach all related figures and drawings that help to describe the nature, operation, and applications of the invention.)

10. Reduction to Practice: (Has invention been reduced to practice? If so, include or attach a copy of experimental/prototype data or photos/graphics – or reference such data’s location.)

11. Publication and Presentation: (Note that public disclosure of an invention initiates a twelve (12) month window in which to file for patent protection within the U.S. In general, any public disclosure or placement on sale precludes foreign filing rights.)

a. Prior: (Indicate details of any full or partial disclosure of this invention by any of the inventors, including but not limited to: manuscript, article, report, grant application, thesis/dissertation, abstract, demonstration, sales catalog, news release, or oral (private or public) presentation. Please indicate which you have available, and if possible, provide a copy to the OTT with this Invention Report. Include all relevant dates of disclosure and recipient names or those in attendance (for presentation.).)

b. Planned: (Indicate details of any planned disclosure of this invention by any of the inventors. Include all planned dates of disclosure, as well as recipient names or planned attendance

12. Regulatory Requirements: (Does this technology require approval by regulatory agencies EPA, USDA, FDA, OSHA, other? If yes, please explain.)

13. Initial Market Assessment:

a. Potential Markets: (Briefly identify a few potential markets for this invention and how this invention addresses each market’s specific needs.)

b. Competition: (Identify all known competing approaches to solving the problems addressed by this invention, as well as all commercial competitors and prospective competitors.)

c. Potential Licensees/Assignees: (Identify any and all potential licensees/assignees of this invention. Reference any existing or expired partnership or other agreements with respect to this invention. Are such agreements still active?)

14. Personal Goals: (Check any and all that apply. It is important to note that the University, at its sole discretion, may commercialize its inventions in any manner consistent with its mission, objectives, policies, and rules and regulations; however, the personal goals of each inventor are important considerations in this process, and are therefore documented below.)

_____ I simply wish to document and file this invention report

_____ I would like the University to consider prosecution of patent applications, in its name, for this invention in:

_____ the U.S., because: (Provide rationale for request)

_____ internationally, because: (Provide rationale for request.)

_____ I would like the University to consider commercializing this invention via:

_____ new company start-up without my direct involvement.

_____ new company start-up with my direct involvement, in the role of _____ president/CEO, _____ CTO, _____ consultant.

_____ licensing/assignment to commercial entity in exchange for

_____ stock / equity _____ royalties / licensing fees

Please add any other comments below, and attach any related drawings, publications, or materials:

15. Inventor Signatures: (By signing below, I acknowledge that I am one of the inventors of the invention reported herein. I understand that the University of North Carolina at Charlotte owns the rights to, and may obtain protection for, all intellectual property developed by its students, staff and faculty subject to the provisions of University policies and procedures. By signing below, I hereby agree to execute a formal assignment of all rights to the invention to the University, unless so noted below in Section 19 "Request for Waiver".)

(i) Sign: _________________________ Date: _______________