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ORSP - Policies
UNIVERSITY REGULATIONS & PROCEDURES MANUAL
CAVEAT:
THE UNIVERSITY REGULATIONS & PROCEDURES MANUAL OF
RUTGERS,
THE STATE UNIVERSITY OF NEW JERSEY
COMPILES REGULATIONS APPROVED
BY THE BOARD OF
GOVERNORS AS WELL AS CERTAIN ADMINISTRATIVE
PROCEDURES. ALL REGULATIONS AND PROCEDURES
ARE SUBJECT TO
AMENDMENT. TO CONFIRM THE PRESENT
STATUS OF A PARTICULAR
REGULATION APPROVED BY THE
BOARD OF GOVERNORS, YOU SHOULD CONSULT
THE OFFICE
OF THE SECRETARY. THE STATUS OF PROCEDURES ISSUED BY
AN ADMINISTRATIVE OFFICE SHOULD BE DETERMINED BY
CONSULTING THAT
OFFICE.
6/22/94
UNIVERSITY REGULATIONS & PROCEDURES MANUAL
BOOK 6
SOURCE: Board of Governors SECTION: 6.4.1.
ORIGINALLY APPROVED: 1962 FORMERLY:
LAST REVISED: 4/96
6.4.1. Patent Policy of Rutgers, The State University of New
Jersey. The Patent Policy of Rutgers, The State
University of New Jersey, was adopted by a resolution of
the Board of Governors in 1962. It was amended in 1974,
1986 and 1996.
A. Scope and Applicability. Rutgers, the State
University of New Jersey is dedicated to the
principle of service in the public interest, to
excellence in education at all levels, and to the
advancement of knowledge through research and
scholarship. Some knowledge can be reduced to
practice as useful inventions that directly benefit
the public. It is the University's intent to make
these inventions available to the public at the
earliest possible time, using means appropriate for a
publicly supported institution to recognize and
reward its inventors and research sponsors as well as
serve its own interests. This policy is designed to
promote a spirit of inquiry, encourage creative
activity, and enhance the University's educational
and research missions to benefit the economy of New
Jersey and the public Rutgers serves.
Effective July 1, 1996, this policy shall apply to all
instructional, research and administrative units of the
University, and to the following individuals and
conditions. The persons identified in (1), (2), and (3)
below shall abide by this patent policy as a condition of
employment or study.
(1) All University personnel, including but not
limited to members of the faculty and staff
holding appointments at or employed by the
University, persons holding any form of research
appointment, visiting professors or visiting
scientists with or without salary, undergraduate
and graduate students, graduate assistants,
teaching assistants, and post-doctoral fellows.
(2) All other persons with inventions that result in
whole or in part from use of University facilities
or resources.
(3) In the event that any person to whom this policy
shall ordinarily apply is subject to an agreement
or policy elsewhere under terms which prohibit
assignment of patent rights to the University, it
shall be the obligation of that person to so
inform, through his/her academic superordinates,
the Vice President for Research before entering
upon a program of study at, entering the
employment of, accepting any form of support from,
or using the facilities of the University. Upon
such notification, the University will enter into
a specific, written agreement respecting the
rights and obligations of each involved party in
regard to patentable discoveries. In the absence
of such written agreement, the provisions of this
policy shall apply.
(4) University faculty and staff who have reached an
agreement with the Office of Corporate Liaison
Technology Transfer to pursue inventions not owned
by the University, and in which they have full
rights. In return for this service, the
individual will be required to assign to the
University his/her rights to the invention, which
then will be administered as all other inventions
subject to this policy.
B. Requirement to Disclose and Assign Rights to the
University. This policy shall not be construed so as
to infringe upon the rights of all persons connected
with the University freely to pursue research and
publish the results obtained. However, it is the
obligation of the inventor to disclose his/her
invention or discovery, including improvements and
reductions to practice, to the University in
accordance with this policy before disclosure is made
of research results by publication or through any
other medium.
Hence, any person identified in Section A who conceives
or makes or reduces to practice an invention or discovery
during the course of, or related to his/her University
activities shall promptly, before he/she discloses the
same to the public and soon enough to permit timely
filing of a patent application in the United States and
in foreign countries, disclose the invention, discovery,
improvement, or reduction to practice to the Director of
the Office of Corporate Liaison and Technology Transfer
or his/her designee. All persons who are subject to this
policy are required to assign their individual rights to
inventions, discoveries, improvements, and reductions to
practice to the University, including, without
limitation, United States and foreign patent rights and
the right to claim priority under the terms of any
international patent agreement. In the event that such a
person's invention, discovery, improvement or reduction
to practice arises out of an agreement between the
University and another party, then that person will be
bound by the terms of that agreement.
University employees shall be mindful of University
Regulations involving Professional Activities Outside the
University and Outside Employment, as these regulations
relate to the obligation of employees to disclose and
assign rights to inventions and discoveries to the
University. University employees, who as participants in
allowable consulting activities are required to enter
into agreements concerning intellectual property, may
have these agreements reviewed by the Director of the
Office of Corporate Liaison and Technology Transfer to be
certain such agreements do not inappropriately assign
University rights to third parties. However, this review
is mandated if an agreement is required of an employee
for a consulting activity that is related to specific
research conducted at the University or with University
facilities or resources by the employee or by others
under the employee's direction. In no case will
University employees assign to others rights to any
invention or discovery which has been conceived or
reduced to practice in whole or in part using University
facilities or resources. This prohibition will apply to
work performed under all consulting agreements, unless
the University is party to an agreement and has
specifically agreed to such an assignment.
Laboratory notebooks and all other documents pertaining
to research activities are the property of the
University. These records are necessary for the
University to document an invention or discovery and to
support a related patent application.
C. Return or Assignment of Rights. If the University
elects not to file a patent application or otherwise
protect or commercialize information which has been
disclosed to the University on or following the
effective date of this, the 1996 amendment of the
University Patent Policy, this decision will be
communicated promptly to the person who made the
disclosure. If such person, or if any other person
requests that the University permit him/her to file
such a patent application or to have assigned to
him/her the University's rights, the University may,
at its sole discretion and under conditions it deems
appropriate, grant such permission and assign or
license to such person or persons some or all of its
rights to such information and to inventions deriving
therefrom. In exercising its discretion, the
University shall take the following items into
account: the public interest; the interests of
sponsors, including the provisions contained in an
agreement with a sponsor executed prior to the
initiation of the research activity which led to this
discovery; the interests of the inventor and the
University; and such other considerations as it deems
appropriate. In every case, the University will
retain a non-exclusive, royalty-free license to
practice the invention for internal University
purposes.
If the University elects to contract for outside
evaluation, protection, or commercialization of a
disclosure, this decision will be communicated promptly
to the person who made the disclosure. Moreover, the
person who made the disclosure periodically will be
briefed by the Director of the Office of Corporate
Liaison and Technology Transfer on the strategy and
progress of the outside contractor in meeting its
obligations under the contract.
D. Reservation of Rights in Sponsored Research.
Ownership of patents arising from work sponsored by
Federal agencies shall be subject to the provisions
of Public Law 96-517, the Bayh-Dole Act as amended,
other applicable law, and the provisions of this
patent policy. The Bayh-Dole Act clearly sets forth
as the objective of Congress the utilization of the
patent system to "effectuate the transfer of
government-funded inventions to the public," and
gives nonprofit institutions a right of first refusal
to title in inventions resulting from research
performed with the support of Federal contracts and
grants.
Ownership of patents arising from work funded by other
external sponsors shall be subject to specific provisions
contained in research proposals and agreements with those
sponsors which have been executed by an appropriately
authorized individual in accordance with University
regulations.
E. Licensing of Rights to Inventors. Rutgers' faculty,
staff, or student inventors may request a license to
develop commercially their University-owned
inventions where such licensing will enhance the
transfer of the technology, is consistent with
University obligations to third parties, and does not
involve an impermissible conflict of interest.
F. Distribution of Licensing Income.
(1) The University will share with inventors revenue
which it receives on patents according to a
schedule of distribution designed to recognize the
inventor's creativity, the academic unit as an
innovative environment, and the administrative
leadership necessary for inventions to be
commercialized successfully. The University
reserves the sole right to enter into licensing
agreements concerning income on inventions,
discoveries, improvements, reductions to practice
and related intellectual property that enhance the
mission of the University and serve the people of
New Jersey. These agreements may include terms,
such as nonexclusive and royalty-free, which could
influence or even obviate licensing income. The
University also may contract for outside patent
management, and any share of income to a patent
management organization will be deducted before
revenues on patents for distribution are
calculated. All monetary consideration received
by the University in exchange for licensing rights
to use an invention which it owns, shall be
subject to the following distribution schedule:
DISTRIBUTION OF RUTGERS' LICENSING INCOME
Step
a. Distribute the first This distribution is in
$5,000 of Gross recognition of individual
Income to the creativity and inventorship.
inventor.
b. Then, deduct These expenses include patent
expenses directly filing, prosecution and
assignable to the maintenance fees, and
specific patent and marketing and litigation costs
are not paid by a incurred in commercializing
licensee to arrive and defending the specific
at Net Income. invention.
c. Distribute Net Income as indicated below:
First $100,000 Above $100,000
Inventor* 25% 28%
University/OCLTT 25% 32%
Research Unit** 40% 30%
Department*** 10% 5%
Dean/Director -- 5%
*NOTE: The inventor may, at his/her option at the time of
annual distribution of these funds, deposit in a University
account all or part of the inventor's share to support
his/her research in his/her research unit. The inventor's
personal share shall survive termination of affiliation with
the University and, in the event of death of the inventor,
shall pass to his/her estate.
**NOTE: Research unit is defined as Bureau, Center,
Institute or Department in which the research that resulted
in the licensed invention was conducted and funded.
***NOTE: In some cases the research unit and the department
are identical. Thus, the distribution could be 50% to a
single unit.
In the absence of a specific agreement to the contrary
filed with the Director of the Office of Corporate
Liaison and Technology Transfer, the University will
distribute licensing income 1) equally among multiple
inventors, and 2) equally among all income-producing
patents covered by a single license.
Before filing for a patent, the Director of the Office
of Corporate Liaison and Technology Transfer will
consult with the inventor and with the Chair/Director
of all units in which the inventor is budgeted or
affiliated to attempt to determine the relative
contributions of the different units, and precisely
where the research that resulted in the invention was
conducted and funded. The Director will then use this
information to determine the appropriate research unit
and/or department to which to distribute licensing
income.
The Director may modify the distribution of licensing
income in the event of new information relating to
inventorship or other extraordinary circumstances that
require a change in distribution to avoid an
inequitable result.
The allocations of licensing income to research units
and departments are intended to recognize and reward
these units and departments for providing an
environment that fosters creativity and inventorship.
However, in using licensing income, Directors and
Chairs are advised to consider the contributions made
by individual faculty members to the generation of this
income. Allocations of licensing income to research
units and departments generally will remain unchanged
should the inventor relocate within or outside the
University, and in the event of death or retirement of
the inventor. Should a research unit or department
receiving licensing income be disestablished, its share
of licensing income will be assigned to the University.
In the case of a patentable discovery made jointly by
Rutgers' personnel and personnel from an external
organization or institution or an individual inventor
without institutional affiliation, distribution of
licensing income will be governed by the terms of any
contractual agreement entered into by the University
upon the initiation of the activity which led to the
patentable discovery. In the absence of such a
contractual agreement, the Director of Corporate
Liaison and Technology Transfer will negotiate an
agreement concerning the distribution of licensing
income.
(2) Licensing income received on or after the effective
date of this, the 1996 amendment to the University
Patent Policy, from disclosures and patents received
prior to the effective date of this, the 1996
amendment, will be distributed as set forth in
Paragraph F(1) above. However, expenses incurred prior
to the effective date of this, the 1996 amendment, will
not be deducted unless permitted under the previous
policy. In cases where some distribution has been made
to an inventor under the formula previously in effect,
but these disbursements to the inventor are less than
$5,000, the inventor's share of future income will
first be increased to $5,000 without deduction for
expenses, and income then will be distributed on a net
basis as set forth in Paragraph F(1) above.
Questions concerning the pattern of distribution of
licensing income or requests for an interpretation of
any of the above provisions shall be directed to the
Vice President for Research, who may consult with the
Research Advisory Board, or the Patent Policy Advisory
Committee of the Board.
G. Equity Holdings. The University has the right, at its
sole discretion and under conditions it deems
appropriate, to enter into agreements involving equity.
The terms of agreement involving equity and the
distribution of income on equity will be negotiated by
the Director of the Office of Corporate Liaison and
Technology Transfer for review and approval by the Vice
President for Research and the Senior Vice President
and Treasurer, or their designees.
H. Patent Policy Advisory Committee. The Research
Advisory Board will, as and if necessary, establish and
appoint a Patent Policy Advisory Committee of the
Board. It shall be the responsibility of this
Committee to advise the Vice President for Research on
the interpretation and enforcement of this policy,
amendments to this policy, the resolution of disputes
on patent matters including inventorship and ownership,
and such other matters as the Vice President for
Research may deem appropriate.
The Vice President for Research shall have final and binding
authority to interpret and enforce this patent policy, and
to resolve any disputes under this policy.
I. Timeliness of Decisions. The University shall make
every reasonable effort to act expeditiously under the
circumstances in arriving at all decisions under this
policy. From the time of disclosure, inventors will
work in close collaboration with an assigned patent
administrator who will monitor progress of the
invention through the University process. Under normal
circumstances an inventor can expect an initial
response to a disclosure from the administrator within
60 days. Appeals for action on a basis of timeliness
may be made as needed by the inventor.
Note 1: Under a policy adopted by the Research Advisory Board in
December 1975 and approved by the Office of the President, in the
case of industrially-sponsored research the University and the
Principal Investigator may agree in advance to assign patent
rights to the sponsor in exchange for a "premium" indirect cost
rate which is calculated at approximately double the normal
indirect cost rate. In such cases, the entire monetary
difference between the normal and the premium rates is
distributed to the research unit and/or department in which the
research is conducted and funded, and in which the Principal
Investigator holds his/her appointment.
Note 2: Under a definition adopted by the Patent Policy Advisory
Committee of the Research Advisory Board in June 1996 and
approved by the Vice President for Research, Research Unit
as used in Section F., Distribution of Licensing Income, will
include all duly constituted centers, such as, but not limited to,
the Center for Advanced Food Technology and the Center for
Biomaterials and Medical Devices, which obtain outside funding
that is distributed in support of research managed by center
personnel and performed by teams of researchers who are
affiliates of the centers in various departments.
***** END OF SECTION 6.4.1. *****