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Patent Policy

     

 I. INTRODUCTION

The University of Denver recognizes and encourages individual effort on the part of its employees, faculty, and students in efforts leading to discoveries and inventions. It is the University's intent to protect the rights of the individual, the University, and the sponsoring agency (if involved), and to ensure fair compensation in the event these discoveries or inventions have commercial applications. This policy is to be considered and interpreted in light of the University's general Intellectual Property Policy, and is incorporated as a part thereof.

II. POLICY

A. Objectives

The objectives of the Patent Policy are as follows:

  1. To encourage invention and to provide fair compensation for the inventor, the sponsoring department and the University.
  2. To fulfill the terms of sponsored agreements and other contracts relating to the development of intellectual property.

B. Definitions

  1. Sponsors
    The term "sponsor", means any external agency, party or parties with whom University representatives have an agreement for compensated labor.
  2. Sponsored Agreement
    The term "sponsored agreement" means a grant, a contract, a subcontract, or another agreement between a sponsor and the University for the purpose of conducting research, instruction, training and other activities at the University for compensation.
  3. Employee
    The term "employee" or "staff member" refers to any person employed full or part-time by the University in any capacity.
  4. Patent
    The term "patent" refers to both U.S. and foreign patents and patent applications, and the rights conferred upon the patent holder by applicable law. 
  5. Student
    The term "student" refers to any person enrolled for any course offered by the University, or who is in a research program for an academic degree.

C. Patent Rights Committee

  1. The Patent Rights Committee is hereby established to evaluate patent disclosures, determine ownership interests in the invention and advise the Vice Chancellor of Business and Financial Affairs on the potential development of patents or other commercial rights.
  2. There shall be six voting members of the Patent Rights Committee serving three-year staggered terms. Four members shall be appointed by the Provost and two members by the Vice Chancellor for Business and Financial Affairs.
  3. The Vice Provost of Graduate Studies and Research shall serve as chairperson of the Committee.
  4. The Director of the Office of Sponsored Programs shall serve in an ex officio capacity as the administrative officer for the Committee (University Patent Administrator.)

D. General Policy Provisions

  1. Scope of Policy
    The Policy is binding on University of Denver faculty, researchers, staff, students engaged in research or projects materially associated with the University, and others as a condition of their participation in University programs, or their use of funds, space or facilities.
  2. Assignment of Rights
    All newly employed personnel hired after June 28, 1985 will be required to sign the Employee Patent Agreement (Exhibit A) or subsequent version. Persons employed before that date will be required to sign the said agreement as a condition of continued employment, unless a different agreement is mutually agreed upon.
  3. Publication of Patentable Inventions
    U.S. Code Title 35 Patents, Section 102 and certain foreign patent laws preclude an applicant from obtaining a patent if the invention was described in a printed publication in this or a foreign country. It is therefore important to avoid premature disclosure or publication of patentable inventions.

    Any delay of publication shall be for a limited time while the decision to seek a patent is being made or a patent application is being prepared. It is expected that the faculty and staff will recognize and comply with the need to protect patentable discoveries.
  4. Inventions Involving University Funds or Facilities
    Vice Chancellor for Business and Financial Affairs, with the advice of the Vice Chancellor for Intellectual Property & Events, and the Intellectual Property Committee, will have the right to determine the disposition of inventions covered by the Employee Patent Agreement, or resulting from a program of research involving the significant use of University funds, space, or facilities, determined by the Department Chairman, Division Head, or Dean, as appropriate. When in such cases the University undertakes patenting and commercial development of the invention, the income will be shared with the inventor in accordance with Section II (F) of this Policy.
  5. Inventions Developed Outside the University of Denver Employment
    The University makes no claim to inventions discovered by faculty, staff members, or students entirely on their own and without the use of University funds or facilities. However, in order to determine the rights of the University and inventor, all inventions will be reported to the University Patent Administrator.
  6. Inventions Subject to Sponsored Agreements
    Inventions resulting from work financed wholly or in part by an outside sponsor may be subject to special provisions of the sponsored agreement covering the work.

    Research sponsored by the U.S. Government shall be subject to the patent policies authorized by Public Law 96-517 with procedures in Title 37 Code of Federal Regulations Part 401, "Patents - Small Firms and Non-Profit Organizations," issued by the Office of Federal Procurement Policy, OMB.

    In negotiation of all sponsored agreements, the University will attempt to obtain agreements on inventions that protect the rights of the University of Denver and its employees, while recognizing the equity of the sponsoring organization.
  7. Consulting Agreements
    Any member of the faculty and staff involved in consulting work or other outside activity should determine that patent clauses in the agreements are not in conflict with obligations to the University. In cases of conflict of interest, the University reserves the right to determine the final disposition of the patent rights involved. Each member of the faculty and staff should be certain that the outside agency is provided with a current statement of University policy.

E. Patent Development

  1. General
    The University recognizes that the use of proprietary rights in the form of patent licenses are often necessary to encourage a company to invest the personnel, time, and financial resources to develop the inventions. Various options are available to the University for the development of inventions. The option to be followed will be determined by the Vice Chancellor for Business and Financial Affairs in consultation with the Patent Rights Committee and inventor(s).
  2. Development by the University of Denver
    The University will develop an invention when it appears such development will be of economic benefit to the University, or if the University is required to do so under the terms of a sponsored agreement with an agency. In these cases, the University will retain a patent attorney to prepare and process the patent application with the Commissioner of Patents and Trademarks and will manage the promotion and licensing of the resulting patent.
  3. Development by Outside Organizations
    When it is determined that an invention in which the University has an interest should be developed by an outside organization, the University will obtain such services through an agreement with the organization.
  4. Development by Inventor
    If the University determines that it has no interest in an invention or decides to forego the patenting of an invention, it may formally waive its rights to the invention. If the invention was made under a research agreement, this waiver will not be granted until it has been approved by the sponsoring agency. If there are conditions attached to the waiver by the sponsor, such conditions shall be passed to the inventor with the waiver. Upon the receipt of a written waiver from the University, and other parties if necessary, inventors will be free to develop the inventions at their own expense. Inventors will be required to furnish a royalty-free, non-transferable license to the University of Denver and the sponsoring agency, as a condition of the waiver agreement.

F. Sharing of Patent Royalties

 Where royalty or other income is received by the University of Denver as a result of successful commercialization of an invention, in excess of costs of patenting, licensing, and other direct costs of commercialization, the University will share such revenues with the inventor(s) and the Department(s) or Division(s) to which the inventor is assigned on the date of disclosure according to the following schedule:

Department/Income Inventor Division University
$0-$25,000 100% -0- -0-
$25,001 - $50,000 40%* 30% 30%
$50,001 and over 33 1/3%** 33 1/3% 33 1/3%

* of the amount over $5,000
** of the amount over $50,000

Income is defined as royalties, license fees, and/or other receipts resulting from commercialization of a patent by the University. Before the royalty income is distributed, necessary and appropriate expenses for patenting and licensing incurred by the University will be recovered.

The department or division share will be disbursed by the department or division head, subject to the approval of the Provost. Such department or division funds will ordinarily be used for research activities of the inventor, as long as the inventor remains with the University.

 

III. GENERAL PROCEDURES

A. Administration

  1. University Patent Administrator
    a) Conduct day-to-day operations relating to patent matters, including arrangements for preparation and filing of correspondence, minutes of the Patent Rights Committee, and patent records.
    b) Interpret and implement the patent policies of the University of Denver with advisement by the Vice Chancellor for Business and Financial Affairs

    c) Coordinate appropriate legal action to enforce the University of Denver patent rights.
  2. The Patent Rights Committee will, in addition to the responsibilities outlined in Section II(C) 1:
    a) Monitor the execution of this policy and make recommendations for changes as needed.
    b) Hear and adjudicate disputes on University patent matters.
    c) Direct the University Patent Administrator on the implementation of this policy as necessary.
  3. The Office of Sponsored Programs will assist the Patent Rights Committee with the administration of the policy with respect to proposals for and acceptance by the University of sponsored agreements, submission or appropriate reports to sponsors, invention disclosures, and patents arising from sponsored agreements. The Office of Sponsored Programs will have these responsibilities and perform these functions regardless of the source of funds or the University Division or Department through which the program is created.

B. Licenses, Assignments and Development Agreements

The Vice Chancellor for Business and Financial Affairs and the Vice Chancellor for Intellectual Property & Events shall approve all contracts related to the disposition of the University of Denver 's intellectual property.

C. Human Resources

  1. The Human Resources Department will obtain and file original Employee Patent Agreements for all employees.
  2. The Employee Patent Agreement must be signed and forwarded to the Human Resources Department with the Appointment Form.
  3. The Office of Sponsored Programs shall verify that all investigators have signed Employee Patent Agreements before activity can begin on the grant or contract. If all Agreements are not on file with the Human Resource Office, it is the responsibility of the Principal Investigator to secure the Agreement.
•  Dispute Resolution.
All disputes regarding the actions of the Patent Rights Committee will be resolved in accordance with the provisions of the Intellectual Property Policy.

 


Office of Intellectual Property & Technology Transfer
Office: The Cable Center, 2000 Buchtel Blvd., Denver, CO 80210
Mail: Ritchie Center, 2240 E. Buchtel Blvd., Denver, CO 80208
Telephone: 303.871.4230· FAX: 303.871.4514· E-mail: cpavelka@du.edu

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