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Policy: XV.E.2 |
Issued: June 23, 1993 |
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Latest Revision: May 31, 2000 |
The policy of the University of Virginia is to consider and, where appropriate, assist in the patenting and commercial development of discoveries or inventions which are the product of University research.
2.0 Policy [Top]
Any person who may be engaged in University research shall be required to execute a patent agreement with the University in which the rights and obligations of both parties are defined.
See also Procedure 15-4, "Completing Patent Policy Agreement."This policy is intended to:
- Provide an incentive to creative intellectual effort and the advancement of knowledge for the welfare of mankind;
- Insure that the respective interests of the researcher (as faculty or staff member or student), the University, any supporting sponsor, and society are considered and protected through the development of fair contracts and procedures;
- Assist the researcher and the University to realize tangible benefits from inventions or discoveries; and
- Advance and encourage further research within the University with whatever funds accrue to the University from inventions resulting from University research.
2.2 Administrative ResponsibilitiesVice President for Research and Public Service: Responsibility for the administration of the University of Virginia Patent Policy is assigned to the Vice President for Research and Public Service.
The Vice President for Research and Public Service shall:
- Develop standards and procedures appropriate for the implementation of this policy;
- Obtain, maintain, and insure compliance with signed patent agreements between the University and each researcher, and between the researcher and a sponsor agency as required by the terms of a grant or contract;
- Judge whether an invention or discovery is the product of University research;
- Advise the inventor whether an invention or discovery which is the product of University research is patentable;
- Determine whether the University should claim equity in the patenting of an invention or discovery which is the product of University research, or whether all rights should be waived in favor of the inventor. (In the latter case, the inventor should be informed in writing by the Vice President for Research and Public Service that the University relinquishes all claims to the invention or discovery;
- Take appropriate steps on behalf of the University for patenting and/or marketing of an invention or discovery in which the University has an equity;
- Administer the royalties accruing to the University as a result of the implementation of this policy;
- Establish guidelines for use of royalties accruing to the University as a result of the implementation of this policy. Decisions regarding the University's rights to an invention shall be made within a reasonable time so that an inventor's options are not compromised unnecessarily.
The Office of Sponsored Programs: In implementing the Patent Policy, the Office of Sponsored Programs shall:
- Inform the Office of the Vice President for Research and Public Service and principal investigator of all requirements regarding patents in any grant or contract accepted by the University of Virginia;
- With the aid of the principal investigator and in conjunction with the Office of the Vice President for Research and Public Service, provide all invention reports and other pertinent information regarding patents as required by the terms of a grant, contract, or agreement to which the University is a party.
The Vice President and Provost: The Vice President and Provost shall:
- Approve the standards and procedures and any amendment thereto developed by the Vice President for Research and Public Service for the implementation of the Patent Policy;
- Review the actions of the Vice President for Research and Public Service which are appealed by researchers and recommend appropriate action;
- Conduct an annual review of the patent program with the Vice President for Research and Public Service.
2.3 Distribution of Royalties to the Inventor(s)In general, the inventor(s) will receive from any product of University research a portion of the gross royalties, license fees, or other income which accrues. The inventor(s) may elect to have any part of this amount assigned to the University for support of research by the inventor(s). This provision will continue as long as income is received from the project, and it will be continued according to law in the event of the death of the inventor(s). Such royalties will be shared in accordance with the distribution specified in the disclosure.
An institutional agreement between the University and an outside patent management firm, such as the University of Virginia Patent Foundation, will specify a distribution of royalties and other income. Sums received by the Patent Foundation in excess of their annual budgeted operating costs will be transferred to the University for distribution.
Sums transferred to the University will be divided between laboratory support of the research of the inventor(s), for research in the School(s) in which the inventor(s) have primary faculty appointment(s), and for scholarly activities based on proposals from the entire University community. The distribution formula (amended April 1, 1997) is as follows:
Total Income Patent Foundation Inventor Inventor(s)
ResearchSchool(s)
Activities Fund$0 - $99,999 $100,000 - $299,999 $300,000 - $999,999 > $1,000,000 Funds to support University scholarly activities (S.A.F.) will be deposited in an interest-earning account, both the principal and interest of which are to be used to support scholarly activity based on proposals from the entire University community. A committee of distinguished faculty from the academic units of the University will be appointed by the academic vice president to advise them on the distribution of these resources in accordance with the guidelines for the Academic Enhancement Program, dated July 20, 1988 (funded by a special appropriation by the Board of Visitors).
Should an inventor leave the University, his or her share of the sums transferred to the University will be divided equally between the appropriate school(s) and the scholarly activities fund used to support scholarly work in all fields at the University.
2.4 Inventions and Discoveries Which are not the Result of University ResearchThe University normally will relinquish any claim to an invention or discovery which is judged by the Vice President for Research and Public Service not to be the product of University research. However, in such cases the researcher may request that the invention or discovery be appraised by and, if appropriate, assigned to the University. In such cases, the terms of the agreement will be determined by the inventor and the University.
Purpose
These Guidelines are intended to contribute to the effective implementation of the "Patent Policy for the University of Virginia," as approved by the Board of Visitors on April 6, 1973, and subsequently amended by defining relevant rights and obligations of the inventor and the University, as represented primarily by the Vice President for Research and Public Service.
Responsibilities of the Inventor and the University
Responsibility for timely and responsible disclosure of potentially patentable inventions and discoveries rests with the inventor. Disclosure forms are available in the Office of the Vice President for Research and Public Service. Guidance is available from the Vice President for Research and Public Service on responsible steps which should be taken to protect the interests of the inventor and the University.
The Vice President for Research and Public Service will provide the inventor a timely response to the following:
- Is the invention or discovery the product of University research as defined in the "Patent Policy for the University of Virginia"? If the determination is negative, formal notification will be given to the inventor of the absence of any vested interest of the University in the invention or discovery. The notification will be initiated, prepared and signed by the Vice President for Research and Public Service.
- Will the University refer the invention to an outside organization to determine the patentability and marketability of the invention?
- To which outside organization is the invention to be referred?
An answer to these questions will normally be expected within sixty (60) days after the submittal of a fully executed disclosure to the Vice Provost for Research by the inventor.
The inventor will cooperate in the patenting and licensing of the invention or discovery, whether requested by the University, the licensee(s), or an agent or assignee of the University, e.g., the University of Virginia Alumni Patents Foundation or Research Corporation.
If, after the initial steps have been taken, no further current action is judged desirable by the Vice President for Research and Public Service, the inventor may formally request the right to pursue on his own the patenting of his invention or discovery.
2.6 Appeal of Actions by the Vice President for Research and Public ServiceProvision is made for appeal to the Provost or his designee by the inventor of actions by the Vice Provost for Research. Grounds for appeal are alleged failure of the Vice President for Research and Public Service to fulfill the patent policy for the University of Virginia, follow these implementing guidelines, or demonstrate due diligence to avoid compromise of the inventor's equity in his invention or discovery. On the grounds that they are without support in fact and are unreasonable, the inventor may also appeal the decisions of the Vice President for Research and Public Service in response to the questions about the product of University research.
The inventor shall submit his appeal to the Provost or his designee, who shall satisfy himself that the inventor has made a reasonable effort to resolve his complaint with the Vice President for Research and Public Service and the substance of appeal is arguably proper. Proceedings shall be informal but all parties shall have adequate notice and opportunity to be heard. After hearing all relevant testimony the Provost or his designee shall decide the merit of the inventor's grievance and advise the Vice President for Research and Public Service on appropriate subsequent action.
3.0 Definitions [Top]
Definition of University Research and Researcher: For the purpose of this Patent policy and any documents developed for its implementation, University research is defined as research and related activities by any person, which are related in any way to duties or responsibilities for which he/she has been compensated either by or through the University; or for which facilities owned, operated, or controlled by the University are used. Products of research eligible for copyright protection are excluded from this definition. Modification of this definition of University research may be effected by the terms of a contract between the University and another public or private agency or, in exceptional circumstances, in the patent agreement with an individual University researcher. A researcher is any person who may be engaged in University research.
4.0 References [Top]
5.0 Approvals and Revisions [Top]
This policy should be reviewed at lease once every five years by the University Research Policy Advisory Committee.
Approved by the University Research Policy Council on June 6, 1973, amended on March 5, 1974, May 28, 1976, October 7, 1978, and January 2, 1992.
Revised by the University Research Advisory Committee on January 6, 1992.
Approved by the Rector and Visitors of the University of Virginia on April 6, 1973; amended May 28, 1976; amended October 7, 1978.
Previous version in effect from 6/23/93 to 5/31/00 available in policy archive.