UNIVERSITY OF PITTSBURGH POLICY 11-02-01
CATEGORY: RESEARCH ADMINISTRATION
SECTION: Technology Management
SUBJECT: Patent Rights and Technology Transfer
EFFECTIVE DATE: July 1, 2005 Revised
PAGE(S): 4
I. SCOPE
This policy establishes the rights and responsibilities of all faculty,
staff, and students* under the circumstances specifically provided herein
who discover or invent a device, product, or method, while associated with
the University, whether or not University time or facilities are used.
This policy also applies to all pending invention disclosures and/or
patent applications and/or patents not yet licensed or transferred as of
July 1, 2005.
II. POLICY
When an invention is made, the inventor must promptly submit an Invention
Disclosure Statement to the Office of Technology Management. See
Procedure 11-02-01, Patent Rights and Technology Transfer.
Title to Patents
The University claims ownership and control of the worldwide patent and
intellectual property rights which result from activities of its faculty,
staff, and students. University "faculty and staff" includes all persons
who hold any official faculty or staff relationship to the University,
with the exception of those persons who render their services to the
University on a gratuitous basis. This exception does not include faculty
who are members of professional corporations affiliated with the
University, even though the faculty may receive all or part of their
compensation from the professional corporation. The inventor will
normally receive thirty percent and the University seventy percent of the
net financial returns from the licensing or other transfer of patent
rights or other intellectual property rights.
If, however, the inventor or another institution believes that the
circumstances surrounding the invention, including such factors as support
provided by other than the University, place where discovery was made, or
lack of relevance to the regular work of the member of the faculty or
staff, warrant another distribution, the inventor or the institution may
request the Office of Technology Management, in consultation with the
Technology Transfer Committee,** to review the circumstances. After
review, and upon consultation with the Office of General Counsel and the
Senior Vice Chancellors, the Office of Technology Management will make
recommendations to the Chancellor on the distribution of proceeds.
The University, as determined by the Technology Transfer Committee and the
Office of Technology Management, may choose to waive all rights to file a
patent on a particular invention or to pursue licensing of such invention,
electing instead to grant the inventor permission to proceed on his or her
own in whatever manner the inventor deems appropriate. If an inventor
subsequently licenses or commercializes an invention for which the
University has waived its rights the University shall receive 5% of the
net proceeds received by the inventor above $25,000 from all sources for
the life of the license or commercialization arrangement. Half of any
such proceeds shall be designated to a University Development Fund; and
half to the inventor’s department for use in research at the discretion of
the inventor with the approval of the department chair, for so long as the
inventor remains a member of the University faculty. If the inventor
leaves the University, this portion will revert to a University
Development Fund (the inventor’s former department may subsequently choose
to apply for the use of these funds).
Patent rights resulting from any activities conducted by a student,
including the preparation of a thesis or dissertation, which made use of
University resources, are subject to the provisions regarding title to
patents.
Patent rights resulting from government-sponsored research grants,
contracts, fellowships, or other such arrangement, are controlled by the
terms of those agreements, but as between the University and faculty
members and staff accepting such grants, patent rights are subject to the
provisions herein regarding title to patents.
Patent rights resulting from the research grants or contracts of
nongovernment agencies or sources are, as between the University and
faculty members and staff, subject to the provisions herein regarding
title to patents.
Management of Patents
Inventions and discoveries resulting from University research are
administered and managed in a manner determined to be in the best
interests of the public, the inventor, and the University. The
responsibility for the management of such technology is through the Office
of Technology Management. The inventor(s) will be kept informed by the
Office of Technology Management of negotiations involving their
intellectual property prior to execution of any license.
Patent Rights Fund
The Patent Rights Fund has been established to provide resources to obtain
patents and maintain them and for filing and maintaining them in foreign
countries.
The fund will be reimbursed from any royalties, sales, or other proceeds
from patent licensing or other transfer for each particular patent (see
"Distribution of Income from Licensing or Sale of Patent Rights or
Other Intellectual Property Rights" below).
There will be additional reimbursement to the Fund, as provided below, to
increase the amount in the Fund for patent searches and obtaining and
maintaining patents. At the discretion of the Senior Vice Chancellors,
surpluses existing on an annualized basis once legal costs have been
reimbursed will revert to a University Development Fund.
Distribution of Income from Licensing or Sale of Patent Rights or Other
Intellectual Property Rights
First, income from each particular license or other transfer will
reimburse the "Patent Rights Fund" for legal, professional, and government
fees paid for outside services incurred for that licensed or transferred
patent or portfolio of patents.
Second, if a particular patent was facilitated by financial support from a
University Development Fund (see below), then the income attributable to
that patent must reimburse the fund if the support was categorized as a
reimbursable expense at the time of the award.
The balance of proceeds from any license, sale, or other amounts derived
from the transfer of patent rights or unpatented intellectual property
(excluding copyrights) will then be distributed as follows***
- 30% to the inventor(s).****
- 30% to the above "Patent Rights Fund."
- 10% to a "University Development Fund," to provide resources to
enhance the academic enterprise of the University and/or to develop
patentable material under the direction of the Provost and the
Senior Vice Chancellor for the Health Sciences. (Schools that have
supported research leading to patentable discoveries may apply for
money from the University Development Fund for support of future
endeavors.)
- 15% to the department***** of the inventor, for use in research at
the discretion of the inventor with the approval of the department
chair, if inventor is still a member of the faculty. If the
inventor leaves the University, this portion will revert to a
University Development Fund (the inventor’s former department may
subsequently choose to apply for the use of these funds).
- 15% to the Office of Technology Management to cover administrative
expenses.
- In the event that total income for a patent or group of related
patents or technology rights exceeds $100,000, the above
distribution of royalties may be changed in accordance with a plan
approved by the Chancellor of the University, but not so as to
reduce the inventor's share.
- In the event an inventor entitled to compensation under the
paragraphs above, leaves the University either voluntarily or
involuntarily, such inventor will continue to remain entitled to
receive payments under the paragraphs above, but will not in any
fashion be entitled directly or indirectly to continue to receive or
transfer any other rights or benefits to the department of the
inventor. In the event of death of an inventor entitled to receive
compensation under the paragraphs above, such payments will continue
to be paid to the inventor's estate and subsequently to those
lawfully taking thereunder in accordance with a court approved
distribution.
Public Disclosure/Publication
No University invention or discovery may be licensed, sold, or otherwise
transferred without prior approval of the Office of Technology Management.
All publication rights relating to sponsored research or research
supported entirely or largely by University resources are reserved by the
University for itself and its faculty members, staff, and student, subject
to the following conditions:
- Publication may be withheld for a maximum period of six months if
required for the filing of a patent application.
- Any patent or commercial product mentioned in a publication may not
be referred to by its trade name without the consent of both the
University and the sponsoring agency.
- The University, on request, submits any publication to the
sponsoring agency before printing and considers any recommendation
made by the Sponsoring agency. However, the University makes the
final determination as to the form, scope, and content of such
publication.
Patent Clauses
The terms of the invention disclosure to other parties and patent clauses
in agreements for sponsored research are subject to the review,
negotiation, and acceptance by the Office of Research and the Office of
Technology Management. In the event that clauses in any such agreement
appear to be unusual or to require special consideration, the Office of
Research and the Office of Technology Management will submit the agreement
to the Office of the Provost and the Office of General Counsel for
consideration and recommendation.
Non-Patentable Inventions
Certain discoveries and inventions, including trade secrets and know-how,
may not be patentable but may have material commercial value or potential
as revenue producers. These accomplishments are subject to the same
policy as any patentable invention and will be considered by the
Technology Transfer Committee and the Office of Technology Management on
an individual basis.
III. REFERENCES
Procedure 11-02-01, Patent Rights and Technology Transfer
Policy 02-06-01, Outside Employment
Policy 07-05-02, Conflict of Interest for Designated Administrators and
Staff
____________________
* Students are exempt from this policy for cases in which University facilities
are not used and where the invention or discovery is not made in the course of
the students studies at the University.
** The Technology Transfer Committee is comprised primarily of University
faculty whose charge is to evaluate invention disclosures. The broad
representation of academic units on the Committee affords the means to
effectively and efficiently evaluate research projects that come to the fore.
*** If stock or stock options are accepted in exchange for licensed technology,
distribution of stock-related proceeds will not occur until the University
liquidates the stock or stock options.
**** If an inventor waives his or her rights to distribution of proceeds under
the policy in favor of direct compensation from the licensing entity, then the
waived funds will be distributed at the University’s discretion in a manner
consistent with the policy.
***** The term department is used broadly and applies to the department of the
inventor in those units of the University with formal departments. If the
inventor is employed in a school or other responsibility center that has no
identified departments, then the school or responsibility center itself will
serve as the department.