Patent and Copyright Procedures

Note that references in this policy to functions performed by the Office of Research Services (ORS), the Patent Committee, and the Triangle Universities Licensing Consortium (TULCO) do not reflect current practices. TULCO has been discontinued and all TULCO functions are now handled by OTD. ORS is no longer involved in patent and copyright matters. Certain Patent Committee functions related to the evaluation, patenting and commercialization of inventions are now delegated to OTD.

PATENT AND COPYRIGHT PROCEDURES

January 1, 1994

The University of North Carolina at Chapel Hill

A. In General.

1. As defined by the Patent and Copyright Policies of the Board of Governors, to which these Procedures are expressly subject, The University of North Carolina at Chapel Hill 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 commercial exploitation and management under terms to be agreed between the inventor and the University.

3. The provisions of the Patent Procedures are subject to any applicable laws, regulations or specific provisions of the grants or contracts which 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. Ordinarily the University will not agree to assign rights in future inventions to private corporations or businesses.

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 forms provided for this purpose by the Office of Research Services (Appendix A). The Office of Research Services will promptly acknowledge its receipt of completed disclosure forms and will distribute such forms to the University Patent Committee for consideration at its next meeting.

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:

(1) To submit the disclosure for review by a patent or invention management firm;

(2) To make inquiries of potential licensees that may have an interest in the invention, including the financing of a patent application, where applicable;

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

(4) To acknowledge receipt of the disclosure but take no further action pending the results of further experimentation or other work deemed necessary in order to determine the proper course of action regarding commercialization; and

(5) In proper cases, to release its 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.

The inventor will be notified in writing of the decision of the Committee on whether the University will accept the invention for patenting, licensing and/or commercial handling as applicable. If the University chooses neither to file a patent application or 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 inventor will be promptly notified 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. In cases where such patent rights are released, the inventor(s) will be required to reimburse the University for all out of pocket costs of obtaining such patent rights.

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 with outside persons or organizations which may abrogate the University's rights and interests as stated in the Patent Policy or as provided in any grant or contract funding the invention, nor (b) without prior 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.

It is the University's policy that the results of faculty and student research should be published in scholarly form. Though the 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 will generally be an immediate bar to patentability in most foreign countries.

In order to preserve rights in unpatented inventions, it shall be the duty of the inventor, or of his or her supervisor if the inventor is not available to make such report, to report forthwith to the Office of Research Services publication, submission of manuscript for publication, sale, public use, or plans for sale or public use, of an invention, if a disclosure has previously been filed. If an invention is disclosed to any person who is not employed by the University or working in cooperation with the University upon that invention, a record shall be kept of the date and extent of the disclosure, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.

After disclosure to the Patent Committee, the inventor shall promptly notify the Office of Research Services of the acceptance for publication of any manuscript describing the invention or of any sale or public use made or planned by the inventor.

D. Inventor Requests for Waiver of University Rights.

If the inventor believes that the invention was made outside the general scope of his or her University duties, and if the inventor does not choose to assign the rights in the invention to the University, the inventor shall, in the 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 the 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 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 Patent and Copyright Policies.

E. Revenue Sharing.

1. The University shall share revenue which 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, and any royalty shares or expenses contractually committed to such persons or organizations may be deducted before revenues accrue to the University.

2. The revenues (net, if applicable per the preceding paragraph) which the University receives from a patent or invention will be applied first to reimburse the University for incremental expenses incurred by it in licensing the patent or invention in question (including patenting costs). Next, 20% of the revenues will be applied to the Invention Management Fund for obtaining and maintaining patents, for marketing, licensing and defending patents or licensable inventions, and/or for technology transfer. After provision for such expenses, the inventor's share of such revenues received by the University shall be 50% of such revenues. In the case of co-inventors, each such percentage share shall be subdivided equally among them, unless the University in its sole discretion determines a different share to be appropriate. Applicable laws, regulations or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. In no event shall the share payable to the inventor or inventors in the aggregate by the University be less than 15% of the gross royalties received by the University.

3. To the extent practicable and consistent with State and University budget policies, the remaining revenue received by the University on account of an invention will be dedicated to research purposes, including research in the inventor's department or unit, if approved by the Chancellor upon recommendation of the University Patent Committee.

F. Administration.

1. The University recognizes that the evaluation of inventions and discoveries and the administration, development and processing of patents and licensable inventions involves substantial time and expense and requires special talents and experience; therefore, the University has joined in the formation of Triangle Universities Licensing Consortium (TULCO) for the provision of such services. In addition, the University may enter into a contract or contracts with an outside organization covering specific inventions or discoveries believed to be patentable and patents developed therefrom, or covering all such inventions, discoveries and patents in which the University has an interest.

2. The Chancellor shall appoint a University Patent Committee consisting of not less than three members. The Committee shall review and recommend to the Chancellor or his delegate changes in these Procedures, decide upon appropriate disposition of invention disclosures, resolve questions of invention ownership, recommend to the Chancellor the expenditure of invention royalties, and make such recommendations as are deemed appropriate to encourage disclosures and assure prompt and effective handling, evaluation, and prosecution of invention opportunities and to protect the interests of the University and the public.

COPYRIGHT PROCEDURES

A. While, as a general rule, all rights to copyrightable material are the property of the creator, and the distribution of royalties, if any, is a matter of arrangement between the creator and his or her publishers or licensees, different treatment may be accorded by the University in case of specific contracts providing for an exception, in cases where the University is a joint author with the creator, in cases where the University or sponsor may employ personnel for the purpose of producing a specific work, in cases where different treatment is deemed necessary to reflect the contribution of the University to the work, as in the case of software or audiovisual material, or in cases where a sponsored agreement requires otherwise.

B. An institute, center, or other unit of the University that is itself a publisher and that engages faculty members and other employees to write for publication by that unit as a part of their professional duty or produce other copyrightable materials, such as audiovisual materials or computer software, may, subject to the approval of the Chancellor, adopt rules providing that copyright in materials prepared by such faculty members and other employees in the course of their professional work for that unit vests in the unit and not in the author.