Carolina University Faculty Manual
1. As defined by the patent and copyright policies of the Board of Governors,* to which these procedures are expressly subject, East Carolina University has an interest in all inventions of University personnel (Disclosing Party) 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 Disclosing Party’s employment by the University, or 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 consideration of possible patenting and/or commercial exploitation and management under terms to be agreed between the Disclosing Party 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 the best interest of the University or the public. 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 and/or conceive an invention within the scope of their University employment, in which the University has or may have an interest, shall disclose such inventions in a timely manner on forms provided for this purpose by the Office of Technology Transfer http://www.research2.ecu.edu/ott/inventors/inventors1default.htm. The Office of Technology Transfer will promptly acknowledge its receipt of completed disclosure forms and will distribute such forms as soon as practicable to the University Patent/Intellectual Property Committee (Committee) for consideration. The Committee will strive to preserve the right to timely publication by faculty.
The Committee will review each written disclosure promptly. The Disclosing Party 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 practical, oral presentation to the Committee. The Committee will decide on the proper disposition of the invention to secure the interest of the University, the Disclosing Party , the sponsor, if any, and the public. The Committee’s decision may include, but is not limited to, one or a combination of the following:
a. to submit the disclosure for review by a patent or invention management firm;
b. to make inquiries of potential licensees that may have an interest in the invention, including the financing of a patent application, where applicable;
c. to study the practicality of applying for a patent with available University resources;
d. in proper cases, to release its rights to the Disclosing Party 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; and
e. to dedicate the invention to the public.
The Committee will strive to review and consider the merits of each disclosure as soon as practicable given the circumstances surrounding the disclosure, but not longer than within three months from the time of disclosure to the University. The Disclosing Party will be notified in writing of the decision of the Committee on (1) the equities involved including financial participation, (2) whether the University plans to file a patent application, or (3) whether the University will accept assignment of 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 Disclosing Party, with the permission of the sponsor, if any.
If, after the University has filed a patent application, it decides to abandon the patent, the Disclosing Party will be promptly notified in writing, and all rights at the Committee's discretion may be released by written agreement to the Disclosing Party, with the permission of the sponsor, if any.
In those cases in which the University has obtained a patent without obligation to sponsors and, if no arrangement has been made for commercial development within a reasonable period from the date of the issuance of the patent, the Disclosing Party may request in writing a release of the University's patent rights. The Committee will promptly either grant the request or will advise the Disclosing Party of the University's plans for the development of the invention.
As to any invention in which the University has an interest, the Disclosing Party, 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 or
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
The University strongly encourages scholarly publication of the results of faculty and student research. 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 first publication or public use. Publication or public use also can be an immediate bar to patent ability in many foreign countries.
In order to preserve rights in unpatented inventions, it shall be the duty of the Disclosing Party, or of his or her supervisor, if the Disclosing Party is not available to report immediately to the Office of Technology Transfer any publication, submission of manuscript for publication, sale, public use, or plans for sale or public use, of an invention. All disclosures of a University invention or unpublished research data supporting an invention to non-University individuals or organizations shall be preceded first by execution of a confidentiality agreement and/or materials transfer agreement through the Office of Technology Transfer. In all instances a written record shall be maintained containing the date and extent a disclosure was made, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.
After disclosure to the Committee, the Disclosing Party shall promptly notify the Office of Technology Transfer of the acceptance for publication of any manuscript describing the invention or of any sale or public use made or planned by the Disclosing Party.
D. Requests for Waiver of University Rights by the Disclosing Party
If the Disclosing Party believes that the invention was made outside the general scope of his or her University duties and does not choose to assign the rights of the invention to the University, the Disclosing Party shall, in the invention disclosure, request that the Committee determine the respective rights of the University and the Disclosing Party 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 Disclosing Party. As noted in the section above, 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 revenue to sponsors or contractors. Moreover, the University may contract with outside persons or organizations for the obtaining, managing, and defending of patents, and any revenue contractually committed to such persons or organizations may be deducted before revenues accrue to the University, unless a license agreement otherwise specifies reimbursement of such expenses by the licensee.
2. The Office of Technology Transfer shall strive to require the licensee to pay for all past, present, and future patent expenses, in addition to negotiate fees and/or royalties for each invention. All remaining revenues after payment of these expenses (net income) (per the preceding paragraph) shall be distributed to the disclosing party in a manner consistent with the University License Income Distribution Policy, which can be found at http://www.research2.ecu.edu/ott/inventors/incomedistrib.htm but in an amount no less than a distribution of 50 percent of the first $100,000 net and 25 percent net thereafter. Applicable laws, regulations or provisions of grants or contracts may, however, require that a lesser share be paid to the Disclosing Party . In no event shall the share payable to the Disclosing Party in the aggregate by the University be less than 15 percent of gross revenues received by the University.
3. To the extent practicable and consistent with State and University budget policies, the remaining revenue received by the University from an invention will be dedicated to research purposes, including research in the Disclosing Party’s department or unit, if approved by the Chancellor upon recommendation of the Committee.
1. The University recognizes that the evaluation of inventions and discoveries and the administration, development, and processing of patents and licensable inventions involve substantial time and expense and require talents and experience that may not be available within the University, therefore the University may contract with non-University third party experts in technology licensing.
2. The Committee shall be represented by at least one representative from each academic school or college. Administrative oversight shall be provided by the Vice Chancellor for Research and Graduate Studies. The Committee shall review and recommend to the Chancellor or his or her delegate changes in these procedures, decide upon appropriate disposition of invention disclosures, resolve questions of invention ownership, recommend to the chancellor the expenditure of license revenues , 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.”
Established by UNC Board of Governors, March 1984
Faculty Senate Resolution #06-15
ECU Board of Trustees
*University of North Carolina Patent and Copyright Policies, adopted by the board of governors on June 10, 1983.