Section 3364-70-04 - Patent Policy(A) Policy statement. It is the policy of the university of Toledo "university" to treat all faculty, staff, and students equally with respect to their rights as inventors of creations, discoveries, inventions or patents.
Pursuant to section 3345.14 of the Revised Code, all rights to and interests in discoveries, inventions or patents which result from any research, investigation or work conducted in any university laboratory or facility or by employees acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through university, will be the sole property of university,its successors and assigns.
Employees shall and do hereby assign such rights, titles and interests to university. Assignments or waivers of such rights, titles and interests may be made to external sponsoring agencies or others, as provided in subsequent clauses of this policy.
(B) Purpose of policy. Provide a guideline for the ownership and disposition of any creations, discoveries, inventions, or patents that result from research, investigation or work conducted by university faculty, staff, or students.
(C) Definitions.(1) "Net income" from any university intellectual property means: earnings received by university from a license with a third party for the university intellectual property, after payment of all costs incurred by university in connection with the invention or discovery. Such costs will include, but not be limited to, costs associated with pursuing patent protection or developing the invention, any investment in the invention, and/or marketing and/or licensing the invention. If there is more than one university inventor, that part of the net income accruing to such university inventors will be distributed on a pro-rata basis, unless another percentage disbursement of the total university inventors' share is specifically requested in writing by such university inventors.(2) Patent and commercialization committee "patent committee" means: (a) Committee appointed by the president's designee to serve on one of two committees, one each on university main campus and health science campus.(b) Committees will consist of faculty, administrative staff, community members and any other person with expertise deemed desirable for evaluating university intellectual property.(3) "University intellectual property" means: (a) Creations, discoveries, inventions, or patents which result from research, investigation or work conducted:(i) In any university laboratory or facility; or(ii) By university faculty, staff or students while acting within the scope of their employment; or(iii) With funding, equipment, or infrastructure provided by or through university.(4) "University inventor" means any faculty, staff or students with rights to or interests in creations, discoveries, inventions or patents developed pursuant to section (C)(3)(a)(i) to (C)(3)(a)(iii) of this patent policy 3364-7004.(D) Procedure. Promptly after the conception and/or making of a creation, invention or discovery, university inventor(s) must complete and submit an invention disclosure form "IDF" and any necessary supplemental information to university's technology transfer office. The "IDF" will contain sufficient information for the technology transfer staff to make an informed judgment regarding the patentability and commercialization potential of the creation, invention or discovery, and to allow the appropriate patent committee to make an informed recommendation regarding the desirability for university to retain rights in the creation, invention or discovery and/or make application for patent protection with the United States patent and trademark office or foreign patenting entity. All information which may reasonably be related to university intellectual property will be treated as confidential information by university personnel and patent committees.
(1) Patent committee will initially advise whether the university intellectual property has sufficient value or is of sufficient interest to university to warrant patent protection; whether such university intellectual property should be relinquished to the university inventor(s) or to the agency which sponsored the research leading to the invention or discovery; or be otherwise managed. Notwithstanding the above, the president's designee may authorize the filing of patent applications when there is an impending publication deadline or when a company has expressed an interest in either optioning or licensing the university intellectual property.(2) University may, alone or with the assistance of external organizations, make application for patents on any such university intellectual property selected by university for patenting. university inventor(s) shall, whenever requested by university, make, sign, execute and deliver all applications, assignments and other papers which, in the opinion of university or its legal or patent counsel, are necessary, proper or desirable for obtaining letters patent of the United States and any other countries, and for transferring all such designs, creations, discoveries, inventions, improvements, patentable ideas, methods, processes, trade secrets and letters patent and applications therefore to university, its successors and assigns. Additionally, university inventor(s) shall cooperate with and assist the technology transfer staff with its efforts to evaluate, market, and license the creation, invention or patent.(3) University president may appoint another administrative official as his/her designee for managing university intellectual property. Unless otherwise specified by the president, his/her designee is the head of technology transfer.(4) University president or his/her designee is hereby empowered and authorized to act on or reject the patent committee's determinations, and to sell, assign, convey, or grant any such university intellectual property or any rights or shares in such university intellectual property, including patent rights, to such persons, firms or governmental agencies for such consideration or upon such terms and conditions, including dedication to the public, as are deemed by him/her to be in the proper and best interest of university.(5) University president or his/her designee is authorized by the board of trustees to make arrangements with external sponsors of research to obtain research funding from such sponsors. Such arrangements may include, but are not limited to, assigning all rights to university intellectual property to the sponsor, or granting an exclusive or nonexclusive license to the sponsor with or without royalties to be returned to university. Any such agreement must be in writing and signed by university's authorized signatory. Such agreements will be in consultation with university inventor(s); however, university retains the final decision as to terms.(6) Net income from any university intellectual property that is licensed to a third party will be shared by university and university inventor(s) using the following calculation: university inventor(s) or their heirs and legatees will receive forty per cent of the net income; the remaining sixty per cent of the net income will be the property of university and will be distributed in accordance with the distribution schedule below. Distribution schedule |
University inventor(s) research account | University inventor(s) college | University inventor(s) department | University |
10% | 5% | 5% | 40% |
Will be used solely to support the ongoing research of the inventor(s) | Will be used by the dean(s) of the college(s) in which inventor(s) has (have) primary appointment | Will be used for departmental purposes by the chair(s) of the department(s) in which inventor(s) has (have) primary appointment | Will accrue to university |
Ohio Admin. Code 3364-70-04
Effective: 3/23/2018
Promulgated Under: 111.15
Statutory Authority: 3364
Rule Amplifies: 3364