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.

      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

      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.