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
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.
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
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
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.
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
- 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.
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
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.
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
** 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.