465 Patent Policy And Procedures

RATIONALE:  To inform all members of the Oakland University community of their responsibilities and rights when they have made an invention or discovery which may be patentable.

POLICY:  While it is recognized that the results of University research are, in the vast majority of cases, reported to the public through various professional channels, it is possible that some investigators may conclude that best use of their findings will require patenting.

The University has no desire to constrain investigators in the disposition of their inventions except where the University has an obligation to a third party under a grant or contract agreement.  In order to assure that its obligations are met in such cases, the University requires that all inventions emanating from Oakland University, regardless of the source of support, be reported in a prescribed manner in order that possible third-party proprietary interests may be identified. 

When any member of the University community (e.g., faculty, staff, student), in pursuance of his University duties, makes a discovery or invention which has some promise of patentability, he or she should promptly report the following information in writing to the Director of Research: 

1. Description of discovery;
   
   
2. Sources and amounts of external support, if any; and
   
   
3. Recommendation of inventor on the matter of patent protection.

The Director of Research has the responsibility for judging whether the investigator has any obligation to assign rights to an invention to any third party.  In cases in which a third-party interest is deemed to exist, the Director may be able to provide the inventor with assistance in obtaining patent releases, but because of the University's contractual obligations, any and all negotiations with third parties must be conducted through the Office of Research and Academic Development.

If it is determined that no third party has a proprietary interest in an invention (or the third party chooses not to exercise his right), the inventor will be free to dispose of his invention as he wishes.  Generally speaking, three options are available to him:

Option 1:  He may place the invention in the public domain by publishing his findings.  (An invention may be patented within one year after public disclosure.  Oddly enough, during this time, the right to file is not limited to the inventor.)

Option 2:  He may, on his own initiative, obtain patents on his invention and thereafter administer, dispose of, or license such patents in whatever manner seems to him to be appropriate.

Option 3:  He may ask the University to apply for a patent.  In this case, the University will normally turn to a non-profit patent management firm, such as Research Corporation, for advice and assistance.  If a patent is obtained, the inventor is to receive 35% of the gross licensing proceeds; the University 22.5%; and the non-profit patent management firm 42.5%, with the understanding that the non-profit firm is to pay all normal expenses of evaluating, patenting, and licensing the process or invention. Any unusual and special expenses connected with litigation on the validity or scope of the patent are to be deducted from the gross proceeds before any division only if the inventor and the University give their approval prior to the incurring of such expenses.  The University reserves the right not to seek a patent if the prospects for return are not favorable.  In that case, the inventor may elect Option 1 or 2.

Adopted by the Board of Trustees March, 1971.

SCOPE AND APPLICABILITY:    

DEFINITIONS:    

PROCEDURES:    

RELATED POLICIES AND FORMS:    

APPENDIX:    

2012