Current through all regulations passed and filed through September 16, 2024
(A) Patentable discoveries sometimes result
from research performed at Ohio university. It is the desire of the university
to be as helpful as possible in protecting the patent rights of the faculty and
researchers, students and employees, to the fullest extent compatible with the
public interest and the rights of the university. To this end the university
has set up a patents committee and has contracted for the patent management
services of the "Research Corporation" and of the "Battelle Development
Corporation" and has authorized the hiring of patent attorneys to file patent
applications.
(B) Section
3345.14 of the
Revised code, the state law governing
patent rights of Ohio university personnel states:
(1) "Rights to discoveries or inventions to
be property of university or center; disposition of income therefrom. All
rights to and interests in discoveries or inventions, including patents thereon
which result from research or investigation conducted in any experiment
station, bureau, laboratory, or research facility of any state college,
university, or agricultural research and development center shall be the sole
property of such college, university, or center. No person, firm, association,
corporation, or governmental agency which uses the facilities of such college,
university, or center in connection with such research or investigation and no
faculty member, employee, or student of such college, university, or center
participating in or making such discoveries or inventions, shall have any
rights to or interests in such discoveries or inventions, including income
therefrom, except as may, by determination of the board of trustees of college
or university, or by determination of the board of- control in case of such
center, be assigned, licensed, transferred, or paid to such persons or
entities. As may be determined from time to time by the board of trustees of
any state college, university, or by the board of control in case of the
agricultural research and development center, the college or university, or
center may retain, assign, license, transfer, sell, or otherwise dispose of, in
whole or in part and upon such terms as the board of trustees or board of
control may direct, any and all rights to, interests in, or income from-any
such discoveries, inventions, or patents which the college, university or
center owns or may acquire. Such dispositions may be to any individual, firm,
association, corporation, or governmental agency, or to any faculty member,
employee, or student of the college, university, or center, as the board of
trustees or board of control may direct. Any and all income or proceeds derived
or retained from such dispositions shall be applied to the general or special
use of the college, university, or center, as determined by the board of
trustees of such college, university, or by the board of control in the case of
such center. History: 129v1665, 1 (effective October 26, 1961); 131vII 64, 1,
effective July 28, 1965."
(2) The
board of trustees of Ohio university, on April 17, 1962, authorized the
president of Ohio university, "to assign, license, or transfer to any
government agency furnishing funds for research and investigation, any
discoveries or inventions including patent rights thereon, resulting from
investigation, or research supported in whole or in part by the said government
agencies, providing the president finds it advisable to assign these patent
rights in order to obtain the contract", and on January 29, 1965, "to assign,
license, or transfer to any individual, firm, association, corporation, or
governmental agency furnishing funds for research and investigation, any
discoveries or inventions including patent rights thereon, or any portion of
patent rights, resulting from investigation, or research supported in whole or
in part by said individual, firm, association, corporation, or governmental
agency, providing the president finds it advisable to assign these patent
rights or portion of the patent rights in order to obtain the
contract".
(C) For
purposes of classification under this policy, the following types of research
and development efforts are recognized.
(1)
Wholly supported by Ohio university as to time, facilities and
equipment.
(2) Partly supported by
Ohio university as to time and/or facilities and/or equipment.
(3) Not supported by Ohio university as to
time or facilities.
(4) Government
supported contract research and development.
(5) Government and university jointly
supported contract research and development.
(6) Privately supported- contract research
and development.
(7) Jointly
supported by Ohio university and private sources.
(8) Government supported grants.
(9) Private grants.
(10) Ohio university supported
grants.
(11) Other.
(D) The rights of the inventor in
each of the support situations outlined in three above shall be determined as
follows:
(1) When support is wholly by Ohio
university, the university shall at its option, process the discovery through
its patent management agencies, or through other agencies not specified in
paragraph (A) or permit the
inventor to process his discovery or publish it to safeguard the public
interest.
(2) When Ohio university
support has been fifty per cent or more or over two thousand dollars in fair value paragraph
(D)(1)(above) applies. Otherwise, as in paragraph (D)(3).
(3) When Ohio university has contributed
neither time nor facilities nor equipment the idea may, at the option of the
inventor, be submitted to the patent management agency with the stipulation
that action must be taken within six months or the invention will revert to the
inventor on his request. Otherwise, the idea is and remains the property of the
inventor. It is his prerogative to patent, sell, license, or otherwise utilize
as he may choose.
(4) Government
supported contract research shall be treated as in paragraph (D)(1) where the
contract permits and with such exceptions as are required by the
contract.
(5) As in paragraph
(D)(4)(above).
(6) As specified in
the contract.
(7) As specified in
the contract.
(8) As specified in
the grant.
(9) As specified in the
grant.
(10) As specified in the
grant.
(11) To be determined on the
basis of prior agreement and/or by action of the director of research in
consultation with the patent committee.
(E) The inventor's share.
(1) In cases covered by paragraph (C)(1) and
(D)(1) (above), if the university elects to have the invention processed by
either of its patent management agencies the inventor shall receive fifteen per
cent of the gross in case per cent of the net (fifty per cent of the university
share) in case "Battelle Development Corporation" is used. If the university
elects to act as its own patent management the inventor shall have the option
either to receive twenty-five per cent of the net returns after payment of the
cost of prosecuting domestic and foreign patents, the cost of work to develop
the invention and the cost managing the patent or fifteen per cent of the gross
royalties. If the university chooses to let the inventor process his own idea,
the inventor shall retain ninety per cent of the' net proceeds. If the
discovery or invention is processed by agencies not specified in
paragraph (A), fifty per cent of
the net proceeds to the university will constitute the inventor's share. If the
invention results in a joint disclosure by a member of the faculty and a
student, the royalty income due under one of the specified options shall be
divided two-thirds to the faculty member and one-third to the student unless
mutually agreed otherwise by the faulty member and the student.
(2) In the cases covered by paragraphs (C)(2)
and (D)(2)(above) the director of research will determine (and if necessary
submit to the patent committee for arbitration) the per cent of support from
Ohio university. The inventor shall in case "Research Corporation" handles the
patent, receive fifteen per cent of the gross plus a per cent of the proceeds
to the university corresponding to his share of the support as determined
above. If he bears the expense of processing, he shall receive ninety per cent
of the net after repayment of the university support. If the discovery or
invention is processed by agencies not specified in paragraph (A), fifty per cent of the net
proceeds to the university will constitute the inventor's share.
(3) In the case of no university support, as
in paragraphs (C)(3) and (D)(3)(above), if the inventor elects to use the
Research Corporation as patent management agency, he shall receive fifteen per
cent of the gross plus eighty per cent of the university share. If Battelle
Development Corporation's the agency he shall receive forty-five per cent of
the net. If he elects to process his own idea he shall receive one hundred per
cent (Ohio university will make no claims).
(4) These cases,
covered in paragraphs (C)(4) to (C)(10) and paragraphs (D)(4) to (D)(10)(above)
shall be determined by the contract or grant or by the appropriate
paragraph (E)(2), or (E)(3) where
the contract or grant permits.
(5) Cases falling
under paragraphs (C)(11) and (D)(11)(above) will be determined by action of the
director of research in consultation with patent committee.
(6) In all cases falling under
paragraphs (C) and (D) the inventor
or discoverer will receive one hundred per cent of any finder's fee offered by
the patent management agency.
(F) Administration of the patent policy.
(1) The control of patents is vested in the
board of trustees of Ohio university by law.
(2) In the board of trustees meeting held on
December 12, 1968 the following resolution was adopted:
"Whereas, section
3345.14 of the Ohio Revised Code
vests in the Ohio university all rights to and interests in discoveries or
inventions including patents thereon which result from research or
investigation conducted in any experimental station, bureau, laboratory or
research facility of Ohio university, and; Whereas, the board of trustees of
Ohio university deem it desirable to encourage members of the student body,
academic and administrative staff to engage in research and investigation,
and;
Whereas, the board-of trustees believes that such interest and
activity by members of the student body, academic and administrative staff can
best be encouraged by recognizing that the person responsible for the
development of a discovery or invention including patents thereon should
participate in the financial rewards incident to the development, sale,
assignment, transfer and/or distribution of the discovery or invention,
and;
Whereas, the board of trustees are aware that the research and
development projects of the university, its students, employees, agents and
representatives are numerous, and;
Whereas, the position of the director of research has been
established at Ohio university. Now, therefore, be it hereby resolved, that the
board of trustees hereby determines that it desires to encourage members of the
student body, academic and administrative staff in connection with their
research and development activities and desires to permit the assignment,
license, transfer or sale of rights and interests in the discoveries and
inventions including patents thereon that may result from the activities of
members of the student body, academic and administrative staff.
And be it further resolved, that the power, authority, and
responsibility of the board of trustees of Ohio university as defined in
section 3345.14 of the Ohio Revised Code
be and the same hereby is delegated and confided in the director of research of
Ohio university, subject, however, to the following:
(a) The developer, inventor or other person
either a member of the student body or on the academic or administrative staff
responsible for any discovery or invention including patents thereon shall have
a right of participation in the financial rewards incident to the sale,
assignment or license to use such discovery or invention including patents
thereon in some reasonable amount as determined by the director of
research.
(b) The Ohio university
shall retain a right of participation in the financial rewards incident to the
sale, license, assignment or transfer of rights to or interest in any
discovery, invention or patents thereon which may hereafter be developed by
members of the student body, academic or administrative staff.
(c) The director of research is hereby given
and granted the authority to contract with respect to, to sell, assign, license
or transfer rights in and to discoveries and/or inventions and the patents
thereon and to determine the division of the income or sale proceeds generated
thereby as between the university and the originator or inventor of the
discovery or patentable matter.
(d)
The director of research shall make a report to the board of trustees once each
calendar quarter in which he would set forth all actions by him taken or
authorized by him, pertaining to this grant of authority,' during the preceding
quarter and failure of the board of trustees to direct a revision, recision
amendment or other change in connection with the matters reported upon within
sixty days of the receipt of such report, shall cause the same to become
binding and obligatory upon the board of trustees of the Ohio university with
respect to the matters covered therein."
This resolution delegates to the director of research the
authority to negotiate and contract for the sale or licensing of inventions and
to determine the division of income between the university and the
inventor.
(3)
The director of research shall appoint a committee on patents consisting of
seven members, four from the faculty, one graduate student and two from
administration to study ideas for patentable, inventions and make
recommendations to the director of research.
(4) Disclosures must be submitted in writing
to the director of research and will be acknowledged in writing by him within
thirty days.
(5) At monthly
intervals after the submission of a disclosure, the inventor is to be informed
in writing by the director of research about the progress and disposition of
his idea. If the university takes no action within a six-month period the
invention shall become the property of the inventor.
(G) Personnel patent agreement. Each employee
of the university who is involved in a project that might become patented is
asked to sign an agreement embodying the patent policy of the university as
stated.
