Ohio Administrative Code
Title 3361:10 - University of Cincinnati
Chapter 3361:10-19 - Patents and Copyrights
Section 3361:10-19-01 - Patents and copyrights: Policy on inventions and discoveries
Universal Citation: OH Admin Code 3361:10-19-01
Current through all regulations passed and filed through September 16, 2024
(A) Preamble.
As an institution of higher learning, the university of Cincinnati is concerned with learning and teaching -- with study and research on one hand and with communication of what is learned on the other. Without intending to narrow the pursuit of research to only the pursuit of patents, the university believes it has a responsibility to:
1. Encourage innovation.
2. Promote the use of inventions and
discoveries for public good.
3.
Provide for equitable distribution of income, if any, resulting from invention
and discovery between the university and an investigator.
In recognition and furtherance of the above objectives and consistent with section 3345.14 of the Ohio Revised Code, the university of Cincinnati sets out the following policy and procedures regarding inventions and discoveries.
(B) Applicability.
This policy applies to all discoveries, inventions or patents that result from research or investigation conducted by:
1. Any person, whether employee, student or
volunteer, in any experiment station, bureau, laboratory, research facility, or
other facility of the university or with funding, equipment, or infrastructure
provided by or through the university; or
2. An employee of the university acting
within the scope of his or her employment, regardless of the location of the
research or the nature of the funding, equipment or infrastructure used.
Any such discovery, invention or patent shall be defined as a "university invention."
Students play an important role in innovation at the university and the university recognizes that inventions may result from student coursework. A student who was not performing work for the university and did not make significant use of university resources in developing the invention may request that the university release its rights in the invention and assign the rights to the student. Significant use of university resources does not include a student's use of resources to fulfill course requirements, nor does it include nominal or incidental use of resources, including the use of routinely available office equipment, assigned office space, desktop and laptop computers, telephones, library facilities, and copiers.
(C) Rights and obligations of the parties.
In accordance with section 3345.14 of the Revised Code, all rights to and interests in university inventions shall be the sole property of the university of Cincinnati. All such rights and interests may be licensed, transferred, assigned, sold or otherwise disposed of, in whole or in part, in accordance with the university's contracting procedures.
1. Inventor obligations and rights.
a. Obligations:
i. To report promptly to the office of
innovation all university inventions. The
inventor makes this report by completing and submitting the appropriate
disclosure form.
ii. To
assign all rights, title and interest in the university invention to the
university.
iii. To cooperate:
a. In executing declarations, assignments, or
other documents as may be necessary in the course of invention evaluation,
patent prosecution, or protection of patents or analogous property rights, to
assure that title in such inventions shall be held by the university or by such
other parties designated by the university as may be appropriate under the
circumstances.
b. In any litigation
, dispute or controversy that arises out of, or is related
to the
university invention.
c. In reasonable marketing efforts related to
the invention or discovery.
d.
In providing any information, data, knowledge related
to the invention or discovery, necessary for the university to evaluate the
commercial potential of, the university's rights in, the protectablility of,
and the technical feasibility of the university invention or discovery.
iv.
To execute an agreement acknowledging an obligation to
execute all papers necessary to obtain appropriate legal protection for the
university invention or discovery.
b. Rights.
i. disclosure to the university of a
university invention, to receive notice within a reasonable time of the
university's intention to file or not to file a patent application or to
otherwise retain title to the university invention.
ii. To receive a share of any royalties or
licensing fees and any stock or other ownership interests received for the
university invention according to the schedules contained in paragraphs (E) and
(F) of this rule.
iii. To receive
title to any university invention for which the university chooses not to
retain title, subject to the following conditions:
a. The university retains a royalty-free,
perpetual non-exclusive license to make, have made, and use the invention and
any improvement thereon for research and educational purposes;
b. The transfer of title complies with any
overriding obligations to outside sponsors of research including federal agency
approval when required by law; and
c. In the case of multiple inventors, all the
inventors having reached a written agreement as to the disposition of
title.
iv. To the right
of timely publication of their findings consistent with any applicable
licensing agreement. Delays over ninety days in length shall require inventor
approval.
2.
University's obligations.
a. To keep the
faculty, staff and students apprised of the university's policy on inventions
and discoveries through means that include a web site containing links to
relevant university rules and any associated commentary and forms.
b. After a university invention is reported,
to act in a timely manner to determine whether the university chooses to retain
title and/or to determine whether a patent application should be filed and to
inform the university contributors of its determination.
c. For any university invention subject to
the Bayh-Dole Act, to inform the inventor of the university's election to take
title from the sponsoring agency.
iv. To
distribute any royalties or licensing fees and any stock or other ownership
interests received for a university invention according to the schedules
contained in paragraphs (E) and (F) of this rule.
v. To assign to the inventor title to any
university invention for which the university chooses not to retain title
subject to the conditions set forth in paragraphs (C)(1)(b)(iii)(a) through
(C)(1)(b)(iii)(c) of this rule.
(D) Administration.
1. The office of
innovation shall have overall responsibility for
administration of the university's patent program, including assuring that
valuable property rights are not lost
by the university. Specific responsibilities of
this office, which may be delegated to a patent officer, shall be to:
i. Act upon recommendations of the university
intellectual
property committee and equity committee.
ii. Authorize commitment of resources
necessary to carry out intellectual property committee and equity committee
recommendations.
c. Annually, or at such other
intervals as the board shall direct, provide the board with a summary report of
the university's patent, equity and licensing activity or other contracts or
actions approved under this subparagraph, including total revenues derived from
all outstanding technology transfer contracts for the period covered by the
report as well as current problems, issues and trends.
d. Function as a contact point and resource
with regard to university patent policy and procedure.
e. Receive reports of all university
inventions.
f. Exercise
responsibility for assessing the commercial potential of inventions and
discoveries.
g. Control the
preparation and prosecution of patent applications and maintenance of any
issued patents on inventions and discoveries governed by this policy,
in collaboration with the office of general counsel as
appropriate.
h. Exercise
responsibility for marketing inventions and discoveries.
i. Approve terms for licensing, sale,
assignment, transfer or other disposition of the university's intellectual
property rights in inventions, discoveries, and patents.
j. Exercising the voting rights associated
with any equity held by the university in entrepreneurial projects or legal
entities formed in connection with entrepreneurial projects as permitted by
this rule.
2.
There shall be established a university intellectual property committee, which
shall report to the
chief innovation officer or his/her
designee. The committee shall be composed of five members, three
appointed by the
innovation officer or his/her
designee, and two appointed by the chairperson of the university faculty,
and shall be chaired by one of the members selected by the
innovation officer or his/her designee in consultation
with the chairperson of the faculty. Specific functions of the intellectual
property committee shall be to:
a. Provide
advice, as requested, to the
chief innovation officer or his/her
designee as to whether the university should:
i. Prepare and prosecute a patent application
on a university invention.
ii.
Determine if a reported invention or discovery falls outside the scope of this
policy (i.e., is not a university invention).
iii. Claim copyright in works with respect to
which the university has ownership rights, as provided in rule
3361:10-19-02
of the Administrative Code.
iv.
Surrender all university rights in a work to the author, as provided in rule
3361:10-19-02
of the Administrative Code.
v.
Waive some or all university rights in a university invention to the
inventor(s).
b. Act as a
fact-finding body and make recommendations to the
chief innovation officer or his/her designee on any
disagreements arising out of the administration of the university's patent and
copyright policies.
3.
Once a patent is obtained, disputes between the inventor and the university
which cannot be resolved by the university intellectual property committee,
shall be resolved by a committee consisting of five members, the inventor and
the intellectual property committee each selecting two members, with the fifth
member, who shall be the chairperson, being selected by the four members so
chosen.
4. There shall be
established a university equity committee, which shall report to the
chief innovation officer or his/her designee. The
committee shall be composed of three members,
a member
appointed by the chief investment officer of the university, a member
appointed by the senior vice president for administration and finance, and a
member appointed by the
chief innovation officer or his/her designee from the
office of innovation. The
chief innovation officer shall
select one of the members to serve as chair of the committee. Specific
functions of the equity committee shall be to:
a. Make recommendations to the
chief innovation officer as to whether the
university should accept equity in an entrepreneurial project (as defined in
section 3345.36 of the Ohio Revised
Code) or legal entity formed in connection with an entrepreneurial
project.
b. Make recommendations to
the
chief innovation officer as to when equity held
by the university in an entrepreneurial project or legal entity formed in
connection with an entrepreneurial project should be sold.
c. Assist the university in implementing and
adhering to the equity acquisition policy, which shall
be developed and administered by the chief innovation officer.
d. Make recommendations to the
chief innovation officer on any proposed
modifications to the equity acquisition policy.
e. Act as a fact-finding body and make
recommendations to the
chief innovation officer on any
disagreements arising out of the administration of the university's equity
acquisition policy.
(E) Royalties.
1. "Net royalties" shall be defined as gross
royalties or other payments, such as option payments, received by the
university minus the sum of:
a. any royalty shared with other entities
(e.g., as required by an agreement with a funding source or as the result of an
inter-institutional agreement with a co-owner of the university
invention) and
b. any fees or costs directly attributable to the
university invention being licensed. Examples of such direct fees are patent
filing fees, fees for patent searchers and legal advice, fees arising out of
litigation, or marketing costs. Indirect university overhead and other
university costs normally associated with the operation of a university and not
directly attributable to the university invention shall not be deducted from
gross royalties or otherwise allocated to costs or fees associated with the
university invention.
2.
For all university inventions for which the university receives royalties, the
royalties received by the university shall normally be distributed as set forth
in paragraphs (E)(2)(a) through (E)(2)(c) of this rule:
a. Zero dollars to two hundred and fifty thousand dollars total net
royalties:
Sixty per cent to the inventor
Fifteen per cent to the department
Five per cent to the college
Twenty per cent to the university
b. On
total net royalties in excess of two hundred and fifty thousand dollars
Thirty percent to the inventor
Thirty percent to the department
Twenty percent to the college
Twenty percent to the university
3. Any net royalties received by the
university, department or college shall be administered by the office of the
innovation and shall be used to support
scientific research and education.
4. If there is more than one inventor, the
university shall distribute the inventors' share of any net royalties in
accordance with their mutually agreed apportionment. In the event the inventors
are unable to reach a mutual agreement on apportionment, the university shall
distribute the inventors' share of any net royalties equally among the
inventors. College and department share of any net royalties will be
apportioned in accordance with the percentage distributions allocated to the
inventors who are associated with the participating colleges and
departments.
(F) Equity.
1. "Equity" shall be defined as stock or
other ownership rights in an entrepreneurial project or legal entity formed in
connection with an entrepreneurial project received by the university in return
for the grant of rights to a university invention. "Equity" shall be defined to
not include stock or other ownership rights received in return for the
investment of money. "Net equity" shall be defined as gross equity received by
the university minus any equity shared with other entities (e.g., as required
by an agreement with a funding source or as the result of an
inter-institutional agreement with a co-owner of the university
invention).
2. For all university
inventions for which the university agrees to receive equity, the equity
received by the university shall normally be distributed as follows:
Thirty per cent of net equity to the inventor
Thirty per cent of net equity to the department
Twenty per cent of net equity to the college
Twenty per cent of net equity to the university
3. The distribution of net equity
must be in accordance with the university equity acquisition policy.
4. Any net equity received by the university,
department or college shall be administered by the office of
innovation and shall be used to support
scientific research and education.
5. If there is more than one inventor, the
university shall distribute the inventors' share of any net equity in
accordance with their mutually agreed apportionment. In the event the inventors
are unable to reach a mutual agreement on apportionment, the university shall
distribute the inventors' share of any net equity equally among the inventors.
College and department share of any net equity will be apportioned in
accordance with the percentage distributions allocated to the inventors who are
associated with the participating colleges and departments.
6. If equity is converted to cash prior to
the distribution of the inventor's share of net equity, the university shall
distribute cash proceeds in accordance with the schedule set forth in paragraph
(E)(2)(a) through (E)(2)(c) of this rule.
(G) Research agreements involving patent rights.
It is not uncommon for university investigators to conduct research that is funded by private industry and/or foundations. It is also not uncommon for investigators to conduct research in cooperation with colleagues at other universities. The university recognizes that to continue these relationships it must be willing to consider a variety of contractual terms and conditions. In order to protect the academic freedom tradition within the university, to assist investigators in evaluating proposals and to protect the university's interest in university inventions, the following policies shall apply to these relationships:
1.
For the purpose
of assuring any rights the university may have and may choose to retain in
university inventions are appropriately protected, all agreements with
private industry, with foundations or with other universities utilizing
university resources to conduct research shall be reviewed by the office of
innovation in
coordination with other institutional representatives, as
appropriate.
2.
The university shall protect the right to publish as
provided in rule
3361:10-30-02
of the Administrative Code.
3. Normally, title to all documents, records,
notebooks and other repositories of information from research shall be held in
the name of the university as described in rule
3361:10-43-18
of the Administrative Code.
4. The university shall agree that
proprietary information received from a private entity remains the property of
that entity. However, written agreements shall provide for clear designation of
information that is considered to be proprietary in nature.
(H) Operational entities.
The operational entities responsible for implementing this policy shall be the office of innovation, the chief innovation officer or his/her designee, the university intellectual property committee, and the university equity committee.
Disclaimer: These regulations may not be the most recent version. Ohio may have more current or accurate information. We make no warranties or guarantees about the accuracy, completeness, or adequacy of the information contained on this site or the information linked to on the state site. Please check official sources.
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