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Northwestern University

Patent and Invention Policy, 1999-2011

Following is a copy of the current Northwestern University Patent and Invention Policy, effective as of January 1, 1999. The basic policy is essentially the same as the one that had been in effect from 1974 through 1998, but the formula for allocating proceeds from inventions and discoveries is now more favorable for inventors. In addition, the current policy has been broadened to cover all members of the University research community -- faculty, staff, and undergraduate and graduate students.

This policy was developed by INVO (formerly TTP) in conjunction with the Intellectual Property Committee and the Office of General Counsel. During the revision process, the committee examined the policies of 18 other universities and incorporated into the Northwestern policy the "best practices" identified in this review. The revision process also provided an opportunity to recognize the current role of INVO, which did not exist, as such, in 1974 when the old policy was written. The final policy was reviewed and endorsed by the Executive Committee members of the General Faculty Committee.

As has always been the practice of INVO and the Office for Research, the merits of individual cases will be considered to ensure that the policy is applied fairly and equitably.

Should you have questions regarding this policy, please contact Alicia Loffler at INVO, at 847-491-4647, e-mail a-loffler@northwestern.edu.

Northwestern University Intellectual Property Policies

I. Preamble

Creativity is evidenced in fields as diverse as science and technology, literature and the humanities, and the fine and applied arts; the discoveries resulting from creative work in these fields may represent valuable intellectual property. The University and its members have a common interest in protecting and capitalizing on intellectual property, using such legal vehicles as patents and copyrights that make possible the ownership and control of some creative works and that provide an incentive both to create such works and to make them public. The policies set forth in this document and in the current Northwestern University Copyright Policy, effective as of September 1, 2006 (collectively, the “Northwestern University Intellectual Property Policies”) are designed to encourage the creative endeavors of all members of the Northwestern University community; safeguard the rights and interests of all relevant parties, including the University; and facilitate the dissemination and use of the findings of academic research to the public benefit.

II. Applicability

Acceptance of the Northwestern University Intellectual Property Policies is a condition of employment or enrollment. The Northwestern University Intellectual Property Policies apply to all full-time and part-time faculty and non-faculty employees, students, and appointees or visitors who are funded by the University or who use University facilities or materials in the process of discovery or invention or in creating copyrightable materials.

These revised policies supersede previous policy and apply to all inventions, discoveries, or copyrightable materials disclosed to INVO on or after their retrospective effective dates regardless of when the discovery, invention, or copyrightable material was made; these policies will not be applied retroactively to any existing or pending patents, licenses, copyrights, or inventions disclosed to INVO prior to such date.

III. Administration

The President of the University has delegated to the Executive Director of INVO responsibility for administering this Patent and Invention Policy. The Executive Director develops mechanisms and procedures necessary to implement this policy and provides reports to the President annually. The Office of General Counsel is consulted as appropriate on legal matters pertaining to this policy.

The mission of INVO is to facilitate transfer of the University's innovative technologies for public use and benefit through licensing and other commercial agreements, including spin-off companies; to aid faculty, staff, and students in matters relating to the protection and marketing of intellectual property; and to provide an additional source of unrestricted income to support research and education at Northwestern.

Patent and Invention Policy

I. Preamble

Patentable inventions or discoveries may result from research or educational activities performed by members of the academic community. Northwestern University is committed to disclose and utilize ideas and discoveries for the greatest possible public good; to protect the rights of the University faculty, staff, and student body, as well as those of the institution itself; and to abide by the regulations of agencies providing funds for sponsored programs.

II. Applicability

Any invention or discovery by an individual who (1) made the invention or discovery within the normal field of his or her employment responsibility and activity with the University, without regard to location or salary source (specifically including individuals employed at affiliated hospitals and institutions), or (2) makes use of Northwestern University resources, except library, shall be subject to the provisions of the Northwestern University Patent and Invention Policy. Such an individual is hereafter referred to as "inventor."

III. Disclosure

United States patent law permits the filing of a patent application within one year of publication; however, under foreign patent law, any public disclosure disqualifies the invention or discovery from patent protection. Therefore, to protect academic priority as well as commercial priority, any inventor making any invention or discovery subject to this policy is encouraged to report it promptly in writing and in reasonable detail to INVO, preferably within 30 days of making the invention or discovery. Public disclosure of the research results may affect patent rights.

IV. University Ownership Rights

All inventions or discoveries to which this policy applies are owned by Northwestern University. The ownership rights to an invention or discovery are the exclusive property of the inventor if the University has contributed nothing substantial or essential (as, for example, funds, space, materials, or facilities) to the conception or development of the invention or discovery, and the invention or discovery is outside the scope of the inventor's normal field of employment responsibility and activity within the University. Where the University has entered into an agreement for a project sponsored by a government agency or private firm, the terms of that agreement will govern the disposition of patents and licenses.

Members of the Northwestern community who enter into consulting or other agreements with parties outside of the University that require assignment of ownership rights in intellectual property are cautioned that conflicting interests may arise. For guidance in these matters, refer to the University's Policy on Faculty Conflict of Commitment and Conflict of Interest or the Policy on Staff Conflict of Interest. The inventor's dean or center director and INVO must be notified of any patents or inventions arising from external consulting agreements.

Where there is disagreement among the inventors or the inventors and the University as to ownership rights or the retention of rights by the University, the Executive Director shall ask the Intellectual Property Committee to review the case and provide a recommendation, with supporting rationale, for resolving the disagreement. Conflicting interests will be adjudicated and, where necessary, resolved by the Steering Committee, chaired by the President.

Disagreements between inventors as to ownership rights will be resolved by the Executive Director.

V. Obtaining a Patent and Release of Intellectual Property Rights

Following disclosure of an invention or discovery to the University by the inventor, INVO makes reasonable efforts to determine the potential commercial use and patentability of the invention or discovery and seeks to make such contractual arrangements as may be appropriate for development of commercial use. When, in the judgment of the University, there appears to be sound basis for proceeding, the University will apply for a patent at no expense to the inventor. The University owns the invention and any patent obtained. The inventor is expected to cooperate and participate in obtaining patent protection, including signatures on appropriate documents. If the inventor consults with another patent counsel, he or she must bear all of the expense, realizing that final responsibility for prosecution rests with the University.

If the University does not file a patent application, INVO will so notify the inventor, preferably within 180 days from full disclosure of the discovery to the University, and the University will release its rights in the invention or discovery to the inventor. The inventor may elect to seek a patent or to continue prosecution at his or her own expense. If the University desires to terminate the application for a patent after initiating the application process, INVO will so notify the inventor, and the University will release its rights in the invention or discovery to the inventor, subject to the inventor's agreeing to reimburse the University for any costs incurred by the University in obtaining, maintaining, or marketing the patent before its release to the inventor. Such reimbursement is payable from proceeds received by the inventor from the invention, whether by license, sale, or otherwise. If the inventor declines to accept the patent, the University, at its discretion, may abandon the property at no cost to the inventor.

VI. Inventions or Discoveries Arising from Sponsored Projects

The intellectual property terms of all research agreements are governed by the following principles.

  1. The investigator is free to publish or present the results of a sponsored project, subject only to contractually agreed upon delays to permit the sponsor to review the proposed publication or presentation for the use of the sponsor's confidential information and the inclusion of patentable information.
  2. In those cases where the University agrees to respect the proprietary nature of a sponsor's data disclosed to the University for certain limited purposes, all persons working on the project (faculty, staff, and students) are required to treat the sponsor's data as confidential.
  3. Any inventions, discoveries, or patents arising from the sponsored project will be used in the public interest.
  4. The University owns all inventions and discoveries made by Northwestern researchers arising from gifts or sponsored projects.
  5. As outlined in Section VIII below, the University and the inventor share in the net income received from intellectual property developed under the agreement.

If the proposed contractual requirements of a sponsor are contrary to the University's patent policy and cannot be reasonably negotiated, the Vice President for Research and Executive Director shall jointly determine whether to accept the proposed sponsorship.

Tangible research property (TRP) includes, but is not limited to, materials, computer software, computer databases, prototype devices or equipment, engineering designs or drawings, integrated circuit chips, and audiovisual works. TRP created by investigators in the course of their research is owned by the University, except in certain cases of computer software, which will be decided on a case-by-case basis. TRP may be distributed for non-commercial research purposes to academic institutions or to companies. TRP also may be commercialized through license agreements, even though not protected by patent. Any revenue collected from the commercial license of TRP is distributed according to the provisions of Section VIII.

VII. Development, Marketing, and Licensing

The primary mission of INVO is to bring to the public the inventions and discoveries owned by the University, using whatever means seem best to develop, market, and license or otherwise commercialize each invention, consistent with the provisions of this policy. The University may enter into agreements with outside agents to assist in developing inventions or discoveries, in obtaining patents, or in promoting or manufacturing inventions, provided that such agreements are consistent with this policy. If a particular invention or discovery becomes subject to such an agreement, the inventor will be notified about the agreement and any terms governing the relationship between the outside agent and the University.

The University may enter into any licensing agreements deemed beneficial to the University, the inventor, and the public in general, provided such agreements are not prohibited by a sponsor's rules or regulations. Any terms governing the relationship between the licensee and the University due to such licensing agreements are made in consultation with the inventor.

As a general policy, the University does not sell or assign patent rights.

Agreements with companies may involve equity participation by the University and/or the inventor. Equity includes stock, stock options, warrants, and other non-cash consideration. The University and the inventor are responsible for negotiating their respective equity positions. Management of the University's equity share is the joint responsibility of the Vice President for Investments, and INVO .

VIII. Proceeds from Inventions and Discoveries

If there is more than one inventor, the applicable royalty percentage will be divided equitably among the inventors. Their departments and schools or divisions will also divide the applicable percentage equitably. The Executive Director retains the right to review the distribution and mediate among the parties.

The allocation formula recognizes all forms of cash payments, including royalties and various fees from licensing. After subtraction of certain costs as outlined below, a percentage of the proceeds that the University receives from the licensing of inventions and discoveries will be paid to the inventor, the inventor's department, and the inventor's school, as specified below. INVO will oversee the distribution of such funds according to a plan developed in consultation with the inventor and will provide an accounting to the inventor and the inventor's department and school on an annual basis.

A deduction of 20% to cover the operating expenses of INVO, including legal expenses for patent filing and prosecution and for marketing of the new technologies will be taken annually from the gross license revenue, followed by a deduction for any direct assignable expenses, like patent fees, for the specific case. Income then remaining is the net income, which is distributed as follows.

  1. Thirty percent (30%) of the net income to the inventor.
     
  2. Twenty percent (20%) of the net income to a University account for the inventor to support the inventor's research. Should the inventor leave the University, this amount remains with INVO. In no instance will this amount be transferred to an account of the inventor's designee.
     
  3. Ten percent (10%) of the net income to the department or departments in which the inventor serves.
     
  4. Five percent (5%) of the net income to the school or center in which the inventor serves.
     
  5. Thirty-five percent (35%) of the net income to the Central Administration. 

If the invention or discovery is the result of sponsored research and the sponsor regulates the distribution of income, such specific regulations shall take precedence over University policy with respect to distribution of the license revenue.

With respect to any patent matter in which another institution or an outside agency shall share in the income derived from the patent rights, distribution of income shall be made first to the other institution according to agreed-upon terms, and then to the inventor according to this policy.

Composition and Functions of the Intellectual Property Committee

The Intellectual Property Committee is appointed by the President of the University, or the President's designee, and includes five or more faculty members; the Vice President for Research and the Executive Director are ex-officio members. Legal counsel to the Committee is provided by the Office of General Counsel.

The Committee meets periodically upon call of the Executive Director to review existing patent and copyright policies, to recommend any desired changes in the policies or functioning of INVO, and to receive reports on the status of the patent portfolio and the copyright program. The Executive Director will present periodic reports on the status of disclosures and patent applications to the Committee for review. The Committee shall meet with the Executive Director to render an opinion should an inventor or author ask for a review of decisions relating to, or policies affecting, an invention, discovery, or creative work.

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