Patent and Invention Policy, 1974-1998
Following is a copy of the current Northwestern University Patent and Invention Policy that was in effect from 1974 through 1998.
Patent and Invention Policy
Patentable discoveries or inventions occasionally result from research or educational activities performed at a university. Northwestern University desires to assure that all ideas and discoveries are properly disclosed and utilized for the greatest possible public benefit. The University also desires to protect the patent rights of the Northwestern University faculty, staff and student body, and to abide by patent regulations of agencies providing funds for sponsored programs. The following paragraphs present to the members of the Northwestern Community the University's policy on patents, inventions and discoveries.
The Northwestern University Patent Policy applies to all faculty, administrators, staff, students or other individuals who receive financial support from the University or who use University facilities or materials in the process of conceiving an idea, invention or discovery.
All faculty and research staff are required, as a condition of their employment, to sign a patent agreement assigning to the University their right to patents, inventions and discoveries covered under the above paragraph. Students engaged in research supported by federal or state funds, and students receiving payment by the University while engaged in research are also required to sign such a patent agreement.
The administration of this Patent Policy will reside in the office of the Vice President for Research. The Office of the University Attorney shall be consulted on all legal matters pertaining to this Policy.
IV. Faculty Patents Committee
A Faculty Patents Committee shall be appointed by the President of the University or his designate and will include five to seven faculty members, with the Vice President for Research an ex-officio member. A representative of the Vice President for Research and one from the Office of the University Attorney shall serve as non-voting members of the Committee. The Committee shall meet periodically upon call of the Chairman to review existing patent policy, to recommend any desired changes and to receive reports on the status of the patent portfolio. The Vice President for Research or his designate will present periodic reports on the status of disclosures and patent applications to the Committee for their review. When necessary, the Committee shall meet with the Vice President for Research or his representative if an inventor asks the Vice President for a review by the Faculty Patents Committee of decisions relating to, or policies affecting, his invention or discovery. The Faculty Patents Committee shall normally report its decisions to the Board of Trustees through the Vice President for Research.
All members of the Northwestern Community who are covered by this policy shall disclose the nature and detail of their invention or discovery to the Vice President for Research or his designated representative.
Within 120 days after such disclosure the Vice President for Research or his designate shall notify the inventor in writing whether or not it is the University's intention to retain its interest and to acquire assignment of all ownership rights to the invention or discovery. If such notification cannot be made during that time period, the inventor shall be notified as to the reason for the delay and the additional time necessary to make such determination by the University. The principles to be used in determining ownership rights are given in Section VI.
VI. Ownership Rights
Ownership Rights in the University
All inventions or discoveries shall be deemed of proprietary interest to Northwestern University if the inventor was employed or otherwise financially supported by the University or if he used University facilities, materials or time to conceive and develop the discovery or invention.
If the University decides not to request assignment of ownership rights, and there are no restrictions by the sponsor of the research, the University may release its proprietary interest to the inventor. Notification of such release will normally be made within 120 days of disclosure.
No Ownership Rights in the University
The ownership rights to a discovery or invention are considered to be exclusive property of the inventor if the University has contributed nothing substantial or essential to the conception of development of the discovery or invention in the way of funds, space, materials or facilities and the discovery or invention was conceived and developed by the inventor on his own time. Members of the Northwestern Community must be careful to avoid situations which would be considered conflicts of interest when entering into agreements for consulting or providing of services outside of the University which require the member to assign his ownership rights to the contracting agency. The Dean of the inventor's school and the Vice President for Research should be notified of any patents or inventions arising from such consulting agreements.
Determination of Ownership Rights
In cases where there is a disagreement between the inventor and the University as to ownership rights or the retention of such rights by the University, the Vice President for Research shall ask the Faculty Patents Committee to recommend to him the basis for a possible agreement between the inventor and the University. If such agreement with the inventor cannot be reached, the Faculty Patents Committee shall recommend to the Vice President for Research what further action the University shall take.
Ownership Rights in Sponsored Programs
In the case of programs sponsored by government agencies or private firms with which the University has negotiated a particular agreement regulating patents, inventions, licensing, etc., the regulations of that agreement will govern. For all federal agencies with which there is no such agreement, the University agrees to provide an irrevocable non-exclusive free license to the government for the use of patents arising from programs which they supported.
VII. Obtaining A Patent
If the rights to an invention or discovery are determined to belong to the University, the Vice President for Research or his designate will determine the desirability of acquiring assignment of such rights and filing for domestic (U.S.) or foreign patents. If the University decides to obtain a patent, one of the following alternatives, at the inventor's option, will be pursued:
- The University will provide the services of its patent attorneys as well as the services of patent development and promotional agencies, at the University's own expense.
- The inventor may, at his own expense, consult with any attorney of his choice or take any other steps he deems advisable toward obtaining and developing a patent. However, the ownership right of the invention and any patent obtained thereupon shall still reside with the University and the division of any proceeds shall be in accord with general University policy on patents.
In the event the University determines that it is not interested in filing for a patent, or if the University decides to terminate the application for a patent after initiating the application process, the inventor shall be notified as is noted in Section V and he may proceed to obtain his own patent, at his own expense.
VIII. Inventions or Discoveries Arising From Sponsored Programs
The University will review the rules and regulations of potential sponsors of research with regard to ownership rights and licensing of inventions, discoveries or patents either at the time that a proposal is submitted or prior to accepting an award from the sponsor. The University will perform this review with the following principles in mind:
- The project director is to have complete freedom to publish the results arising from the sponsored program;
- Any inventions, discoveries or patents arising from the program will be used in the public interest;
- The University shall retain ownership rights in any inventions, discoveries or patents arising from the sponsored project;
- All parties involved in the program, including the inventor, the sponsor and the University shall receive equitable compensation from any proceeds received from a patent or invention.
If, even after negotiation, the regulations of a potential sponsor are contrary to the University Patent Policy, the Vice President for Research will consult with the potential project director and, if the Vice President deems it advisable, with the Faculty Research Committee. After such consultation, the Vice President for Research will determine whether or not to accept the sponsorship of the research under those regulations.
IX. Development, Promotion and Licensing
In administering the patent portfolio of the University, the Vice President for Research shall act to bring to the public the inventions and discoveries in which the University has proprietary rights. In doing this he shall use whatever means seem best for appropriate development, promotion and licensing of each invention, consistent with the expressed goals of the Patent Policy.
The University is free to enter into agreements with any outside agent which it feels will successfully aid the University in developing inventions or discoveries, in obtaining patents, or in promoting or manufacturing inventions, provided that such agreements are consistent with this Patent Policy. If a particular invention or discovery is to become subject to such an agreement, this shall be made known to the inventor, who will also be notified about any rules governing the relationship among the outside agent, the University and the inventor due to such agreement. The University is free to enter into any licensing agreements which it deems are beneficial to the University, the inventor and the public in general, provided such agreements are not prohibited by a sponsoring agency's rules or regulations. Any terms governing the relationship among the licensee, the University or the inventor due to such licensing agreements shall be disclosed to the inventor.
X. Proceeds From Inventions And Discoveries
All income which the University derives from the licensing of inventions and discoveries will be appropriately used for the research and educational functions of the University. Of the net proceeds, 25% will be paid to the inventor, personally. If the inventor donates any portion to that 25% to the University for use in research by his department, center or program, the University will add an equal amount into that University research account from its portion of the royalty income; all such funds shall be used for non-recurring research expenses. All other proceeds will accrue to the University, with research funding as a primary goal for use of these funds.
If the invention or discovery is the result of sponsored research, and the sponsoring agency regulates the distribution of royalty income, such regulations shall apply rather than those in the above paragraph. Also, if such regulations apply because of development, promotion or licensing agreements with an outside agent, they shall take precedence over those of the above paragraph.
XI. Release of Patent Rights
The University, at its discretion and subject only to the restrictions of a sponsoring agency or a licensing agreement, may release a previously obtained patent to the inventor for promotion and development. In so doing the University will require that it recover any costs incurred in obtaining the patent or in subsequent promotions.
XII. Applicability of Policy
The policy herein declared may be changed or discontinued at any time by appropriately taken action of the Board of Trustees. Such changes or discontinuance shall not affect the rights accrued prior to the changes or alterations.