Error: no such theme PatternSkinTheme

A Prospective Patent Policy

Although Grinnell College has an excellent informal policy on intellectual property (approximately, if you make it, you own it), and supports that informal policy with a supportive copyright policy, Grinnell lacks a formal patent policy. This document represents our best efforts to provide a prospective patent policy for the College.

The policy applies to work created by faculty, staff, and students at the College, using the resources of the College and, potentially, other resources, such as federal funding.

Purposes of the policy

This policy is intended to serve a number of purposes.

First, and most importantly, the policy provides incentives for research, development, and innovation. Such incentives will lead to progress not only within the College community, but also within other communities that are affected by the invention. Through such inventions,, Grinnell College will better fulfill its goals of educationally and morally advancing the world.

Second, a formal policy clarifies Grinnell's informal practices, reducing the possibility of misunderstanding or disagreement on the ownership of materials. By making it clear who receives what benefits, and who is responsible for what costs in various situations, the policy encourages appropriate choices. In keeping with the College's goal of self-governance, the patent policy will make every effort to give ownership of and benefits in an invention to the inventor or inventors.

Third, the policy meets the requirements of 37 CFR 401, which specifies that institutions that receive federal funding for projects shall have a patent policy that includes disclosure requirements.

The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract[.] [37 CFR 401.414 (f) (2)]

By having such a policy, we protect our inventors and ensure that the government will not exercise March In rights for failure to disclose.

Finally, the policy serves the College's educational goal by informing its community about the value of patents and the requirements of the law.

Background

U.S. Patent Law

In the United States, patent law stems from text in Article I, Section 8 of the Constitution: [The Congress shall have the power] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.. U.S. Patent law reflects the founders' goals of bettering society by granting such rights. Patents provide legal protection to the inventors, giving them encouragement to continue research and development, and ultimately allow the creator to profit from their invention. Patents foster innovation not just through these rewards, but also by encouraging others to find novel approaches to problems solved by patented inventions. Patents also serve society in that requirements include a clear description of the invention, a description which is available to all.

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO, 2008). There are three types of patents. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant (USPTO, 2008).

Patents are in place so the creator of the invention receives exclusive rights to the invention, basically meaning that others cannot recreate or sell said invention without permission. These patents will last a total of twenty years, with a fee to register the patent and additional fees to keep it “active” at 3 1/2, 7 1/2 and 11 1/2 years after the date the patent was granted (USPTO, 2008). After the twenty years have passed, anyone may use the product that was patented without needing to get permission or pay royalties.

The Bayh-Dole Act

The Bayh-Dole Act, adopted in 1980, and now incorporated in 35 USC 18 and 37 CFR 401, gave universities and other institutions that received federal research funding control over their own inventions. Like the patent law it affected, the intent of this act was to encourage invention and dissemination of inventions. Prior to the enactment of the act, the Government owned patentable inventions. Analyses suggested that few of these inventions were widely disseminated and that not all patentable results were shared. By giving ownership to institutions, the act encourages not only invention, but the marketing of those inventions.

However, the act has requirements that must be met in order for the inventions to remain in the institution.

The Bayh-Dole Act states that each university that receives federal funding has to report periodically to the funding federal agency its progress on funded research. It also states that they must file for patents for each subject invention before any statutory bar date that enables this invention to go public and to report any patentable invention to the government within a reasonable amount of time or the government may receive the title to said invention. On the patent application, the institutions must also include a statement specifying that the invention was made possible with government support and that the United States government will have a nonexclusive, nontransferable, irrevocable, paid-up license to use the subject invention. The Bayh-Dole Act also requires funded institutions to map up a new contract with the federal agencies two years after each patent is realized to decide who would then own the subject invention. Finally, the institution must share royalties with the inventor and give preference to United States industries when they license the subject invention.

In order to be in compliance with the Bayh-Dole Act, our institution must have a patent policy.

Policies

Applicability

These policies apply to inventions created by students, staff, and faculty. In cases of inventions that involve multiple inventors, the inventors are responsible for determining the relative shares of the inventors.

Ownership and Responsibilities in Inventions

The ownership in, and responsibilities for, inventions created at the College depend on the funding and resources used for the invention.

1) Inventions that do not stem directly from federally-funded projects or from other sources of external funding. Such inventions are the property of those who create them, even if the inventions relied on the resources of the College in their development. Inventors are responsible for the costs of patenting, protecting, and marketing the invention.

2) Inventions that stem directly from federally-funded projects. The ownership of such inventions must be transferred to the College, which will be responsible for the costs of patenting, protecting, and marketing the invention. Inventors will receive 50% of the net proceeds from the invention. If the College chooses not to market the invention, ownership of the patent and responsibility for protecting the patent will revert to the inventor or inventors. In all cases, the inventors will retain rights to use the invention in their own work.

Patent law permits the U.S. Government to claim some inventions that stem directly from federally-funded projects. In such cases the policies of the Government will determine what compensation, if any, the institution and the inventors will receive. The institution and the inventor or inventors will evenly split such compensation.

3) Inventions that stem directly from projects funded by other agencies. Ownership in such cases will depend on the rights specified by the funding agency. In contracting with funding agencies, the College will make every reasonable attempt to ensure that such inventions remain the property of the inventor, as in clause 1 above. However, reporting requirements for inventions that stem from external funding shall be identical to those of inventions that stem directly from federally-funded projects.

Reporting requirements

35 USC 18 and 37 CFR 401 require that the institution notify funding agencies promptly of potential inventions. The College's arrangements with other funding agencies may also require prompt notification. Under 36 USC 18 and 37 CFR 401, if the institution does not promptly notify funding agencies, the Government has increased rights to claim the invention. Hence, for the protection of the inventor or inventors and the College, creators of potentially patentable inventions must notify the College of such inventions using the "Report of Potentially Patentable Invention" form. The College will keep a record of these forms and will forward information promptly to funding agencies when it is appropriate to do so.

Other Responsibilities

In cases of non-federal externally-funded projects, the College must inform any students, staff, or faculty working on the project of the ownership rights that will or will not be granted to inventions that stem from the project.

In cases of student-faculty research that leads to inventions, faculty must inform students of this policy and should discuss in advance potential arrangements for ownership.

In compensation for the efforts expended upon this document, 1% of the College's net proceeds from any College-owned invention will be placed in a fund, designated the "Rebelsky Tutorial Fund" for use in supporting activities that involve past, current, and future members of Tutorials led by Samuel A. Rebelsky. If Professor Rebelsky no longer teaches at Grinnell, that fund will be available for all Tutorials at the College.

Forms

These forms are not yet available. The notes below describe the primary goals and contexts of the forms.

Assignment of Potential Patent Rights

This form is required of all those working on federally-funded projects and those working on externally funded projects that do not leave ownership of inventions to the College. Those working on such projects are expected to sign this form before beginning work on the project. The form states that

  • The person has read and is familiar with the College patent policies
  • The person agrees to transfer ownership in any inventions created under this project to the College
  • The College bears responsibility for patenting the material and other legal fees
  • The College and the inventor or inventors will split net proceeds, with 50% going to the College and 50% to the inventor or inventors
  • The person agrees to notify the College (Dean of the College?) of any potential patentable inventions
  • The College agrees to notify funding agencies of potential patentable inventions

Notice of Potentially Patentable Invention

This form is required of all of those working on federally-funded or other externally-funded projects. All those who create potentially patentable inventions are encouraged to file one of these forms to keep a record of the invention.

Request for Return of Patent

To be filed by inventors in cases in which the College has not commercialized an invention whose rights have been assigned to the College.

Sources

37 CFR 401. Title 37--Patents, Trademarks, and Copyrights. Chapter IV-Assistant Secretary for Technology Policy, Department of Commerce. Part 401-Rights to Inventions Made by Nonprofit Organizaitions and Small Business Firms Under Government Grants, Contracts, and Cooperative Agreements. Available at http://www.access.gpo.gov/nara/cfr/waisidx_02/37cfr401_02.html and elsewhere.

University of California, Council on Government Relations. (1999). The Bayh-Dole Act: A Guide To The Law And Implementing Regulations. Retrieved from http://www.ucop.edu/ott/faculty/bayh.html

USPTO. (2008. What is a Patent? Retrieved from USPTO Website: http://www.uspto.gov/web/offices/pac/doc/general/index.html#top
Topic revision: r9 - 2010-12-08, SamuelARebelsky
 

This site is powered by FoswikiCopyright © by the contributing authors. All material on this collaboration platform is the property of the contributing authors.
Ideas, requests, problems regarding Foswiki? Send feedback