Implementation Guidelines on Patents

Objectives

1. to enable and encourage the free expression of ideas and dissemination of scholarship and research;
2. to protect the artistic and legal rights of individual authors and inventors;
3. to protect the university's assets and imprimatur;
4. to establish procedures for the sharing of income between the author, the inventor, and the university where university or third-party sponsorship is involved; and
5. to maintain all the rights, privileges, and self-determination provided by the policies of the university.

Patents

1. Patent Guidelines

It is the policy of the university to encourage research and related scholarship. The conduct of such activity is deemed to be in the public interest; in the course of so doing it is assumed that discoveries of a patentable nature may be made. Whenever a development is made that is believed to be patentable, the university should take action to assure that the patentability is in the best interest of the public, the inventor, the institution, and any third-party sponsors who have been involved in the process.

Employees are expected to disclose to the university all patentable discoveries or inventions made by them using the Invention Disclosure Form during the course of their employment at the university. Moreover, in the event that university support in the form of financial assistance or the use of physical facilities is provided, the university may have equity in any income derived from such activity. In all cases, it is presumed that the university has responsibility to assure that a patentable discovery made by its employees is made available to society in an expeditious manner.

The following policies should guide the process of seeking patents for developments made by university employees:

1. In all cases, agreements should be negotiated in advance among the university, the inventor, and any third parties involved in support of the research. Such agreement will define the conditions for proceeding with the patent process and for the distribution of any income.
   
   
2. Involved university units should negotiate in advance of the development of a written patent agreement to determine the sharing of patent, revenue, costs, and marketing. The recovery of residual income should be based on the percentage of support initially provided by the involved university unit.
   
   University income from commercial exploitation of patented discoveries should be directed to support of faculty research and development activities, and institutional support. The President will report annually to the Faculty Senate concerning the magnitude and use of such funds.
   
   
3. In the event of third-party support involving third-party requirements for patent provision, the university should assure compliance by its employees.
   
   
4. It is the policy of the university to announce in all proposals for sponsored research the following: The university reserves the rights to patents resulting from this proposed work in accordance with EM 83-08.
   
   This reservation may be waived, where third-party policy requires, by approval of the Provost.

2. Patent Procedures

In the event of a discovery deemed suitable for patent and where previous agreement has not been made, the inventor has three options:

1. The inventor may request permission to pursue the patent on his/her own initiative; such requests must be made to the Associate Vice President for Research, who should refer them to the Committee on University Copyright and Patent Policy. The inventor should demonstrate that university support or third-party obligation was not significant. The request should be approved by the President.
   
   
2. The inventor may enter into negotiation that should allow the university or the University Foundation, on behalf of the institution, the inventor, and any third-party supporter, to determine the patentability and potential public use and administration of any patents obtained. Such requests should be submitted to the Associate Vice President for Research, and may be referred to the Committee on Copyright and Patent Policy for recommendations prior to forwarding to the Provost for transmittal to the President for final approval.
   
   
3. The inventor may request the Associate Vice President for Research or the Committee on University Copyright and Patent Policy to review the advisability of taking no legal action toward patent and that the findings be published as a matter of public information. If approved by the President, the invention will be considered in the public domain and there will then be a statutory bar against obtaining a patent on the invention.

3. Patent Definitions

1. Patents - the term patent should herein include inventions, patents, and licensing.
   
   
2. Inventor - an inventor is one or more individuals who singly or as a group produces a patentable product.
   
   
3. Contractual Agreement - a contractual agreement is any enforceable agreement between the university and other parties.
   
   
4. Special University Support - special university support should be considered as the use of funds administered by authority of the university, regardless of source; the use of university physical facilities or equipment; or anything defined by contractual arrangement between the inventor and the university. The use of faculty offices, under normal conditions, should not be construed as "the use of university resources" for the purposes of patent control.
   
   
5. University Name - the university name should be used as follows: Patent (year) California State University, Chico. All rights reserved.
   
   In the event of assignment to the University Foundation the pursuit of patent rights on behalf of the university, the name used should be: Patent (year) University Foundation, California State University, Chico. All rights reserved.
   
   No other institutional, school, or departmental name should be used in the patent process when the university is a party to the action.

4. Patent Other

All university personnel are urged to consult with the Vice Provost for Research and/or the Committee on University Copyright and Patent Policy, whenever there is a question about the need to involve the university formally in any planned or completed discovery or invention.