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Intellectual Property Policy: Inventions and Patents

Group of Students Working around Lab BenchPOLICY STATEMENT

Fordham University is committed to the discovery of knowledge and the transmission of learning through undergraduate, graduate and professional education of the highest quality. Fordham strives for excellence in research and teaching, and promotes the freedom of inquiry through rigorous thinking and the quest for truth.

The University expands the frontiers of knowledge and insight through basic and applied research endeavors from which inventions may emerge. Developing and patenting an invention often is an essential step to fully realizing societal benefits emerging from new knowledge and technologies. Through this Intellectual Property Policy, the University seeks to encourage the development of new inventions and patents, for it is through discovering, communicating, and applying knowledge that Fordham furthers its mission as a research university.

The University has an interest in managing intellectual property and promoting technology transfer in order to stimulate the development of intellectual property and reward members of the University community who create such intellectual property (“Inventors”).

REASON FOR THE POLICY

The purpose of this Policy is to define the disclosure requirements, conditions of ownership, legal protection, development, and licensing of intellectual properties conceived or first reduced to practice by any member of the Fordham University community arising out of or relating to the use of University facilities, space, materials or other resources.

In addition to supporting these purposes, the Policy was established to support innovation and to provide for an equitable allocation of responsibilities and rewards among inventors, their departments and schools, the University, and any external organizations that have sponsored and financed research activities at the University.

This policy also provides guidance to members of the University community to assist with Fordham’s contractual and legal obligations, including those provided under the Bayh-Dole Act.

RESPONSIBLE UNIVERSITY OFFICE/OFFICER

Office of the Provost with authority delegated for implementation and enforcement to the Office of Research.

APPLICABILITY OF THE POLICY

This Policy applies to all persons employed by Fordham University and any person using Fordham University facilities under the supervision or sponsorship of University personnel, including but not limited to all instructional staff (tenure-line, full-time non-tenure-line, adjunct, and visiting faculty), fellows and students. All exceptions to the Policy must be negotiated in advance and agreed to in writing by the Provost or his or her designee.

Approved by Faculty Senate, March 25, 2022

I. Disclosure

Inventors are required to complete and to submit an invention disclosure to the Research Compliance Officers for any type of invention.

(Form Link:https://www.fordham.edu/download/downloads/id/16267/Fordham_Invention_Disclosure_Form_March_2022.pdf)

This disclosure requirement is consistent with the reporting requirements under the Bayh-Dole Act, which obligates a business or nonprofit organization to disclose each invention developed using government funds to the funding agency within two months after an inventor discloses it in writing to the contractor personnel responsible for patent matters, which for the University are the Research Compliance Officers.   

Additionally, the inventor must identify all co-inventors at the time of disclosure on the Disclosure Form setting forth the percentage of any potential revenue due to the co-inventors. In the event the co-inventors have not or are unable to agree to a division of revenue, the University will decide.

Disclosure to the University should be done as soon as reasonably practicable and before any public disclosure of the potential invention is made, whether via a publication, conference presentation or poster, website, email campaign or any other type of announcement, as this could interfere with the ability to patent the invention. If there’s a question as to whether something would be considered to be an invention, you are strongly encouraged to disclose.

II. Ownership

Upon review of the disclosure, the University Intellectual Property Committee (UIPC), as described in Section X of this Policy will determine whether the invention shall be classified as an incidental, supported, or assigned invention.  Ownership will be dependent upon such classification.  Student inventions are addressed separately below. 

            1.         Incidental Inventions.

An incidental invention is defined as an invention that is conceived or reduced to practice in whole or in part through an incidental use of space, facilities, materials or other resources provided by or through the University. For the purposes of this policy examples of incidental use of space, facilities, materials or other resources. includes the use of an office, the library and a University computer.

Incidental inventions generally are owned by the inventor unless voluntarily assigned by the inventor to the University. Ownership of incidental inventions is subject to any rights held by the University as required by this policy. Federally-funded inventions, whether in whole or in part, shall not be considered to be incidental inventions.

             2.         Supported Inventions.

A supported invention is defined as an invention conceived or reduced to practice, in whole or in part, with the substantial support of the University.  This would include the use of: University intellectual property; laboratories or other research-related facilities, equipment or supplies, provided by the University for academic purposes; University funding of grants or contracts administered by the University; dedicated services provided by University employees, consultants, vendors, contractors, students, post-doctoral scholars or fellows; other special financial assistance; or extensive use of shared facilities.

In recognition that the determination of non-incidental use of University resources; depends, in part, on facilities that are customarily accessible to similarly situated faculty members, non-faculty academic employees, staff members and student-employees, the standards may vary from one department to another.  Final determination will be made by the Provost in consultation with the UIPC.

Where an inventor believes that a supported invention serves society by free and open sharing with the public domain, the inventor may choose to forgo University support related to the patent process by so indicating in the Invention Disclosure Form.  In such cases, the University will release the invention to the inventor, subject to Section III of this Policy, upon execution by the inventor of an agreement that the inventor will not in any way commercialize or otherwise financially profit from the invention at any time in the future.  If the inventor later determines that commercialization is appropriate, all such rights would be governed by this Policy.

The University is the rightful owner of the commercial rights in supported inventions, subject to the allocation/royalty sharing between the University and the inventor set forth in Section VII. below.

Ownership of supported inventions that involve an external sponsor is governed by the written agreement between the University and the external sponsor. Absent any written agreement granting ownership to the external sponsor, ownership of the supported invention shall remain with the University. 

3.         Assigned Inventions.

An assigned invention is defined as an invention conceived or reduced to practice in whole or in part as a result of activities related to the inventor’s assigned employment responsibilities, above and beyond normal contracted duties to the university such as teaching, service and research activities. This is intended to address situations where a faculty or staff member is asked to undertake a particular project as part of their employment and an invention results from that project. Assigned inventions are owned by the University, subject to the allocation/royalty sharing between the University and the inventor set forth in Section VII. below.

             4.         Student Inventions.

The University does not assert any ownership rights to inventions by student inventors developed as part of normal educational activities.  However, and consistent with the purpose of this policy as it applies to other members of the University community, the University retains ownership rights where the invention:

  1. is a supported invention;
  2. results from a student’s employment with the University;
  3. involves faculty-mentored academic year or summer research (e.g., undergraduate research projects, thesis research, and faculty-mentored independent projects) or other similar contributions by faculty/staff;
  4. is by a student who is also an employee of an entity sponsoring the work; or
  5. is, akin to an assigned invention, specifically commissioned by the University or is part of a larger University project.

III. Release of Inventions

An inventor may request release of a University-owned invention at any time. In the event University agrees to a release, a written agreement will be executed assigning all interest which the University holds or has the right to hold in the invention to the inventor.  Notwithstanding the general policy relating to the release of inventions, the University remains bound by applicable laws and regulations in the context of federally-funded research.

In addition, when the University, through the UIPC, determines that it will not file a patent application for a University-owned invention, the invention will be released to the inventor, subject to the terms (including required approvals from government or other sponsors) of any applicable grants, contracts or agreements duly entered into with governmental, corporate, non-profit or other sponsors or third parties (including but not limited to any “march-in” rights held by the federal. government under the Bayh-Dole Act). Transfer of ownership to the inventor will be pursuant to a written assignment and will be subject to an irrevocable non-exclusive world-wide royalty-free license to the University to use the invention for education, research (including sponsored research), clinical and other legitimate University purposes and may be subject to a reservation to the University of the right to grant similar licenses to other non-profit institutions and government organizations.

IV. University Rights in Incidental Inventions

Inventors grant to the University an irrevocable, perpetual, non-exclusive, royalty free, world-wide right to use an incidental invention in the University’s non-profit educational and research activities in recognition of the general support provided by the University.

V. Inventor Rights in Inventions Owned by the University

The University agrees, subject to the restrictions in any agreements, patent and licensing restrictions, or other obligations, to grant to the inventor an irrevocable, perpetual, non-exclusive, royalty free, world-wide right to use the invention in the inventor’s non-profit teaching and research activities.

VI. Filing and Prosecuting Patent Applications, Licensing and Marketing

The University shall have the sole right, but not the obligation, to prepare, file, prosecute and maintain patent applications and patents worldwide with respect to University-owned inventions. Through mutual written consent, inventors of an incidental invention may assign ownership to the University so that a patent may be pursued by the University with royalties distributed as described in Section VII. of this Policy.

While it is the University’s intention to allocate financial resources to the marketing of an invention for which it retains an ownership, the decision as to whether to do so and in what amount lies within the University’s sole discretion. 

The UIPC will endeavor to make all patenting and marketing decisions within six months of the invention disclosure. The inventor should notify the UIPC if circumstances require expedited consideration. Any delays beyond the six-month period will result in release to the inventor unless special circumstances reasonably require the delay. Such delay will be communicated to the inventor by the Provost. The inventor shall notify the UIPC if circumstances require expedited consideration.

VII. Allocation / Royalty Sharing

Allocation/royalty sharing is designed to reward innovation, while providing the University with the financial resources to invest further in and expand such activity.

The decision to protect or develop any invention remains solely with the University unless it has made an explicit contractual agreement with an external entity to do so. If the University decides to protect an invention, through patent filings, or otherwise, and develop the invention, through licensing arrangements or otherwise, the revenue generated by virtue of such measures will be distributed in the following manner, unless an alternative distribution arrangement is agreed upon in writing by the inventor and the University:

          Net Revenue

      Inventor

       Office of               Research

         Inventor's              Academic or   Administrative Unit

        University

            $0-$100K

          50%

           25%

             25%

              0%

      $100,001-$500K

          40%

           20%

             25%

             15%

            $500,001 +

          30%

           20%

             20%

             30%

  

VIII. Start-Up Ventures

The University recognizes that an invention may be commercialized in various ways, including through a relationship with a start-up venture. The University will work with inventors to develop licensing terms that are mutually beneficial for inventions for which the University has an ownership interest pursuant to this Policy.

IX. Presentations / Publications

The University’s ownership rights set forth in this Policy are not intended to interfere or in any way inhibit the presentation and publication of research results.  Subject to the obligation to disclose inventions as set forth in Section I. of this Policy and any obligations to third parties, faculty members retain their autonomous role in selecting and preparing for publication the results of research conducted by them or under their supervision. Notwithstanding the foregoing, the University reserves the right to delay presentation or publication for a reasonable period of time if such delay serves to protect the University’s intellectual property rights or is necessary to meet legal or contractual obligations.  Such a delay will not exceed a total of 90 days unless authorized by the Provost.

X. University Intellectual Property Committee (UIPC)

The University Intellectual Property Committee (hereinafter “UIPC”) is charged with (a) reviewing and determining the release of a University-owned invention to the inventor; (b) providing guidelines for the implementation of this Policy; (c) interpreting and applying this Policy in individual cases; (d) resolving disputes concerning the interpretation and application of this Policy; and (e) recommending whether University resources should be allocated to the external marketing of the invention.

The UIPC shall be appointed by the President of the University and shall be comprised of representatives of the administration and faculty.  It shall be comprised of three faculty members (each selected from a slate of names forwarded to the University President by the Faculty Senate Executive Committee), the Chief Financial Officer (or his/her designee), the General Counsel (or his/her designee), and the Chief Research Officer (or his/her designee). The faculty members will serve staggered three-year terms, each renewable once. The UIPC Chair will be appointed by the Provost. The UIPC will convene as needed if urgent matters arise.  The UIPC shall consult with an external technology transfer professional, as necessary.

The UIPC will facilitate the resolution of all disputes between inventors, or inventors and the University, regarding ownership of intellectual property and/or the distribution of royalties and other proceeds as described in Section VII. of this Policy.  The UIPC will review as appropriate the factual background of the dispute, which may include examining all relevant documents and records relating to the development of the invention and/or may conduct interviews with individuals who may have information that may be relevant to the UIPC’s understanding of the dispute. After its review, UIPC will provide recommendation(s) to the Provost, whose final decision shall not be unreasonable. As with all University policies, Chapter 7, Part IV of the Statutes supplies the “Procedures Applicable to Grievances Not Relating to Denial of Reappointment or Tenure, or to Discipline, Suspension or Dismissal” which would be followed in a case where an inventor disagrees with the final disposition of their invention.

Definitions

An “Invention” is defined by the U.S. Patent and Trademark Office as any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.

For the purposes of this policy, an “Inventor” is defined as any full- or part-time University faculty, staff, students, postdoctoral fellows and others who use University funds, facilities, materials or other resources, or participate, including visiting scholars and other volunteers, in University-administered research, and who contribute to the conception of an invention using any University resources.

"Gross Revenue" is the total of all receipts received for all commercial activity related to the Invention.

"Net Revenue" represents Gross Revenue minus all expenses directly related to the prosecution and maintenance of any patents, marketing expenses, licensing agreement(s), or other commercial arrangements. Payments made under an externally-funded grant or contract are specifically excluded as revenue for the purpose of determining Net Revenue.

Contacts

Michele Kuchera, mkuchera@fordham.edu

Kris Wolff, kwolff@fordham.edu     

Cross-Reference to Related Policies

Exclusions & Special Situations

Requests for exceptions to this Policy shall be addressed with the Provost.  The terms of this Policy shall govern unless an exception is granted in writing by Provost.

Revision History

This is the first version of this Policy, dated March 25, 2022.