OVPR - Office of Technology Transfer

Introduction

This document constitutes the patent policy of Auburn University and applies to Auburn University faculty and other employees and students in the areas of discoveries, inventions and patents for the benefit of the public. The patent policy embodies both the procedural and substantive aspects concerning discoveries, inventions and patents as set out in Sections 1.0 and 2.0 and as summarized in the next paragraph. The policy has been developed to insure that prospective inventors are aware of the assistance available to them and the steps necessary to insure that a patentable idea reaches fruition. It was developed under the philosophy that by patenting an idea it not only offers an opportunity for personal reward but helps to promote the use of the patentable idea. Many unprotected ideas will not be utilized by private industry because of the high risk in capital investment. Thus, many ideas are lost to the economy.

Auburn University faculty, other employees, and students shall report to the University through the Secretary-Director of the Auburn Research Foundation, all discoveries or inventions deemed patentable arising from research or other activities conducted within the field of their official duties and responsibilities or programmed or substantially supported by the University. Such potentially patentable discoveries and inventions should be reported using the disclosure of invention form available from the Secretary-Director. Inventors are cautioned that a patent application must be filed within a year after open publication of the disclosure of an invention or the idea becomes part of the public domain and unpatentable.

The University's equity, if any, in inventions or discoveries of faculty members, other employees and students made outside the scope of their official duties and responsibilities but in which there is some use of University facilities will be determined by the University. The University's equity in inventions arising from projects conducted by students and faculty or employees as a part of formal instruction or thesis projects will also be determined by the University. The ownership and control of patent rights to patentable discoveries and inventions resulting from research sponsored by industrial or governmental agencies will be determined on the basis of the contractual agreement between the sponsor and the University. The University's equity in discoveries and inventions not covered by such contractual agreements will be determined by the University. Inventions and discoveries made or developed solely in the course of consulting work performed for outside agencies with the concurrence or approval of the appropriate Vice President shall not be considered having been made or developed in the course of University employment unless otherwise provided by the approving authority or unless a significant use of University facilities is involved. The equity in inventions arising from consulting engagements by faculty and other employees not having prior concurrence or approval by the appropriate Vice President will be determined by the University.

The policy is intended to encourage the patenting of discoveries and inventions and the development and utilization of patents for the benefit of the public and the inventors for all patents in which the University has an equity. Furthermore, the policy offers a mechanism for patenting discoveries and inventions of the faculty, employees and students in which the University has no equity but may acquire equitable interest in order to assist the faculty, other employees or students. The policy is general and reflects the tenor of Auburn University in its activities to assist prospective patentees develop their discoveries and inventions for patenting for the benefit of the public and the inventors.

1.0 Substantive Policy

1.1 Parties

This policy shall exist between Auburn University and all faculty, other employees and students of the University. This relation between the parties shall arise as a part of the employment contract between the University and its faculty and employees and shall constitute a condition of enrollment for all students and, prior to the use of any University facilities which might result in an invention or discovery, the individuals will execute a signed and witnessed agreement to this policy.

1.2 Duration of Policy

The policy shall be effective between Auburn University and each faculty member or other employee commencing with his employment and continuing for a period of one year subsequent to his termination of employment. Similarly, the policy shall be effective between the University and each student commencing with his enrollment and continuing for a period of one year subsequent to the termination of his last period of enrollment.

The policy is subject to change and a copy of the current policy will be kept on file in the office of the Secretary-Director of the Auburn Research Foundation.

1.3 Class of Intellectual Property Rights Affected

This policy covers patentable subject matter and patents but does not extend to copyrightable or copyrighted material. Patentable subject matter involving the act of invention covers:

Processes, machines, compositions of matter and other articles of manufacture. "Process" includes improvement of a known process or an entirely new method for making a composition of matter or article of manufacture.
Design.
Plants - Asexually and sexually reproduced plants, with some exceptions.

Invention involves:

Conception, a mental act;
Reduction to practice.

Unpatentable subject matter covers:

Discovery of natural phenomenon;
Product of nature (except antibiotics, vitamins);
Mere ideas or concepts;
Inventions relating to atomic weapons.

1.4 Equities of the Parties

1.4.1 Internally Sponsored Projects

The patent rights to inventions and developments resulting from research or other activities conducted by faculty, other employees or students within the field of their official duties and responsibilities or programmed or substantially supported by the University are retained by the University. Disposition of patent rights is handled by the University. However, the faculty members, other employees and/or students, who are the inventors of record may participate in the income from discoveries and inventions on which patents are obtained in accordance with Section 1.5.

In the event Auburn University does not elect within six months after submission of a disclosure to pursue a patent or patents on any discovery or invention, the inventor or inventors may request the release of all rights to the invention or discovery and they may dispose of and handle them as they desire.

The University or its agent will bear all costs of pursuing the obtaining of patents for all inventions and discoveries retained by the University, but these costs will be deducted from the proceeds prior to any payments to the inventor or inventors.

1.4.2 Personal Research

In order to provide incentive and encouragement to faculty members, other employees and students of the University in pursuing their personal research interests outside the scope of their official duties and responsibilities and not programmed or substantially supported by the University although slight use may be made of University facilities, any resulting invention or development which may be patentable may be submitted to the University for acceptance or rejection, or may be disposed of and handled by the inventors as they desire. However, all personal discoveries or inventions will be reported to the University, regardless of submission for acceptance or rejection by the University for a determination in accordance with this section. Generally, projects conducted by students and faculty or employees as a part of formal instruction or thesis projects are considered personal research and outside the scope of official duties and responsibilities and programming unless such thesis projects are conducted as a part of a contractual research effort or substantially supported by the University.

Faculty, other employees and students submitting patentable ideas and discoveries resulting from personal research to the University accepted for patenting will participate in the income from these patents in accordance with Section 1.5. The University or its agent will bear the costs of pursuing the obtaining of patents for all accepted inventions and discoveries, but these costs will be deducted from the proceeds prior to any payment to the inventor or inventors.

1.4.3 Industrial Research

The ownership and control of patent rights to patentable discoveries and inventions resulting from research sponsored by industry at the University are determined by the contractual arrangement between the sponsor and University. In general, the University retains ownership and control of the patents; however, if required by the sponsor, the University will assign and convey to the sponsor under the contractual arrangements rights to all patentable discoveries and inventions resulting from the sponsored research. Where the University retains ownership and control of patents resulting from sponsored research, the University treats these patents the same as though resulting from its own research and Section 1.4.1 is applicable.

1.4.4 Government Research

Auburn University complies with the government patent policies as set forth by the various Executive Departments and Agencies of the Federal government. The question of ownership and control of patents resulting from Federally or State supported research is determined in each specific contract. Contracts with the State of Alabama shall be governed by Section 1.4.1 unless otherwise provided.

1.4.5 Consulting

Faculty and other employees desiring to perform consulting work for outside organizations are required to obtain the prior concurrence in accordance with current University policy.

Inventions and discoveries made or developed solely in the course of consulting work performed with prior concurrence in accordance with current University policy shall not be considered as having been made or developed in the course of University employment unless otherwise provided in the concurrence or unless a significant use of University facilities is involved, in which case the University will determine whether or not Section 1.4.2 or other section applies.

Inventions arising from consulting engagements by faculty and other employees not having prior concurrence or approval by the appropriate Vice President and involving substantial use of University facilities will be governed by Section 1.4.1, notwithstanding any agreement between the consultant and his client. Students working with faculty on consulting projects are governed by this same policy.

1.5 Division of Equities

Faculty, other employees and/or students as inventor or co-inventors may receive jointly percentages of the net proceeds as indicated below:

30% of Net Proceeds with Net Proceeds being Up to $100,000
25% of Net Proceeds with Net Proceeds being the Next $100,000
20% of Net Proceeds with Net Proceeds being the Next $100,000
15% of Net Proceeds with Net Proceeds being everything over $300,000

The net proceeds is defined as the proceeds minus all costs of obtaining the patent and of defending and/or marketing the patent. The percentage of net proceeds to the inventor or co-inventors will be distributed annually.

1.6 Agreement as to Division of Equities

Auburn University shall, if it determines that more than one individual is entitled to an equity in an invention or discovery, determine the manner in which the equity awarded to the group shall be divided among the individuals constituting the group, provided, however, that if such individuals have agreed among themselves, such agreement shall be conclusive.

1.7 Assignment of Equities

Notwithstanding any determination of Auburn University, or any other provision of this policy, faculty, employees and students shall have no equities or rights whatsoever in inventions and discoveries belonging to the University unless and until a written agreement has been executed by the University and University faculty, other employees and/or students consistent with the determination of the University guided by this policy.

The inventor or inventors are required to execute such as assignments and other documents that the University determines to be necessary in obtaining the patent.

1.8 Effective Date of this Policy

This policy is effective as of the date of its signing by the President of Auburn University. Nothing in the Auburn University Patent Policy shall be deemed to change any agreements made under previous policies.

2.0 Procedural

2.1 Inventors

All University faculty, other employees and students shall report to Auburn University through the Secretary-Director of the Auburn Research Foundation any ideas or discoveries deemed patentable arising from situations described in Section 1.4 using a disclosure of invention form, available from the Secretary-Director. Inventors are cautioned that a patent application must be filed within a year after open publication of the disclosure of an invention or the idea becomes part of the public domain and unpatentable.

2.2 Auburn University

Auburn University shall consider promptly all reports of inventions and discoveries and shall make the determinations required herein within a reasonable time and in no case longer than six months. The University personnel or students involved shall be entitled to appear before the Secretary-Director of the Auburn Research Foundation and present evidence to the report. The University's determination shall be made in writing and shall contain a statement of findings and grounds for decision. In all cases where the University declines to pursue a patentable idea or potential patent the ownership of the rights to such idea or patent are released in to the inventor/s unless prior restraints exist between the University and a sponsoring agency. The University shall maintain the confidentiality of all patentable ideas so as not to jeopardize the patentability of such ideas.

The University shall have the right to determine how and for what consideration any patent rights assigned to the University will be used.

2.3 Dissemination of this Policy

This policy shall be published in the Faculty Handbook or other appropriate document distributed to the faculty and employees and the Tiger Cub, the official publication for students of Auburn University. The policy shall be referenced in initial employment papers of faculty and other employees of Auburn University, Administrative Digests and other appropriate documents for faculty, other employees and students.

THIS POLICY WAS APPROVED THE 15th DAY of MARCH, 1974 by then President of Auburn University, Harry M. Philpott

Executive Committee Resolution

Proposed Change In Auburn University Patent Policy

WHEREAS, Auburn University, through its research and other creative endeavors, strives to originate and disseminate new processes holding promise of increasing technological advancement; and

WHEREAS, an incentive for faculty involvement in the development and transfer of technology to the private sector is the prospect of their sharing in the royalty proceeds and similar income generated from marketing an invention or discovery; and

WHEREAS, the Vice President for Research and others have proposed that the Auburn University Patent Policy be revised to permit allocation to the inventor of an increased share of invention royalty net income.

NOW, THEREFORE, BE IT RESOLVED by the Board of Trustees of Auburn University that William V. Muse, President, or such other person as may be acting as President, be and the same is hereby authorized to change Paragraph 1.5, of the existing Auburn University Patent Policy as provided below:

The inventor or inventors will receive 50 percent of the first $100,000 of net royalty; 40 percent of the second $100,000; and 30 percent of all net royalty income over $200,000.
Net royalty income will be determined by the following method:

First, all out-of-pocket University expenses for obtaining, defending and marketing the patent will be recovered. Second, a 15 percent administrative charge will be used to provide resources to encourage invention disclosures and to process these in a timely manner, and to facilitate the transfer and commercialization of discoveries and inventions.

BE IT FURTHER RESOLVED that this policy revision is effective upon approval, with respect to all royalty and similar income received after said effect date.

Approved August 20, 1993