The following Patent Policy is taken from Appendix C of the Agreement between UDM and the UDM Professors' Union, covering the time period between May 16,2008 and May 15, 2013. For additional information, please refer to the Contract.
The University of Detroit Mercy (hereafter referred to as "the University") patent policy is intended to encourage a healthy atmosphere conducive to research and development through a system of rewards and incentives for the creation of intellectual property while at the same time giving proper consideration to the relative roles any individual employee's efforts or the University or its resources may have played in the development of that intellectual property.
The strength of the University lies in its employees. The University's policies can provide invaluable assistance in bringing employee ideas to development and fruition within a framework of mutual trust and collegiality.
This policy is intended to spell out the responsibilities of the University and its employees and establish a framework for ethical conduct when issues covered by this policy arise. While employees are encouraged to consider the potential market value of their inventions, they shall not be held liable for failing to recognize a potentially patentable invention.
Employees of the University may create patentable discoveries during the course of their employment with the University. It is desirable in some cases to seek patent protection for these works and discoveries. Licensing the use of the property provides an opportunity for both income to the inventor and financial returns for the University. This patent policy applies to all University employees. For the purpose of this policy, "employee" shall be defined as any person who uses University resources and any intellectual property which involves use of those resources with the exception of student activities associated with coursework. For the purpose of this policy, the term of "employment" shall be defined by the time period when University resources are used for the development of any potentially patentable intellectual property. Upon termination of employment (as defined herein), the employee shall have a duty to disclose to the University all potentially patentable projects in which the University may have a property interest. This disclosure can be achieved through an employee exit interview, or by the employee's self-disclosure. This paragraph is applicable to patent applications made within the first year after employment ends at UDM. The University's claims on patentable projects end 366 days after disclosure or the end of employment as defined herein, whichever is later.
A. Patent Committee
(1) On an as needed basis (given that UDM is principally focused on teaching, this will most likely be on a case by case basis, though the University may form a standing committee if it so chooses), the University administration shall form a Patent Committee (hereafter referred to as "the Committee") which shall serve as an advisory committee to the President on all University patent related matters.
(2) This Committee shall evaluate each intellectual property for potential commercial value and decide that the University either seek protection and commercialize that intellectual property or relinquish University rights to that property. The Committee reserves the right to employ outside consultants who possess the necessary expertise to evaluate the potential commercial value of a particular intellectual property submitted for review.
(3) All matters regarding specific intellectual property coming before the Committee shall be held confidential by all members of the Committee.
(4) The President and his/her designee shall determine the composition, tenure, and decision-making authority of the Committee.
(i) The creator(s) or inventor(s) may designate two UDM faculty members to serve on the Committee.
(ii) It is also recommended that the Chair(s) and Dean(s) of the Creator(s) or inventor(s) be members of the Committee. Additional consideration should also be given to including individuals who have been involved in obtaining intellectual property protection on creative works and therefore familiar with the process.
(1) Scope of Policy.
(i) This policy applies to potentially patentable discoveries and trade secrets which are developed using University equipment, supplies, facilities, employee time, or trade secret information, or which relate directly to the University's business, research, or development.
(ii) The University will hold first right of refusal ownership in patents and other non-patentable intellectual products, except those covered by copyright policy, developed by its employees as a direct result of their research or employment.
(iii) The University does not claim rights in an invention for which no equipment, supplies, facilities or trade secret information were used and which was developed entirely on the employee's own time, unless the invention grows directly out of the business of the University or of the University's actual or demonstrably anticipated research or development or unless the invention directly results from work performed by the employee for the University.
(2) Sponsored Research
(i) Where research has been sponsored by private industry or foundations, licensing of patents shall be negotiated between the sponsor and the University or its agent where appropriate.
(ii) The University will strive to protect the financial interests of all and, when necessary, act to ensure that the traditions of self-governance and academic freedom are respected.
(iii) The University, on behalf of its constituent colleges, schools, or departments, will not accept grants or enter into agreements for the support of instruction or research that confer upon an external party the power to censor, unduly delay, or exercise effective veto power over either the content of instruction or the publication of research.
(iv) Parties entering into such agreements shall be hereby advised that publication of research findings may be temporarily delayed in order to protect patent rights or permit the research sponsor to review the proposed publication for the sole purpose of identifying proprietary information furnished by or belonging to the sponsor.
(v) Unless otherwise noted in writing, the University normally retains ownership of property developed under sponsorship agreements and will negotiate rights to license the property.
(vi) The proprietary rights of the University and the University's employees shall be subject to the agreement between the sponsor and the University.
(3) Determination of Ownership
(i) The Committee will determine whether the potentially patentable property is owned by the University, by the employee(s), by an outside sponsor, or jointly by some combination of these.
(ii) Under the federal patent and trademark legislation of 1980 (35 U.S.C. 200 et seq.), the University has the right of first refusal to title in inventions made in the performance of federal grants and contracts. The University will assert title to and attempt to license inventions made with federal government funds so that the Congressional purpose of fostering the development of industry in the United States will be furthered.
(iii) Patentable inventions not subject to a sponsorship agreement, or University ownership under the preceding paragraph, or the University provides a written waiver of ownership, will be the employee's property. Unless contested by the University, the University will, on demand from the employee, issue a waiver of the University's rights. If contested, the Committee will determine ownership.
(iv) In cases where it would be unfair to determine that the property is wholly owned by either the University or the employee, the Committee may make a determination of equal ownership.
(a) If the University, through the Committee, chooses to release its rights, no additional conditions shall be placed on the release other than consideration to compensate for the continued use of facilities and materials beyond the release date.
(b) For patentable property only partially developed during the employee's term of employment, the Patent Committee shall also have the authority to assign proportionality of property interest between the University and the "employee."
(v) The procedure for determination of ownership shall be as follows:
(a) The Committee shall make its determination of ownership within 45 days of full disclosure of the invention by the inventor(s) to the Vice President for Academic Affairs and Provost. Full disclosure simply means that the disclosure must include all pertinent information which the inventor(s) have that is related to the subject invention.
(b) The employee will be notified of the decision of the Committee within 5 days of the Committee's determination.
(c) If the Committee fails to notify the employee in writing of determination of ownership within 65 days of full disclosure, then any potential University's rights shall automatically revert to the employee.
(d) It is acknowledged that the 65 day deadline includes 15 days beyond the timeline set for this process and thereby fully extinguishes the University's right to any ownership.
(e) The employee shall have 30 days from the date of the mailing of the notice to appeal the Committee's decision. The appeal shall be heard by the Vice President for Academic Affairs and Provost or his/her designee within 20 days of the notice of appeal. The decision on appeal shall be issued within 30 days of the deadline for submitting materials. The decision of the Vice President for Academic Affairs and Provost shall be final.
(f) Following this internal appeal process, the employee has recourse to settlement in the civil courts.
(4) Duty to Assign and Cooperate
(i) After the determination by the Committee and exhaustion of the employee's right of internal and external appeal, the employee shall execute documents of assignment to convey to the University, or its assignee, all of the employee's interest in the invention determined to be owned by the University and assist in obtaining, protecting, and maintaining patent rights.
(ii) When discoveries are determined to be owned in part by the University and in part by the employee, the University and the employee shall enter into a written agreement apportioning 50% of the after-costs revenues from the invention to the inventor(s), and the remaining 50% to the University.
(a) Cost shall be defined as direct expenditures resulting solely from pursuit, prosecution and maintenance of intellectual property rights and commercialization of the invention plus, where appropriate, any extraordinary University resources such as outside legal, consulting, marketing and licensing organizations.
(b) Half of the University's 50% of net revenues shall be apportioned to the creator(s)' or inventor(s)' Department to support further research and scholarly activity.
(c) In the event of multiple inventors, those involved must agree upon an appropriate apportioning of the 50% of revenues provided to the inventor; in the absence of any written agreement stating otherwise, the revenues shall be equally divided amongst the inventors.
(d) In the case of multiple inventors, the departmental share of revenues shall be apportioned in accordance with the same apportioning made to the inventors.
(5) Publication and Disclosure to Third Parties
(i) Premature publication, public use, or disclosure of an invention can sometimes jeopardize the rights of the employee, or the University or its assignee to secure patent protection. Therefore, unless the Committee has issued a waiver of University's rights, the employee agrees that there shall be no publicity or disclosure concerning the invention until patent applications have been filed.
(ii) Once an invention is identified as potentially patentable, all publicity, public reports, interviews, news releases, speeches, public disclosures or public demonstrations of the invention subsequent to the filing of the application shall have prior clearance in writing from the University or its assignee.
(iii) This section shall not be applicable to sponsorship agreements that impose different obligations on disclosure.
(6) Costs and Royalties
(i) Following a decision by the Committee to pursue a patent for an invention deemed to be jointly owned by the inventor(s) and the University, the University shall, in a reasonably prompt manner, develop and file a patent application on the subject invention.
(ii) All fees, legal and otherwise, associated with development of the invention and patent application shall be assumed by the University, but all such costs must be fully recovered by income generated by the invention before any net revenue accrues.
(iii) Once costs defined elsewhere have been recovered, all additional income generated through licensing of the patent, sale of the patent or other commercialization of the invention shall be apportioned at the aforementioned percentages after a 5% administrative fee is deducted.
(iv) Royalties allocated to inventor(s) continue throughout the revenue generation phase of the invention, regardless as to whether or not the inventor(s) remains employed at the University.
(v) If the University, at any time, no longer wishes to pursue further development of the intellectual property, the University will notify the inventor(s) and will execute the necessary documents assigning all rights to the inventor(s) unless precluded by prior written agreement.