Santa Clara University

Policy on Inventions and Patents

Purpose

Santa Clara University is committed to supporting the development of new technologies.  Faculty Handbook section 3.7.5 describes the University policy on patents including the distribution of royalties.  The purpose of this policy is to clearly establish title of inventions and patents.

Scope

The patent policy of the University applies to all potentially patentable discoveries or inventions conceived or first reduced to practice by anyone using University funds, material, or facilities.

Policy

The University patent policy (Faculty Handbook section 3.7.5) is defined in terms of three categories of inventions:

1. Discoveries or inventions that are subject to the terms of sponsored projects or other agreements between the University and a third party. These inventions shall be disposed of in accordance with the terms of the applicable agreement. Most agreements provide that the University will take title to inventions and will grant certain license rights to the sponsor.
2. Discoveries or inventions that involve the significant use of funds, materials, or facilities administered by the University but that do not involve University obligations to a third party. These inventions shall be the property of the University. Significant use occurs when the University provides resources above and beyond those that would be routinely available to the inventor as a direct result of his or her affiliation with the University.
3. Discoveries or inventions that do not involve either University obligations to a third party or the significant use of funds, materials, or facilities administered by the University. These inventions shall be the property of the inventor.

The University is free to assign any discovery or invention in which it has ownership rights to a patent management organization for assistance in filing a patent application or negotiating licenses. Any royalties the University receives will be shared with the inventor as described below.

Of the net royalties it derives from any discovery or invention, the University will pay 50 percent to the inventor or inventors; it will place the remaining 50 percent in a separate University fund to support research and related activities.

Anyone conducting research at the University that could result in patentable discoveries or inventions will be required to sign a Patent Agreement which is available from the Sponsored Projects Office.

Any discovery or invention covered under this policy, except those in which the inventor has sole ownership rights, must be disclosed promptly to the Office of Research Inititaives1 by means of an Invention Disclosure Form available from that office. After this form is submitted, the University or its designate will make an evaluation in order to decide whether to apply for a patent. The University will promptly notify the inventor in writing of its final decision. If it fails to do so within six months of receiving a properly executed disclosure, or if it decides not to pursue a patent application, the invention will become the property of the inventor subject to the rights of any outside sponsor.

Any inventor who wishes to request an exception to this policy or to challenge a patent decision by the University may appeal to the Provost. The Provost will appoint an ad hoc committee of three members mutually acceptable to the inventor and the Provost, including at least one faculty member and one member of the administration. The committee will prepare a report of its findings and make a recommendation to the Provost. The decision of the Provost, which is to be explained in writing, will be final.

University employees who are engaged in consulting work are responsible for ensuring that clauses in their agreements are not in conflict with this patent policy or with the rights of other parties.

The Office of Research Initiatives  should be consulted for any interpretation of this policy.

Enforcement and Noncompliance

The Associate Provost for Research Initiatives is responsible for enforcement of the policy.  Examples of noncompliance with this policy include, but are not limited to, failure to submit a disclosure form, intentionally filing an incomplete, erroneous, or misleading disclosure form, or failing to provide any additional information requested by the Associate Provost for Research Initiatives. Failure to comply with this policy will result in the notification of the sponsor as appropriate.  In addition, noncompliance may result in disciplinary action consistent with and subject to sections of the Staff Policy Manual and the Faculty Handbook that are applicable to the employment of the faculty or staff member. In particular, noncompliance is subject to the Policy on Misconduct in Research (Faculty Handbook, Appendix H).

Definitions

Invention means any new or significantly improved technology, material, design, device, discovery, composition, trade secret, process, method and/or technique that is conceived and reduced to practice.

Research means a systematic investigation designed to develop or contribute to knowledge. The term encompasses basic and applied research and product development.

Sponsored Project is defined in the Faculty Handbook as any externally funded activity which is subject to an agreement that is binding on the University and that includes any of the following conditions:

1.  it commits the University to a specific plan of research or scholarly inquiry;
2. it makes a specific commitment regarding the level of personnel effort, items of output, or achievement of specific performance targets;
3. it requires both adherence to a line item budget and either a detailed fiscal report or an external audit of the project;
4. it requires that any unexpended funds be returned to the sponsor at the end of the project period; or
5. it provides for the disposition of either tangible property (e.g., equipment, records, or technical reports) or intangible property (e.g., patents or copyrights) that may result from the activity.