California State University, Long Beach Policy
Statement
95-08
June 5, 1995
POLICY ON INTELLECTUAL PROPERTY: INVENTIONS AND DISCOVERIES
This Policy Statement was recommended by the Academic Senate on May
11, 1995
and received the concurrence of the President on May 31, 1995.
This Policy Statement supersedes Interim Policy Statement 88-05.
The primary purposes of California State University, Long Beach
(University) are to teach, to expand knowledge through scholarly
studies and research, to disseminate the results of such studies
and research, and to perform community service consistent with the
mission of the University. From time to time in the conduct of these
activities faculty members, staff, and students may make discoveries
or invent new and useful devices, processes, etc., of a patentable
and of a marketable nature. This policy statement describes principles
and processes of the disposition of property rights to such forms
of intellectual property.
Full protection of the traditional rights of employee scholarship
and productivity is intended in this policy. The requirement for
scholarly productivity as a requisite for retention or promotion
will not be interpreted as the sole necessary factor conveying proprietary
rights to the University for the products of that scholarship.
OWNERSHIP OF DISCOVERIES AND INVENTIONS
Ownership rights to discoveries and inventions rest entirely with
the inventors, except when the shopright1 of the University is applicable
and establishes proportional rights in the discovery or invention.
The University reserves the right to transfer its rights in discoveries
and inventions to the California State University Long Beach Foundation
(Foundation) with instructions to the Foundation to patent (or have
patented) discoveries and inventions and make (or have made) good
faith efforts to reduce concepts to practice and arrange for production
and sale.
In the event of a determination that the University has no interest
in a discovery, invention, or patent, or only a small interest (typically
one too small to justify the expense of pursuing the interest),
it will provide the discoverer or inventors with a release of University
interest which entitles the employees to pursue patent at their
own initiative and expense.
The University shall not relinquish without compensation a majority
or other substantial interest in a discovery, invention, or patent
to an employee or third parties. However, the inventors and/or the
University may wish to declare an invention or discovery to be in
the public domain. Both parties must agree to such a declaration.
Without such an agreement, the parties will conclude an agreement
in which the University is compensated for its interest in the invention
or discovery.
Provisions relating to ownership of discoveries and inventions involving
external funding agencies, Federal and others, are subject to frequent
change. Appendix A to this document discusses these matters.
All other provisions notwithstanding, employees making discoveries
and inventions, regardless of whether patented or not, which are
marketed commercially and which produce a taxable income, must assure
repayment to the State of California for all costs incurred by the
University in support of the research leading to the discovery or
invention, patent application, production, marketing, or sales of
products incorporating the discovery or invention.
________________________
1 University shopright (shop right) establishes the interest of
the University in the intellectual property based on the use of
University funds (including all research and creative activities
grant programs), facilities (including computer time and utilities),
equipment, or supplies at any time in the process of discovery or
invention or reduction to practice of such a discovery or invention.
University shopright may be shared with individuals or external
funding agencies.
DISCLOSURE OF DISCOVERIES AND INVENTIONS
Employees are required to disclose to the University all patentable
discoveries or inventions made by them while under hire or contract
for employment in the University, whether or not in the performance
of their regular and special assignments in the University. In the
event that University support in the form of financial assistance,
the use of physical facilities, or other factors establishing University
shopright is provided, the University may have an equity interest
in any income derived from such activity.
A formal invention disclosure is a complete description of a discovery
or invention, completed by the inventor on the attached form and
delivered to the Office of University Research. A formal invention
disclosure is most important to an inventor in establishing priority.
Discoverers and inventors should be able to provide proper notebook
entries, sketches, descriptions, and be able to demonstrate the
exercise of diligence in developing the concepts through successive
stages, if possible the eventual reduction to practice of the invention,
and finally the preparation of drawings, specifications and claims
as a part of the disclosure and preparatory to the filing of patent
applications or the making of a request to an appropriate agency
to do so. The invention disclosure should be signed and dated.
ADVISORY COMMITTEE FOR PATENTS AND COPYRIGHTS (ACPC)
The review of individual cases with the potential for patents and
copyrights2 shall be conducted by a six-member Advisory Committee
for Patent and Copyrights (ACPC). The Chair of the Graduate Council
in consultation with the Dean of Graduate Studies shall appoint
three members, at least one of which must be a current member of
the Graduate Council, and the Chair of the Scholarly and Creative
Activity Committee in consultation with the Director of Research
shall appoint three members, at least one of which must be a current
member of the Scholarly and Creative Activity Committee.
Employees should consult with the ACPC whenever there is any question
about policies or procedures.
Authority
The ACPC is charged to:
(1) review each disclosure of discovery, invention, or copyrightable
material submitted under the provisions of this policy by a University
employee;
(2) formulate a recommendation to the Provost regarding the University's
interest based on the employee's use of University facilities and
equipment; and
(3) as necessary, make recommendations concerning University policies
on discoveries, inventions, and patent and copyright matters for
review by the Scholarly and Creative Activity Committee and Academic
Senate.
All ACPC recommendations regarding individual cases of invention,
discovery, and other forms of scholarly productivity will be sent
to the Provost, who will in turn confer with the President of the
University on those items requiring assertion of University rights
to intellectual property.
In those matters where action is required as a consequence of a
decision to proceed with legal patent or copyright activity, the
Vice President for Administration and Finance shall provide a patent
business plan. The President may proceed on behalf of the University
and where appropriate on behalf of the discoverer or inventor; or
he may recommend assignment of the University rights to the University
Foundation which will subsequently continue to act on behalf of
the University, the author or inventor, and any involved sponsors.
_________________________
2 As referred to in this document, copyright is included as a possible
outcome for those situations which may, under the development of
legal precedent, now be or become ambiguous, such as computer software.
This document is not intended to govern copyright of intellectual
property in non-ambiguous cases, like books, films, videos, etc.
BUSINESS AGREEMENTS WITH UNIVERSITY EMPLOYEES
The realization of profits from patents is problematic and occurs
over long periods of time. Each patent administered by the University
Foundation on behalf of the inventor and the University will have
unique circumstances relating to the application, perfection, and
extension of the patent as well as the costs of patenting, reducing
to practice, commercialization, and negotiation of royalty rates.
Royalties will be paid to inventors in accordance with the Foundation
patent business plan policy and to the extent of inventor's rights
in the discovery or invention, taking into consideration the formal
advice of the ACPC.
All income in excess of that used to recover costs of patent application
and management of defined costs in the business plan shall be assigned
to the University and be directed to support of research, scholarship,
and creative activities. The Vice President for Administration and
Finance will report annually to the Academic Senate concerning such
funds.
APPENDIX A -- Involvement of External Funding Agencies
ATTACHMENT -- Disclosure of Discovery or Invention Form
APPENDIX A
INVOLVEMENT OF EXTERNAL FUNDING AGENCIES
Under conditions imposed by Federal, State, and other public grant
and contract funding agencies, University employees may, as a condition
of funding, enter (be entered) into agreements to assign inventions
to the University or to the funding agency in conformance with the
sponsoring agency's policy.
All Federal grants and contracts require disclosure of inventions
and discoveries to the funding agency and convey a restricted right
to use of the invention or discovery to the U.S. government.
Industrial Support
In accepting funding from industry for the purpose of research,
it is the general policy of the University that the funding be used
for educational purposes, public service, and/or the extension of
the boundaries of knowledge. If the University accepts funding from
an industrial corporation for these purposes, it shall be with the
following written understandings:
Agreements covering such projects shall state the following:
"It is understood by the Sponsor (industry supporting the research)
that any inventions, patentable or otherwise, conceived or first
reduced to practice in the course of the sponsored activity by University
employees shall be governed by University patent policy which requires
that title to any of said inventions be vested in California State
University, Long Beach or its designee, which designation must be
handled specially and in accordance with the aforesaid University
patent policies."
If an outside industrial sponsor proposes a procedure at variance
with that outlined in previous paragraphs, the Director of University
Research is authorized to reach an agreement with the sponsor and
University employees which will not violate the general principles
set forth here and which will protect the equities and satisfy the
requirements of all involved parties.
Those sponsored projects involving testing of materials, compounds,
or apparatus should be specially handled. Among the additional special
provisions which are recommended for those sponsored projects, in
addition to the patent provision as set forth above, the covering
agreement should state the following:
"California State University, Long Beach does not accept any materials,
compounds, and/or apparatus hereunder or information with respect
thereto under any restrictions whatsoever. It is assumed by the
University that to the degree that the Sponsor's intent is to file
patent applications on said materials, compounds, and/or apparatus
supplied hereunder, the Sponsor will have done so prior to the delivery
of the same to University employees or University property.
"The Sponsor hereby agrees that he/she shall not use information
derived by the University or its employees in pursuance of the work
of the sponsored project in the prosecution of a patent application
in either the United States Patent Office or that of other jurisdictions
without the written permission of the University."
In agreements between business firms and the University covering
work not of a predominately research nature in which the sponsoring
firm bears a major portion of the cost, the patent policy of the
University shall apply.
Conflicts
Conflicts involving patentable inventions and discoveries may arise
when employees of the University enter into agreements to do private
consulting for firms and organizations outside the University. Such
agreements frequently contain provisions as to the licensing or
assignment of the consultant's inventions and patents. Unless this
provision is narrowly worded, it usually will include areas in which
the consultant's University work lies and thus comes into conflict
with the obligations of the University employees under the main
body of this policy, either with respect to the rights of the University
itself, the employee in his/her invention, or the rights of a sponsor
of research in the same field of subject matter.
Because of the possibility of such conflicts and of future misunderstanding,
litigation, or embarrassment, it is urged that, with this point
in mind, University employees carefully examine consulting agreements
before they sign them. If problems arise or the issues are not clear,
University employees are urged to consult with the Director of University
Research.
The contribution of ideas and assistance to University employees
from sources outside the University can lead to subsequent problems
of equity if patentable concepts evolve.
CALIFORNIA STATE UNIVERSITY, LONG BEACH
Disclosure of Discovery or Invention
TO: Director, Office of University Research
FROM: ______________________________________________________________________________
(address)_______________________________________________________________________________
(telephone) _____________________________________________________________________________
This is to inform you that I (we) have produced/ discovered/ invented:
(describe, giving a formal title to the material or concept)
_______________________________________________________________________________________
_______________________________________________________________________________________
If copyrightable, the materials were completed on __________________
If patentable, the discovery or invention was first conceived on
____________________;
developed during the period ___________________ to ___________________;
and reduced to practice on ____________________.
Description:
Classify the work; if a discovery or invention, please indicate
whether the concept is "a new process," "a composition of matter,"
"a device," "one or more products," "a new use or improvement to
an existing product or process."
_______________________________________________________________________________________
_______________________________________________________________________________________
Describe the basic characteristics: __________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
(attach additional sheets as necessary)
Comment on possible uses for the materials, discovery or invention:
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
Describe the resources and circumstances of their use in the production,
discovery, or invention (including University and third party funds
identified by grant, contract, or award).
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
I understand that additional information may be required by the
University to resolve questions of ownership, equity, and to provide
for copyright or patent applications.
_______________________________________________________________________________________
signature(s) date
EFFECTIVE: Fall 1995
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