Skip to main content

University Policy 130

University Patent Policy

Initially approved: Board of Trustees adopted a statement of policies and procedures regarding patents in in December, 1983 
Revised:  March 5, 2021
Policy Topic:  Governance and Administration
Administering Office:  Office of the Provost and Office of Technology Transfer

I. POLICY STATEMENT

Western Carolina University (“WCU” or “University”) owns worldwide right, title, and interest in inventions of University personnel and students that are conceived or first reduced to practice as a part of or as a result of University research, activities within the scope of the inventor’s employment by the University, and activities involving the use of University time, facilities, staff, materials, University information not available to the public, or funds administered by the University. This policy has been established to ensure that those inventions in which the University has an interest will be utilized in a manner consistent with the public good through patents, licenses, or otherwise.

II. SCOPE

This policy applies to all University employees, both full and part time, including faculty, other professionals exempt from the Human Resources Act, staff subject to the Human Resources Act, students of the University, and any other person or entity using facilities, staff or funds subject to control or supervision by the University including independent contractors.

This document, as amended from time to time, shall be deemed to constitute part of the conditions of employment of every employee, including student employees, and of the conditions of admission, enrollment and attendance by every student of the University. 

III. DEFINITIONS

Covered Individual means all University employees, both full and part time, including faculty, other professionals exempt from the Human Resources Act, staff subject to the Human Resources Act, students of the University, and any other person or entity using facilities, staff or funds subject to control or supervision by the University including independent contractors.

Invention means an invention or discovery of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, or any variety of plant that is conceived or first reduced to practice as a part of or as a result of University research, activities within the scope of the inventor’s employment by the University, and activities involving the use of University time, facilities, staff, materials, University information not available to the public, or funds administered by the University.

Proceeds means revenue paid to the University after any cost reimbursement has been made to the University or the inventor(s) by the licensor, assignee, or other transferee of a patented work of allowable costs directly related to the patent.

University Facilities means any facility, including equipment and material, available to the inventor(s) as a direct result of the inventor’s affiliation with the University, and which would not be available to a non-University individual on the same basis.

IV. RESPONSIBILITIES OF COVERED INDIVIDUALS

A.  Duty to Disclose Discoveries and Inventions

All Covered Individuals have a duty to disclose all inventions and discoveries promptly in accordance with this policy.  The duty to disclose arises as soon as the individual has reason to believe, based on his or her own knowledge or upon information supplied by others, that the invention or discovery may be patentable. 

To disclose the invention, the inventor(s) must complete a University disclosure form describing the invention and submit the form to the Office of Technology Transfer. 

B.  Notify Prior to Public Disclosure; Publication

Upon submission of an invention disclosure form to the Office of Technology Transfer, the inventor shall notify the Office of Technology Transfer of any acceptance for publication, including conference proceedings and abstracts, of any manuscript describing the invention or of any sale or public use made or planned by the inventor.

If an invention is disclosed to any person who is not employed by the University or working in cooperation with the University upon that invention, a record shall be kept of the date and extent of the disclosure, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.

In the event that the University decides to pursue patent protection for the invention (including a provisional patent), it may request that the inventor(s) delay publication. The Office of Technology Transfer will provide the inventor(s) with a written request indicating a reasonable length of time that will be needed to pursue the patent application process.

C.  Execute Promptly All Contracts, Assignments, Waivers and/or Other Legal Documents

As to any invention in which WCU has an interest, the inventor, upon request, shall execute promptly all contracts, assignments, waivers or other legal documents necessary to vest in WCU or its assignees any or all rights to the invention, including complete assignment of any patents or patent applications relating to the invention.

D.  Consulting and IP agreements, and Use of University Name

Covered Individuals may not: (a) sign consulting or intellectual property rights agreements with outside persons or organizations which may abrogate WCU's rights and interests as stated in this Policy or as provided in any grant or contract funding the invention, or (b) without prior authorization use the name of WCU or any of its units in connection with any invention in which WCU has a right or interest.

Prior to signing any agreement that deals with patent rights, trade secrets, or the like, where any University time, facilities, materials or other resources are involved, Covered Individuals must bring the proposed agreement to the attention of the Office of Legal Counsel for review and approval. Legal Counsel will determine whether the agreement conforms with system and WCU policies and any related procedures. If the agreement violates policy, Covered Individuals must obtain a waiver of University rights or otherwise modify the consulting agreement to conform with these policies, as is determined by the University in its sole discretion.

V. DISCLOSURE ADMINISTRATION AND OWNERSHIP

A.     Disclosure Administration

Upon receiving a completed invention disclosure form, the Office of Technology Transfer will promptly acknowledge receipt. The Office of Technology Transfer shall, in its discretion, disclose to the Patent Committee each disclosure submitted that warrants further review by the Patent Committee.  As soon as practicably possible after receipt of the disclosure or the recommendation of the Patent Committee, the Office of Technology Transfer will notify the inventor(s) in writing of the University’s decision regarding ownership and disposition.

B.     Determination of Ownership

If the inventor believes that the invention was made: (a) on the inventor’s own time, (b) outside the scope of employment or matriculation at WCU, and (c) without WCU facilities, materials, or resources and if the inventor does not wish to assign the rights in the invention to WCU, the inventor shall, in the invention disclosure process, request that the Office of Technology Transfer examine the respective rights of WCU and the inventor to the invention. The following points shall be included in the request:

      1. The circumstances under which the invention was made and developed;
      2. The inventor’s duties and responsibilities at WCU at the time of the making of the invention;
      3. Whether the inventor requests a waiver or release of any WCU claims or acknowledgement that WCU has no claim;
      4. Whether the inventor wishes a patent application to be prosecuted by WCU, if it should be determined that an assignment of the invention to WCU is not required under this Policy; and
      5. The extent to which the inventor would be willing to voluntarily assign domestic and foreign rights of the invention to WCU if it should be determined that an assignment of the invention to WCU is not required under this Policy.

The Director of the Office of Technology Transfer, or designee, shall decide pursuant to the terms of this Policy, whether WCU likely has ownership of such invention and shall notify the inventor, in writing, of the decision. If unsatisfied with the decision of the Office of Technology Transfer, the inventor may petition the Patent Committee, in writing, to review such decision as provided for in Section VII. 

C.    Waiver of WCU Rights

Upon request by the inventor(s) to the Office of Technology Transfer, the University may, in its discretion and upon such terms as it deems appropriate, cause its rights to the invention or discovery, if any, be released and waived to the inventor(s). The determination will be made by the Chancellor in consultation with the Office of Technology Transfer and the Patent Committee. Circumstances in which the University may consider waiver or release of rights include, but aren’t limited to:

  • University declines to pursue a patent for any reason; 
  • University abandons a patent application; and/or
  • University obtains a patent, but no arrangement has been made for commercial development within a reasonable period from the date of the issuance of the patent.

D.    Experimental Use Privilege

Regardless of patent status, both the University and the inventor(s) shall have the right to non-commercial use of the invention as long as said use does not harm the rights of either party. If experimental use by the non-patent owning party leads directly to commercial products or processes, the patent holder shall share in the resulting revenues, as described in Section VI.A of this policy.

E.     Special Patent Ownership Conditions

Under the terms of certain contracts and sponsored research agreements between the University and various agencies of government, private and public corporations and private interests, the University is or may be required to assign or license all patent rights to the contracting party.  The University retains the right to enter into such agreements whenever such action is considered to be in its best interest and in the public interest.  

VI. PATENT MANAGEMENT

A.    Revenue Sharing

The University shall share revenue which it receives from patents or inventions with the inventors.  As noted in Section V.E specific provisions of grants or contracts may govern rights and revenue distribution regarding inventions made in connection with sponsored research; consequently, revenues the University receives from such inventions may be exclusive of payments of royalty shares to sponsors or contractors. Moreover, the University expects to contract with outside persons or organizations for the obtaining, managing and defending of patents, and any royalty shares of expenses contractually committed to such persons or organizations may be deducted before revenues accrue to the University.

The revenues (net, if applicable per the preceding paragraph) which the University receives from a patent or invention will be applied first to reimburse the University for any incremental expenses incurred by it in obtaining and maintaining patents and/or in marketing, licensing and defending patents or licensable inventions. After provision for such expenses, the inventor is eligible to receive 50% of license fees, royalties, or the net proceeds from the sale of the patent. In the case of co-inventors, each such percentage share shall be subdivided equally among them, unless the University in its sole discretion determines a different share to be appropriate. Applicable laws, regulations or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. 

B.     Disposition of the University’s Share of Proceeds

Proceeds earned by the University from its patent and licensing activity shall be held in a separate Patent Trust Fund and used to support research, technology transfer and commercialization activities.  Allocation of the Patent Trust Fund will be made by the Chancellor, or designee, after receiving recommendations from the Patent Committee.  The department and college that employ the inventor(s) (and/or that furnished the research facilities) will be given preferential consideration, though not necessarily exclusive consideration, in the allocation.

VII. Dispute Resolution

Any Covered Individual may seek resolution of a dispute regarding ownership or commercialization of a patented work or income sharing governed by this Policy by filing a written request with the Chair of the Patent Committee or the Chancellor, who shall forward such request to the Chair of the Patent Committee.  The Patent Committee has exclusive jurisdiction to hear disputes regarding ownership of a patented work or income sharing governed by this policy and make recommendations to the Chancellor.

VIII. UNIVERSITY PATENT COMMITTEE

A.   Size and Composition of the Committee

The Chancellor shall appoint the members of a University Patent Committee (“Patent Committee” or “Committee”), consisting of no less than three members, one of whom shall be designated by the Chancellor to serve as the Chair. In addition to the members appointed by the Chancellor, the committee shall include one member of the Office of Technology Transfer and one member of the Office of Legal Counsel as ex officio, non-voting members.  Members of the Committee may be required to sign a University non-disclosure agreement. 

B. Duties of the Patent Committee

The Patent Committee shall have such responsibilities as the Chancellor may specify including, but not limited to, the following:

  1. The Committee shall review each disclosure submitted to it and recommend to the Office of Technology Transfer the proper disposition of the invention to secure the interests of the University, the inventor, the sponsor, if any, and the public. 
  2. The Committee shall review these policies and recommend amendments including additional procedures for their implementation to the Chancellor or designee;
  3. The Committee shall hear disputes when questions of invention ownership arise between the University and Covered Individuals. The Committee shall make recommendations for resolving these disputes to the Chancellor or designee;
  4. The Committee shall recommend to the Chancellor the expenditure of the Patent Trust Fund;
  5. The Committee shall make such recommendations as are deemed appropriate to encourage disclosure and assure prompt and expeditious handling, evaluation, and prosecution of patent opportunities;
  6. The Committee shall recommend courses of action that the University might take when a company wishes to license a patent; 
  7. The Committee shall recommend courses of action for the University when the inventor(s) wishes to 'spin off' a company;
  8. The Committee shall make any recommendation as necessary or desirable related to the commercialization of an invention.

IX. POLICY REVIEW

This policy shall be reviewed and revised as necessary every four (4) years.

X. RELATED POLICIES AND RESOURCES

UNC Policy Manual

University Policy 54 - Conflict of Interest; External Activities for Pay; Conflicts of Commitment

University Policy 84 - Copyright Policy

Office of Web Services