UO Policies - Inventions & Patents

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In order to meet UO’s public university responsibilities, UO employees are required to disclose any inventions they may make to Innovation Partnership Services (IPS). This is an important element of the transparency expected by the public from its institutions of higher education.  Inventions are any new and useful processes, machines, devices, manufacture, composition of matter, or improvements to them. Most of us think of inventions as those ideas that are or may be patentable. 

 

For all inventions made with sponsor awarded funds or funds administered through UO, and for all inventions that are work related, inventors assign their ownership of the invention to UO. It is important to remember that assignment of ownership does not change inventorship.  US Patent law vests inventorship with the actual inventor(s) who are the initial owners of any prospective patent rights as well, absent an obligation to assign ownership to an employer or other entity. 

 

UO sometimes waives ownership of these inventions back to the funding agency or the inventor depending on whether patenting makes sense for UO and the acceleration of adoption of the inventive work. For inventions where no funds or UO resources were used, and which are not work related, UO can affirm that it will not assert ownership.  This comes up most often in relation to outside consulting work.

 

Patent guidelines at UO - See more detailed explanation of each below.

1) UO employees assign work related inventions to the university.

2) UO employees have a responsibility to disclose to IPS any inventions they make.

3) UO will provide a proactive waiver of ownership for non-work related inventions, but these must first be disclosed to IPS and be approved through the waiver process (which acts in concert with the conflict of commitment/conflict of interest approval process).

4) UO may waive work related inventions, but these must first be disclosed to IPS and go through the waiver process.

5) UO, in consultation with inventors, will make UO-owned inventions available to industry and the public in an effective and non-discriminatory manner, obtain reasonable royalties for use in furthering institutional education and research objectives, and reward inventors through participation in net royalty income received.

 

Ownership

1) UO employee work related inventions are assigned to UO.

UO reserves ownership rights to all work related inventions and inventions made with institutional resources (IMD 6.225). Inventions made with the use of grant, gift, or sponsored research funds count as having been made with institutional resources. As a condition of employment, employees shall agree to assign rights in those items to the university (OAR 580-43-0011). UO can waive this ownership back to the inventors or funding agencies in certain circumstances as outlined in Waivers section below.

Disclosure

2) UO employees disclose to IPS any inventions they make.

As a condition of employment, UO employees are responsible for disclosing to the university, through IPS, all inventions and technological improvements made during the conduct of normal activities (OAR 580-43-0011).  IPS understands that you may not always know or recognize when an innovation may or may not be patentable, and we encourage faculty and staff to contact us to explore this possibility with regard to their projects. Typically patents are only useful when an invention has commercial potential, but there are a wide variety of different ways to protect your intellectual property and our team can discuss all of your options with you and how to best facilitate project goals.  Our federal sponsors have specific disclosure requirements that are important for all of us to meet. Please see the Bayh-Dole Act.

Waivers

3) UO will provide a proactive waiver of ownership for non-work related inventions, but these must first be disclosed to IPS and go through the waiver process.

UO’s rights in an invention can be waived if it is determined that the invention is not related to work or an assigned project and that the development of the invention used no or minimal use of institutional funds or facilities (IMD 6.215).  In order for the preceding to apply, no external or internal funding through the university can have been used.  If this is the case, a statement can be issued which waives any institution claim on the invention. In order for this statement to be issued, however, the institution must first know enough about the invention so that it can work with all of the stakeholders (department, college, center/institute) to go through our waiver process to document the determination.  Even if a UO employee has an invention that was made outside of work responsibilities and with no or minimal use of institution resources (and NO university funding, internal or external), UO requires that the employee disclose that invention to IPS so the waiver of the university’s rights (including dept, college, and center/institute) can be determined and documented.  This is actually a benefit to our employee inventors, as it can proactively clear up the questions of ownership of an invention and provide certainty to their partners, and it also acts as an important part of providing transparency to the public and actively managing any potential conflicts of interest that may arise from the intersection of this work with their responsibilities at UO.

4) UO may waive work related inventions, but these must first be fully disclosed to IPS and go through the waiver process.

If UO determines that a disclosed invention is incidental to the employee inventor’s work assignment, or that UO has no interest in an invention, and decides to forego patenting of an invention, then UO may at its discretion complete a waiver process to waive its rights to such an invention (IMD 6.215, 6.235).  In this case, if the invention was funded by a federal funding agency, UO would waive the rights back to the funding agency and the employee inventor would need to petition the agency to have the rights returned to them.  We can help you with the petitioning process.  When waivers are made they also seek to ensure that potential conflicts of interest are managed.

Patent Licensing

5) UO, in consultation with inventors, will make UO-owned inventions available to industry and the public in an effective and non-discriminatory manner, obtain reasonable royalties for use in furthering institutional education and research objectives, and reward inventors through participation in net royalty income received.

Although IPS focuses on using patents to promote use and impact, the directive above must also be taken into consideration, as we license patents and patent applications to both established companies and faculty start-ups.  We establish monetary compensation terms that are fair and appropriate. IPS strives to build the compensation structure of our licensing deals in a way that best fits the needs of the innovation and the needs of the company.

At the same time, IPS ensures that license language allows the institution and inventors to produce and use the invention or process for their own educational or research purposes, and the inventor is able to publish the findings of research and to continue with research related to the process or invention including publication of future findings. If you have any questions about protecting the rights to practice your research or future commercialization possibilities, please call or email us. Our office is passionate about the amazing inventions created at UO and we are happy to answer any of your questions.

To read about licensing university technologies in more detail, please see Nine Points to Consider in Licensing University Technology.