3341-7-03. Patent policy

(A) Policy statement purpose

The purpose of this policy is to establish the rights and procedures for all discoveries or inventions, including patents resulting from any research or investigation conducted in whole or in part in any laboratory or facility of Bowling Green state university.

(B) Policy

(1) Pursuant to section 3345.14 of the Revised Code and as a condition of university employment, all right, title and interest in discoveries or inventions, including patents thereon resulting from any research or investigation conducted in whole or in part in any laboratory or facility of the Bowling Green state university, (BGSU) shall be the sole and exclusive property of BGSU. Assignments or waivers of such rights, titles, and interests may be made by BGSU to external sponsoring agencies or others, as provided in subsequent clauses of this policy.

(2) Promptly upon the conception of a potentially patentable invention or discovery and before either filing for patent or reducing the invention or discovery to practice, the inventor shall disclose to BGSU such invention or discovery and shall assign, in writing, all rights to the invention or discovery to BGSU. Such disclosure shall contain a general description of the field of the invention or discovery, a specific disclosure of the invention or discovery, any prior part of which the inventor(s) is aware, a general statement (if possible) of the economics of the invention or discovery, a listing of the notebooks or other records containing the first description of the invention or discovery, the name of the person to whom the invention or discovery was first disclosed, and the date of such disclosure. Such disclosure shall also contain an election as to the method for payment of patenting and/or licensing and related costs and schedule of distribution of net income received as provided in subsequent clauses of this policy.

(3) All information which may reasonably be related to inventions or discoveries shall be held confidential by the inventor and shall be disclosed only to BGSU or others directed by the officers and agents of BGSU.

(4) All information as described in paragraph above shall be maintained in confidence unless such information is, or becomes, publicly available through no fault to the inventor or unless written permission is obtained from an authorized officer or agent of BGSU to disclose such information.

(5) Whenever requested by BGSU, the inventor shall make, sign, execute, and deliver all applications, assignments, and other papers which, in the opinion of BGSU or its counsel, are deemed necessary, proper, or desirable for obtaining letters patent of the United States and any other countries, and for transferring all such discoveries, inventions, improvements, patentable ideas, methods, processes, trade secrets, and letters patent and applications therefore to BGSU, its successors, and assigns.

(6) Royalty distributions shall be made in accordance with article 25, section 4.9 of the collective bargaining agreement.

(7) Net income from any invention or discovery shall consist of earnings received by BGSU from the invention or discovery after payment of all costs incurred by the BGSU or the inventor(s) as applicable in connection with the invention or discovery and beginning at the moment of invention. Such costs shall include the cost of pursuing patent protection, and developing, marketing, and licensing the invention.

If there is a plurality of joint inventors, that part of the net income accruing to the inventors will be distributed equally among the inventors unless some other distribution is specifically requested in writing by the inventors. If a plurality of institutions is involved in an invention, an agreement will be negotiated by the institutions in consultation with the inventors.

(8) All income received pursuant to an invention or discovery shall be deposited in a separate university account from which shall be deducted an amount equal to the sum of all BGSU or inventor (whichever is applicable) costs paid or billed for obtaining a patent, license, or related activities. After such deductions have been made and distributed, net income distribution according to the elected schedule shall be made on an annual basis.

(9) The president or designee shall appoint a patent advisory committee consisting of three or more faculty members and two or more administrative staff members of BGSU. Such committee shall:

(a) Review all applicable inventions and discoveries and determine and advise in each individual case whether a discovery or invention resulted from research, investigation, or activity conducted in any laboratory or facility of the BGSU and is the property of BGSU.

(b) Determine and advise the president whether or not the discovery or invention, which is the property of BGSU, has a sufficient value or is of a sufficient interest to BGSU to warrant its retention; or, if the same should be relinquished to the inventor or otherwise dealt with.

(c) Advise the president about acquiring on behalf of BGSU, by agreement, on such terms and conditions as it deems appropriate, an interest in such patentable discoveries and inventions in those situations in which it shall have been determined that the discovery or invention does not otherwise belong to BGSU.

(d) Determine and advise the president whether or not to pursue the patentability and development of a discovery or invention that is the property of BGSU.

(e) Recommend to the president appropriate courses of action, including prospective purchasers or licensees of inventions or discoveries, and advise the president on the terms and conditions of any agreements.

(10) The president of BGSU is hereby empowered and authorized, after receiving the advice of the patent advisory committee, and after reporting to the board of trustees, to act on or reject the patent advisory committee's determinations, and to sell, assign, convey, or grant on behalf of BGSU any such discoveries and inventions or any rights or shares in such discoveries and inventions, including patent rights, to such persons, firms, or governmental agencies for such consideration or upon such terms and conditions, including dedication to the public, as shall be deemed by the president, after consultation with the inventors, to be in the proper and best interest of BGSU.

(11) Within six months after disclosure of an invention, the president of BGSU shall

(a) Elect whether to apply for a United States patent and shall initiate the patent search;

(b) Relinquish all rights to the invention to the inventor(s); or

(c) Indicate how the invention shall be otherwise dealt with.

(12) The president or designee is authorized by the board of trustees to make arrangements with external sponsors of research to obtain research funding from such sponsors. Such arrangements may include, but are not limited to, assigning all rights to inventions or discoveries to the sponsor, or granting an exclusive or nonexclusive license to the sponsor with or without royalties to be returned to BGSU. Any such agreement must be in writing and signed by an authorized officer or agent of BGSU. Such agreements will be in consultation with the investigator(s).

Effective: 11/14/2017
Promulgated Under: 111.15
Statutory Authority: 3345
Rule Amplifies: 3345
Prior Effective Dates: 3/20/2015