A patentable device resulting from a faculty or staff member’s efforts belongs principally to the creator regardless of the extent of use of the University’s resources.
When the invention required substantial use of university resources, the University asserts a nondilutable one-percent ownership interest in the patented device, and the right to use the patented device in its internally administered programs of teaching, research, and public service on a perpetual, royalty-free, non-exclusive basis.
Substantial use occurs when the invention of the device requires use of university resources beyond those allocated to the faculty in support of their academic work within their respective department or school, or to other employees in support of their normal responsibilities. Although it is the responsibility of the school dean or equivalent supervisor to evaluate situations and determine if substantial use of resources occurred in the development of a patented work, faculty members or other employees have an obligation to notify their supervisor or school dean when they believe that their work involved more than nominal use. Patented materials developed under these conditions are required to be the subject of a written agreement between the researcher and the school dean or the chief administrative officer of the unit involved, or another authorized University representative.
The following are criteria and examples for establishment of substantial use:
- Substantial use of funding from gifts to the university to support development of devices involved.
- Use of specifically designated university funds or extensive use of the services of a support unit financed by the university used in the production of a patented device.
- Production of the patented work under specific terms of an externally sponsored research grant or contract.
Generally, an invention will not be considered to have required substantial use of university resources if:
- Only a minimal amount of university funds have been used in connection with the research; and
- The invention has been developed outside of the assigned area of research of the inventor under a University-directed research effort; and
- Only a minimal amount of time has been spent using significant university facilities or only insignificant facilities and equipment have been utilized. Use of office, library, machine shop facilities, and of desktop and laptop computers are examples of facilities and equipment that are not considered significant.
Undergraduate, graduate, non-degree, and not-for-credit students own inventions they create unless the invention is subject to another provision of this section.
Patent Responsibilities of Personnel and Students
Personnel and students shall disclose patented works that are potentially subject to University’s one-percent ownership interest and royalty-free use to the President or designee fully, and in writing. When uncertain about the University’s ownership interest, personnel and students shall disclose.
Sharing of Revenue
The inventor shall remit to the Norwich University its share of revenue from inventions. In all cases, agreements regarding revenue distribution shall be specified in a written agreement. See Appendix G (PDF) for a simple revenue distribution model.
Personnel and students may not:
- sign patent agreements or other documents (e.g., invention reports, licenses, assignments, Material Transfer Agreements, or Confidential Disclosure Agreements) which abrogate the University’s rights;
- make unauthorized use of the name of the University;
- transfer material relating to intellectual property outside the University, except pursuant to a properly authorized Material Transfer Agreement.
Obtaining and Maintaining Patent Protection
It shall be the sole responsibility of the inventor to obtain and maintain patent protection for any invention. Under no circumstances shall Norwich University be obligated to assume responsibility for such efforts. However, in the event that the inventor elects to transfer, sell, assign, or abandon any patent right, Norwich University shall have the first right of refusal in connection with such action and only then shall assume responsibility for such patent right after title to the invention has passed to Norwich University.
Responsibilities of University
Sharing of Revenue
Income earned by Norwich University from patent activity shall be held in a separate fund to support research. The particular unit of the institution employing the inventor or furnishing the research facilities will be given preferential consideration, though not necessarily exclusive consideration, in the allocation of such royalty income by the institution. Allocations from such fund shall be made by the Vice President for Academic Affairs.