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THE PATENT REGULATION
- Purpose
- Application of Regulations
- Definitions
- Inventions by Employees of the University
- Rights of University and of Employees
- Reports of Inventions
- Inventor Requests for Waiver of University Rights
- Publication, Public Use and Sale
- Action by Supervisor or Department Head
- The Patent Committee
- Appointment
- Duties
- The Patent Administrator
- Appointment
- Duties
- Notification of Abandonment
- Use of Funds Received by University Relating to
Inventions, Patents and Plant Varieties
- For Inventions and Discoveries
- For Plant Varieties
Footnotes to Patent Regulations
THE PATENT REGULATIONS
The Patent Regulations are contained in the Collected Rules and Regulations
of the University
of Missouri, Section 100.020. The regulations form a part of the employment
contract with an employee and therefore are a condition of employment; and
further, they apply to all students, paid or unpaid, utilizing University
facilities.
In brief, the policy stipulates that University employees and students are
"required and shall upon request assign to The Curators of the University
of Missouri all domestic and foreign rights to any Invention made by the
employee within the general scope of her/his duties as an employee of the
University...". In return, the University assumes responsibility for the
expense of securing patents and negotiation of licensing agreements.
COLLECTED RULES & REGULATIONS
UNIVERSITY OF MISSOURI
Section 100.020
Chapter: Patent & Copyright Law
100.020 PATENT AND PLANT VARIETY REGULATIONS
A. PURPOSE - These regulations are adopted by The
Curators of the University of Missouri in order to:
- Secure for the people of the State of Missouri and the United States the
full benefits of research and investigation made by the University of
Missouri;
- Establish the definite rights and obligations of employees with respect to
any Invention or Plant Variety made by them during employment by the
University;
- Establish a uniform procedure by which these rights and obligations may be
equitably determined in each case; and
- Encourage and recognize individual and cooperative achievement in research
and investigation.
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B. APPLICATION OF REGULATIONS - These patent and
Plant Variety regulations form a part of the employment contract. These
regulations constitute a condition of employment of all employees of the
University, and shall be effective as to all Inventions and Plant Varieties made
during any period of employment from and after the date of their adoption. These
regulations shall also apply to all students utilizing University facilities.
If a patent or Plant Variety Protection application is filed upon an
Invention or Plant Variety which has been made by an employee of the University
within the general scope of her/his duties as defined in Section 100.020 D.1
hereof, but which has not been reported to the Patent Committee pursuant to
these regulations, title to such Invention or Plant Variety shall immediately
vest in the University and the contract of employment shall be considered as an
assignment of such rights, and each employee as a condition of employment agrees
to execute any assignments requested by the University.
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C. DEFINITIONS
1. "University" as used herein shall be deemed to mean The
Curators of the University of Missouri. Any action or consent on the part of the
University herein shall be an action or consent duly taken or given by the Board
of Curators, or its authorized officer.
2. "Employee" as used herein shall be deemed to mean any
person receiving compensation from the University for services rendered,
regardless of whether the employee be full-time or part-time. It shall also
include any person receiving compensation paid through the University from any
funds placed in its hands for distribution. Students and graduate assistants
with or without monetary compensation working on any project under the direction
and control of the University shall be subject to these regulations to the same
extent as an employee.
3. "Supervisor" shall mean any employee of the University in
charge of a project under the supervision of the head of a department or some
superior officer.
4. "Head of the Department" shall mean the person having
charge of the department of the employee reporting the Invention, and in case
there be no such head of the department, the Dean shall perform the duties
herein provided for the head of the department.
5. "Dean" shall mean the Dean of the college or school
having jurisdiction over the employee, and in case of those employees not under
jurisdiction of any Dean, the business manager shall receive the reports and
perform the duties herein prescribed for the Dean.
6. "Patent Committee" shall mean the committee herein
provided in Section 100.020 E.
7. "Invention" is comprised of:
Conception of the idea (mental element); and Reduction to practice of the
inventive concept (physical element).
As used in these regulations, the term "Invention" means existence of
either the completed mental element or both the mental and physical elements,
whichever situation first occurs. (See footnote 1 at end of Section 100.020.)
8. "Plant Variety" shall mean seed varieties that can be
protected under a Certificate of Plant Variety Protection. Such varieties are
self-pollinated plant varieties.
9. "President" as used herein shall be deemed to mean the
President of the University of Missouri or her/his designee and shall include,
when applicable, the Interim President or Acting President.
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D. INVENTIONS BY EMPLOYEES OF THE UNIVERSITY
1. Rights of University and of Employees
a. The University, as the employer and as the representative of the people of
the state, shall have the ownership and control of any Invention or Plant
Variety developed in the course of the employee's service to the University.
Each employee of the University is required and shall upon request assign to The
Curators of the University of Missouri all domestic and foreign rights to any
Invention or Plant Variety made by the employee within the general scope of
her/his duties as employee of the University, unless such requirement is waived
in writing by the University. Remuneration to the employee for such assignment
is detailed in Section 100.020 E.2.c. and E.2.d.
An Invention or Plant Variety shall be considered as having been made within
the general scope of the employee's duties for the University if either of the
following conditions are met:
- Whenever the employee's duties include research or investigation, and the
Invention or Plant Variety arose in the course of such research or
investigation and is relevant to the general field of an inquiry to which
the employee was assigned; or
- Whenever the Invention or Plant Variety was in a substantial degree made
or developed through the use of University facilities or financing, or on
University time, or through the aid of University information not available
to the public.
b. An employee of the University shall be entitled to all rights resulting
from any Invention or Plant Variety which was made by her/him outside the
general scope of her/his University duties, as defined in Section 100.020 D.1.a;
for example, the University shall have no rights to Inventions or Plant
Varieties developed in the course of summer or consulting employment by an
employer other than the University of Missouri, and not resulting from research
or information obtained from University services.
c. If the University finds that an Invention or Plant Variety made by an
employee of the University outside of the general scope of her/his University
duties is used or liable to be used in the public interest and executes a
certificate of that effect, the employee may, if he/she wishes to do so, request
that an application for a patent or Certificate of Plant Variety Protection be
filed and prosecuted at the expense of the University. Under such circumstances
the Invention or Plant Variety may be manufactured and used by or for the
University, State of Missouri, or the government of the United States for
governmental purposes without the payment of any royalty.
d. Except as provided herein, the President may approve the following:
- Assignment of Inventions or Plant Varieties owned by the University.
- Licensing of Inventions or Plant Varieties by the University.
- In determining whether to grant such assignment or license, the President
shall consider all relevant factors including, but not limited to, those
factors stated in Section 100.020 D.1.f.
e. The requirement relative to the assignment of domestic and foreign patent
and Certificate of Plant Variety Protection rights, as set forth in Section
100.020 D.1.a. may be waived in whole or in part in writing by the University as
to any Invention or Plant Variety as to which it finds that the interests of the
University do not require full assignment of such rights. An employee of the
University shall not file in any domestic or foreign jurisdiction any patent
application or Plant Variety Protection Application relating to an Invention or
Plant Variety made within the general scope of his/her University duties unless
the University has waived in writing the requirement that rights be assigned to
the University. The decision on the waiver should be made within a reasonable
time following the request for waiver.
f. The patent rights and/or Certificate of Plant Variety Protection of the
University provided under these regulations may be waived, assigned or licensed
by the President of the University if the President is satisfied that the patent
and Plant Variety provision will reasonably and substantially discharge the
obligations of the University of Missouri consistent with the University's
interest. In making such determination, the President shall consider all
relevant factors including, but not limited to the following:
- The amount of royalty or other consideration offered in exchange for such
waiver, assignment or license.
- The amount of support being provided by any sponsor.
- The originator of the research concept.
- Whether the research supports work by students who will use the research
findings to fulfill educational requirements in their chosen academic
programs.
- The potential commercial value of the patentable or Plant Variety findings
which are likely to result.
- The likelihood of patentable or Plant Variety findings resulting from the
research.
- The recommendation of the principal investigator, the head of her/his
department and her/his Dean.
- The extent of utilization of University resources and facilities in the
development of the Invention or Plant Variety.
- The amount of indirect costs provided by any sponsor.
- The extent to which the University reserves the right to use any patented
or patentable products, materials, processes or Plant Variety.
- The extent to which the University can reserve its right to publish all
data of fundamental value to science and technology.
- The identity and nature of the sponsor of the research and any contractual
restrictions on waiver, assignment and licensing of research results.
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2. Reports of Inventions (See footnote 2 at the
end of Section 100.020)
a. For Inventions:
- Every Invention made by an employee of the University or a student of the
University engaged in academic work utilizing facilities of the University
shall be reported by such employee or student to the President. The Patent
Committee may prescribe the form and manner of execution of the Invention
disclosure report, and such Invention reports shall be treated as restricted
reports of the University.
- The report shall be made as promptly as possible, taking into
consideration such factors as possible publication, public use, or sale, and
the necessity for protecting the inventor's and the University's rights in
the Invention. If an inventive concept is reduced to practice after the
Invention report is filed, the patent administrator must be notified
forthwith.
- For the protection of the rights of the inventor and of the University,
laboratory notebooks- diaries, Invention reports, seed development data, and
memoranda or correspondence concerning them are to be considered University
restricted data, and should be so marked.
b.For Plant Varieties
Every Plant Variety made by an employee of the University or a student of the
University engaged in academic work utilizing facilities of the University shall
be reported by such employee or student to the employee's or student's head of
department (or Dean). The Agricultural Experiment Station may prescribe the form
and manner of filing for Certificates of Plant Variety Protection. The report of
Plant Variety and all related documents shall be filed with the Patent
Administrator prior to the licensing or release (whichever occurs first) of the
Plant Variety.
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3. Inventor Requests for Waiver of University Rights
If the inventor believes that the Invention or Plant Variety was made outside
the general scope of her/his University duties, and if he/she is unwilling to
assign the rights in the Invention or Plant Variety to the University, he/she
shall, in her/his Invention or Plant Variety report, request that the Patent
Committee determine the respective rights of the University and the inventor in
the Invention or Plant Variety, and shall also include in her/his Invention or
Plant Variety report information on the following points:
a. The circumstances under which the Invention or Plant Variety was made and
developed;
b. The employee's official duties at the time of the making of the Invention
or developing the Plant Variety;
c. Whether he/she wishes a patent or Plant Variety Protection application to
be prosecuted, if it should be determined that an assignment of the Invention or
Plant Variety to the University is not required under Section 100.020 D.1; and
d. The extent to which he/she would be willing voluntarily to assign the
rights in the Invention or Plant Variety to the University if it should be
determined that an assignment of the Invention or Plant Variety to the
University is not required under Section 100.020 D.1.
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4. Publication, Public Use and Sale
Publication, public use, or sale of an Invention or Plant Variety constitutes
a statutory bar to the granting of a United States patent or Plant Variety
Protection for the Invention or Plant Variety unless a patent or Plant Variety
Protection application is filed within one year of the date of such publication,
public use or sale. Publication, public use or sale also can be an immediate bar
to patentability in certain foreign countries. In order to preserve rights in
unpatented Inventions or Plant Varieties, it shall be the duty of the inventor,
or of her/his supervisor if the inventor is not available to make such report,
to report forthwith to the Patent Administrator any publication, public use or
sale (other than experimental) of an Invention or Plant Variety, irrespective of
whether an Invention or Plant Variety report has previously been filed. If an
Invention or Plant Variety report has not been filed, such a report, including
information concerning the public use, publication or sale, shall be filed at
once. If an Invention or Plant Variety is disclosed to any person who is not
employed by the University or working in cooperation with the University upon
that Invention or Plant Variety, 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.
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5. Action by Supervisor or Department Head
a. The preparation of an Invention or Plant Variety report and other official
correspondence on patent and Certificate of Plant Variety Protection matters is
one of the regular duties of an employee who has made an Invention or developed
a Plant Variety, and the supervisor or department head shall see that he/she is
allowed sufficient time from her/his other duties to prepare such documents. The
supervisor or department head shall ascertain that the Invention or Plant
Variety report and other papers are prepared in conformity with these
regulations; and shall check its accuracy and completeness, especially with
respect to the circumstances in which the Invention or Plant Variety was
developed, and shall forward whatever comments he/she may deem to be necessary
or desirable to the Patent Administrator. The supervisor or department head
shall add to the file whatever information he/she may have concerning the
governmental and commercial value of the Invention or Plant Variety, and the
foreign countries in which it is likely that the Invention or Plant Variety
would be the most useful and would have the greatest commercial value.
b. If the employee-inventor specifically requests that the University
determine her/his rights in the Invention or Plant Variety, the head of the
department shall state her/his conclusions with respect to such rights.
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E. THE PATENT COMMITTEE
1. Appointment
a. Notwithstanding other regulations affecting University committees, the
President of the University shall annually appoint a Patent Committee. The
Patent Administrator or other person designated by the Vice President for
Academic Affairs shall be an ex officio member of the committee and shall
provide a secretary to the committee. The General Counsel or her/his delegate
shall also be an ex officio member of the committee.
b. The President of the University shall designate the chair of said
committee.
c. The committee shall make and keep, in a book to be provided for that
purpose, minutes of all its meetings.
2. Duties
a. The Patent Committee shall review all Invention or Plant Variety reports
referred to it by the Patent Administrator, and make recommendations thereon and
forward the same to the President of the University for appropriate action.
b. The Patent Committee shall review, report and make recommendations on all
matters affecting patents and Plant Varieties as may be referred to or come
before the committee.
c. If an employee-inventor shall claim an Invention or Plant Variety as
her/his own, the Patent Administrator shall refer such claims to the Patent
Committee. The Patent Committee shall afford the employee-inventor the
opportunity to appear before the committee to present such evidence relating
thereto as he/she may have or the committee may desire and the committee may
make an independent investigation of said claim. Based on these findings, the
committee shall make appropriate recommendations in writing to the President of
the University for appropriate action. The inventor shall be afforded a copy of
the findings and recommendations of the Patent Committee and shall have an
opportunity to review the findings of the committee by filing a written argument
with the President.
d. Subject to the approval of the President and upon being advised by the
Patent Administrator that he/she has been unable to reach agreement with the
inventor, the Patent Committee shall seek to reach agreement with the
employee-inventor upon division of the financial returns from the patent.
e. The Patent Committee may, when circumstances warrant, i.e., when the
Invention or Plant Variety was not made in the regular course of the employee's
duties or as a part of her/his ordinary assigned or assumed functions or when
the University contribution in terms of equipment or facilities is either
non-existent or minimal, recommend additional remuneration to the inventor from
royalties received by the University from income realized from patent rights.
Such recommendation shall be made to the President for appropriate action.
f. The Patent Committee will consider such other matters regarding the
employee-inventor's claims, interest or right to patentable findings, as may be
referred to it by the Patent Administrator.
g. The Patent Committee shall give consideration as to whether it will be to
the best interest of the University and the inventor to place the matter with an
entity organized for marketing of patent rights for development by such entity
in accordance with its contract with The Curators of the University of Missouri
and its general procedure, or for the University to make application for the
patent or Plant Variety in its own name.
h. In those cases in which the inventor acknowledges all patent or Plant
Variety Protection rights are vested in The Curators of the University of
Missouri and where the committee has recommended that the same be referred to an
entity organized for marketing of patent or Plant Variety Protection rights with
which the Curators have approved a continuing contract, the President of the
University, upon approving such reports, in her/his discretion may order the
same submitted to such entity. It shall be the duty of the Patent Administrator
to carry out orders and directions with reference to the patent or Plant Variety
Protection, and he/she shall see that all necessary steps are taken to protect
the interests of the University and of the employee-inventor.
i. In the event the report of the Invention or Plant Variety is submitted to
an entity organization for marketing of patent rights with which the Curators
have approved a continuing contract and that entity advises that it is not to
the best interests of the University to seek a patent thereon, the President
shall within a reasonable time seek other means of obtaining a patent or release
the rights of the Invention or Plant Variety to the employee-inventor.
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F. THE PATENT ADMINISTRATOR
1. Appointment
The Patent Administrator will be appointed to serve as a member of the staff
under the supervision of the Vice President for Academic Affairs.
2. Duties
a. It shall be the duty of the Patent Administrator to establish a liaison
with the faculties of the four campuses of the University to assist the faculty
in identifying potentially patentable and commercially viable findings, the
filing of reports of such findings, to receive such reports, to advise the
faculty regarding steps to be taken to establish record of conception,
disclosures, and publication restrictions. The research Coordinators of each
campus will assist the Patent Administrator in the fulfillment of these duties
on their respective campuses.
b. It shall be the duty of the Patent Administrator to review and make
recommendations to the President upon all Invention and Plant Variety reports,
except as noted in the paragraph below.
c. The Patent Administrator shall refer to the Patent Committee all matters
concerning the employee- inventor(s) participation in the financial return from
the patents, any conflicting claims to protectable findings, employee-inventor
claims to ownership to patent and Plant Variety rights and such other matters as
he/she deems necessary to protect the interests or rights of the
employee-inventor and the University.
d. Publicity concerning Inventions: In order that the public may obtain the
greatest possible benefit from the Inventions in which the University has
transferable interest, the Patent Administrator shall see that Inventions
assigned to the University shall be publicized to the greatest possible extent.
Where patents are obtained by the University, it shall be the duty of the Patent
Administrator, upon being advised of the issuance of the patent, to take steps
toward listing the patent as available to those who may be interested in
securing the use of the patent rights or otherwise marketing the same.
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G. NOTIFICATION OF ABANDONMENT
In the event a decision is reached not to file a patent or Plant Variety
Protection application or to abandon a filed patent application, notice shall be
given to the inventor and to the sponsor if the sponsor's contract with the
University so provides.
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H. USE OF FUNDS RECEIVED BY UNIVERSITY RELATING TO
INVENTIONS, PATENTS AND PLANT VARIETIES
Whenever the University receives money from any source for the sale, waiver,
assignment or licensing of University-owned patents, Inventions, discoveries, or
Plant Varieties, the entire amount of such money (except that money received for
reimbursement of U.S. Patent and Trademark Office fees, external attorneys fees
or other external expenses incurred by the University in connection with
reexamination of the patent, patent infringement, other defense of the patent or
the enforcement or defense of a license agreement and that portion which is for
the negotiated indirect cost rate associated with the research project from
which the patent, Plant Varieties, Invention or discovery resulted) shall be
divided, distributed and allocated as follows unless otherwise agreed in writing
by the inventor:
1. For Inventions and Discoveries:
a. Thirty-three and one-third (33 1/3) percent shall go to the inventor.
b. After reimbursement of the University or research sponsor for reasonable
costs of procuring and defending the patent rights and reducing the Invention to
practice and payment of the inventor's share, all monies derived by the
University shall be allocated as follows:
- 66.7 percent to the campus from which the patent, Invention or discovery
originated, half of which the campus must allocate to the originating
department
- 33.3 percent shall go to the University. c. Funds allocated to the
departments, campuses and the University are restricted to the support of
research, development and other scholarly activities.
2.For Plant Varieties
a.Ten (10) percent shall go to the inventor.
b.After reimbursement of the University or research sponsor for reasonable
costs of procuring and defending Plant Variety rights and payment of the
inventor's share, all monies derived by the University shall be allocated as
follows:
- Ninety-five (95) percent to the breeding program from which the Plant
Variety originated.
- Five (5) percent to the University.
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FOOTNOTES TO PATENT REGULATIONS
FOOTNOTE 1 - The elements of Invention, and their interrelationship
may be described generally as follows:
Conception of the idea - This involves complete performance of the
mental part of the inventive act. All that remains is to convert the idea into
reality by reducing it to practice. Both what is to be accomplished and how it
is to be accomplished are necessary. Knowledge of a desirable result alone is
not enough; nor is a means for an unknown result. Additional statutory
requirements for an Invention to be found patentable, such as novelty and
utility, are exceedingly complex concepts and beyond the scope of this summary.
Similarly, other patentability bars, such as prior use or disclosure of the
Invention more than one year prior to patent application, are not presented due
to complexity of the matters involved.
Reduction to Practice - This involves creating either actual or
constructive proof that the idea actually works, can exist, or the like. Purely
actual reduction to practice is creating a physical embodiment of the idea,
although complete perfection is not required. Purely constructive reduction to
practice results when a patent application covering the completed concept is
accepted by the patent office. The theory is that an acceptable filing is both
conclusive proof of practicality and a sufficient disclosure of the concept in
the application papers that one with ordinary skills in the art involved would
be able to practice the Invention. Most often, sufficient reduction to practice
is neither purely actual nor purely constructive.
Interrelation between Mental and Physical Elements - As between
inventors with essentially the same idea, the date of conception controls
priority for the right to a patent; provided that he/she who first conceived the
idea used reasonable diligence in perfecting and reducing her/his conception to
practice. However, if the inventor who first conceived the idea is the second to
reduce it to practice, he/she bears a heavy burden to prove his/her priority.
The uncorroborated testimony of the inventor on either element is insufficient
alone. Therefore, sufficient records to prove both the earliest possible date of
conception and diligence in assuring the concept is workable are essential.
Accordingly, any project work or research out of which Invention rights may
arise should be documented by contemporaneous maintenance of a laboratory
notebook-diary in which periodic entries are made describing the work
accomplished. Each entry should be dated and signed by the persons actually
doing the work recited. The notebook-diary also should be read and signed
periodically as "witnessed" by one or more associates of the inventor
who are not engaged in the work but who are capable of understanding the
descriptions recited and can testify as to their understanding of the concepts
therein disclosed at the time of their signatures. Such a witnessed record may
be vital in obtaining or defending the rights of the inventor and of the
University should others assert prior Invention. The next best evidence would be
a timely, complete, and accurate Invention report in accordance with these
Patent Regulations.
FOOTNOTE 2 - Disclosure of Invention form (UMUW 16B & 16C) is
available from the Graduate Deans' and Research Coordinators' offices on each
campus.
FOOTNOTE 3 - The elements of Plant Variety Protection may be described
generally as protection available for self-pollinating seeds and plants. Such
seeds or plants cannot have been offered for sale or sold for a period of more
than one year prior to filing an application under the Plant Variety Protection
Act. Disclosure of Plant Variety form (UMUW 16D) is available from the Graduate
Dean's and Research Coordinator's offices on each campus.
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