FACULTY HANDBOOK July 2009 - Morgan State University

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PAGE 156 * Morgan State University Faculty HandbookIV.RESPONSIBILITIES OF THE UNIVERSITY AND DELEGATIONS OFAUTHORITYA. The University shall: (1) notify the inventor promptly whenever it decides not to pursueor to abandon the pursuit of patenting or commercialization of an invention, (2) execute,upon request, all contracts, assignments, waivers or other legal documents necessary totransfer to the inventor the University’s interest in an invention which it has so chosennot to pursue, (3) act with reasonable promptness and in good faith on all inventionsdisclosed to it, and (4) remit to the inventors their shares of income from inventions asspecified in Section VI of this policy. Subject to these responsibilities, the Universitymay, at any time, decide not to pursue or to abandon the pursuit of patenting and/orcommercialization of an invention in which it has an interest.B. Authority and responsibility for Patent Policy is delegated to the President (or hisdesignee). The President shall develop procedures for implementing this Policy.V:VIRESPONSIBILITIES OF PERSONNELA. Personnel who, either alone or in association with others, makes an invention in whichthe University has or may have an interest shall disclose to the President or designee suchinvention reasonably promptly. As to an invention in which the University has aninterest, the inventor, upon request, shall execute promptly all contracts, assignments,waivers or other legal document necessary to vest in the University, or its assignees, anyor all rights to the invention, including complete assignment of any patents or patentapplications relating to the invention.B. Personnel (1) may not sign patent agreements with outside persons or organizationswhich may abrogate or otherwise conflict with the University’s rights and interests asstated in this Policy, nor (2) without prior authorization use the name of the University inconnection with any invention.C. At the time of appointment, visiting faculty and personnel shall sign anacknowledgment of this Policy.REVENUE SHARINGA. The University shall share with the inventor revenue from a patent or invention. Specificprovisions of grants or contracts may govern rights and revenue distribution regardinginventions made in connection with sponsored research. Consequently, revenuesreceived from such inventions may be exclusive of payments of royalty shares to donorsor contractors. Moreover, the University may contract with outside persons ororganizations for the obtaining, managing and defending of patents, and any royaltyshare or expenses contractually committed to such persons or organizations may bededucted before revenues accrue or before the inventor’s share is distributed.B. The net revenues from a patent or invention will be applied first to reimburse theUniversity for expenses in obtaining and maintaining the patent and in marketing,licensing and defending the patent or licensable invention. After reimbursement of suchexpenses, such revenues shall be shared as follows: (1) the first $5,000 shall be paid tothe inventor or inventors; (2) thereafter the inventor (s) shall receive fifty percent of suchrevenues. Applicable laws, regulations or provisions of grants or contracts may requirethat a lesser share be paid to the inventor. To the extent consistent with State andUniversity policies, any net revenue received on account of an invention, after sharing
PAGE 157 * Morgan State University Faculty Handbookwith the inventor, will be dedicated research and to the promotion of patenting andpatents. If practicable, eighty-five percent of the University‘s share of new revenue fromeach invention will be designated for research in the inventor’s department or unit up to$100,000 in a fiscal year. The President, or designee shall devote the remaining part ofthe net revenue to research and the promotion of patenting and patents as directed.C. If use of such funds for research within the inventor’s department or analogous unit isnot practicable or for an amount in excess of $100,000 per fiscal year, the President mayallocate funds for other use within the institution.VII.ADMINISTRATIONA. The Intellectual Property Committee consists of the Vice President for Academic Affairsor designee as an ex officio member and chair and no more than fourteen other membersselected and appointed by the President. Members are appointed for three-year termswith non-concurrent expiration dates and may serve successive terms.B. The Intellectual Property Committee convenes at the call of the Vice President ordesignee, who determines when, implementation or interpretation of the UniversityPatent Policy requires consideration by the Committee. Among the matters, which maybe referred to the Committee for recommendation to the Committee, are: whether theUniversity has an interest in an invention; questions not covered by policy; and whethersome part of the policy should be waived.C. When the Committee is considering a particular invention, the inventor and/or theinventor’s representative may examine all materials submitted to the Committee, maymake written and oral presentations to the Committee, and may be present during oralpresentation of others.D. The evaluation of inventions and discoveries and the administration, development andprocessing of patents involves substantial time and expense and requires talents andexperience not ordinarily found in University staff. Therefore, the University may enterinto a contract with third parties in connection with the administration of identifiedinventions, disclosures of invention, and developed patents.E. Disputes on patent matters, including the interpretation of this Patent Policy, shall bereferred for resolution to the President or designee.VIII.SPECIAL CASESThe University recognizes that a special case may arise which is not specifically coveredby this Policy or which may justify waiver of this Policy. Only the President or designeehas authority to waive the provisions of this Policy.Approved by the Board of Regents 3/20/1996
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