Technology Commercialization Office James Taylor Director Patrick Thomas Associate Director 104 Miller building Phone: 626-6055 jamestaylor8@weber.edu

PATENT POLICY

Reasons and Background for Patent Policy 1. WSU PPM 5-13(II)(b)(1) reads, “Patents developed by University personnel using University time, material or facilities are the property of the University subject to conditions specified by University policies.” 2. Currently, there are no such “University policies” that govern patents comprehensively at the University including inventorship rights to share in University revenues and compliance with the Bayh-Dole Act. 3. All other universities in Utah have comprehensive policies on patents which grant inventorship rights to share University revenues and ensure compliance with the Bayh-Dole Act. 4. This policy grants inventorship rights to share University revenues and provides the means by which the University can comply with the Bayh-Dole Act. 5. The policy does not modify current PPMs dealing with copyrights or PPM 5-13 (e.g. textbooks, curriculum, etc.).

Income Distribution WSU- the income distribution is 50% of Net Revenues (NR) to Inventor. UVU- 50% of NR to Inventor. USU-50% of NR to Inventor less than $500,000; and 40% of NR to Inventor equal to or greater than $500,000. BYU- 45% of NR to Inventor. U of U- 40% of NR to Inventor less than $100,000; 35% of NR to Inventor from $100,000 to 300,000; and 33% of NR to Inventor $300,000 and up.

Bayh-Dole Act Compliance The act was passed in 1980 and is significant because it drives most IP policies at universities. The act allows universities to own IP developed through federal funding. In exchange for ownership, the act requires universities to disclose IP to the federal government. WSU PPM 5-13 was last modified in 1977 and provides no mechanisms to comply with the Bayh-Dole Act. The Patent Policy provides mechanisms to comply with the Bayh-Dole act and designates the TCO as being responsible for ensuring compliance.

Other Contents of Patent Policy Creates an Invention Committee to perform the following: Advises the President on policy matters relating to Inventions; Proposes amendments to the IP policies; Develops internal procedures to implement this policy Arbitrates disputes; and Approves any deviations from this policy. Membership of the Invention Committee is comprised of: One or more faculty and/or staff members; The Director of the TCO; One representative from the Office of University Legal Counsel; and One representative from the Research Foundation Board. Delineates the process by which all employees and staff assign rights to WSU resulting from: Assigned employment duties; and Effort normally associated with one’s discipline or position. Provides administrative procedures to perform the following: The disclosure of patents to the TCO; and The means for the TCO to provide business and legal services.