THE UNIVERSITY OF NORTH CAROLINA
PATENT AND COPYRIGHT POLICIES

: Poli

The University of North Carolina is dedicated to instruc-
tion, research, and extending knowledge to the public (public
service). It is.the policy of The University to carry out its
scholarly work in an open and free atmosphere and to publish
results obtained therefrom freely. Research done primarily
anticipation of profit is incompatible with the aims of The
University. The University recognizes, however, that patent-
able inventions sometimes arise in the course of research con-
ducted by its employees and students using University facilities.
The Board of Governors of The University of North Carolina has
determined that patenting and licensing of inventions resulting
from the work of University personnel, including Students,
is consistent with the purposes and mission of The University.

The aim of the patent policies of The University is to
Promote the progress of science and the useful arts by utilizing

the benefits of the patent system consistent with the purposes

for which it was established by Article T, <Sect ton’ 8; of; the

Constitution of the United States:

The Congress shall have power...1 promote the
progress of science and useful arts by securing
for limited times to authors and inventors the

exclusive right to their respective writings and
discoveries.

Patents provide a means to encourage the Gevelopment and

utilization of discoveries and inventions.

 
have been established to ensure that those inventions in which The
& University has an interest will be utilized in a man: r consistent

with the public good through patents, licenses, or otherwise. The
University is also aware of the value of patents in directing
attention to individual accomplishment in science and engineering.
Where possible, The’University should make inventions resulting
from its research available to industry and the public on a
reasonable and effective basis and at the sane time provide
adequate recognition to inventors. Patents and their exploitation,
however, represent only a small part of the benefits accruing to
the public from the research program of The University.

A portion of the research conducted by The Universit;
supported by government and a portion by private industry

to the public, including private industry, is an integral part

@... University's mission. In agreements with private industry or

other private organizations, the constituent institutions of The
University must keep the interests of the general public in view.
The rights and privileges set forth in cooperative agreements or
contracts, with coubbae to patents developed as a result of
research partly or wholly financed bene dwate Parties, must he fair
and just to the Pecanee Lay: the snonsor and the public. Research
Should be undertaken by The University under Support from private

parties only if it is consistent with and complementary to The

University’s goals and responsibilities to the public.

SLIGO AO IIIS Py eG Om pee, eee tm

 
II. Objectives
earn.

The principal objectives of The University of North Carolina
Patent and Copyright Policies set forth herein are:

1) to provide appropriate incentive to creative intellectual
effort by faculty, staff, students, and others
associated with the constituent institu
University;

2) to establish principles for determining the interest of
the constituent institutions, inventors, and sponsors
in regards to inventions and/or discoveries;

3) to enable the constituent institutions to develop proce-
@ures by which the significance of inventions and/or
discoveries may be determined and brought to the point of
commercial utilization;
to provide the means for placing in the public realm the
results of research, while safeguarding the interests of
The University, inventor, and sponsor; and
to recognize the right of the inventor to financial

benefits from the invention or discovery.

ye Ges Coverage

The University of North Carolina Patent and Copyright
Policies apply to all University employees at each constituent
institution, both full and part time, including faculty, other
professionals exempt from the Personnel Act, staff subject to the
Personnel Act, and students of each constitutent institution.

Upon prior written agreement between persons and the constituent

CE A I Nee en SR OEY TTT YS Se Tt

 
institutions, these Policies may be applied to persons not

ae associated with The University who make their inventions
available to the institutions under circumstances where the
further development and refinement of the inventions are
compatible with the research programs of the constituent
institutions.

4 3 AR Patent Ownership

Condition of Employment and Enrollment
The Patent and Copyright Policies of The University of North
Carolina, as amended from time to time, stall be deemed to be a

part of the conditions of employment of every employee of each

constituent institution, including student employees, and of the

conditions of enrollment and attendance by every student at each

& constituent institution.

Ownership

With the exception of "Inventions made on Own Time," herein-
after defined, every invention or discovery or part thereof that
results from research or other activiti
stituent institution, or that is
institution's facilities, staff, or rol ds administered by
the constituent institution, shall be the property of the con-
stituent institution and, as a condition of employment or enroll-
ment and attendance, shall be assigned by the University inventor

to the constituent institution in a manner determined by the

constituent institution in accordance with these Policies.

 
Patent Application

@ Patents on inventions made by University employees or

students, may be applied for in any country by the constituent
institution or through an authorized agent(s) or assignee(s). The
constituent institution shall exercise its rights of ownership of
such patent(s), with or without financial qain, with due regard

for the public interest, as well as the interests of inventors an‘4
sponsors concerned.
Inventions Made on Own Time

Inventions or discoveries made by University personnel or
students entirely on their personal time and not involving the use
of University facilities or materials are the property of the
inventor except in case of conflict with any applicable agreement

between the institution and the federal or state governinent or

agency thereof. For purposes of this provision, an individual's
"personal time" shall mean time other than that devoted to normal
or assigned functions in teaching, extension, University service,
or direction or conduct of research on University premises or
utilizing University facilities. The term “University facilities”
shall mean any facility, including equipment and material,
available to the inventor as a direct result of the inventor's
affiliation with the University, and which would not be available
to a non-University individual on the same basis.

Personnel or students who claim that inventions are made on

personal time have the responsibility to demonstrate that inven-

POI ee Le

 
tions so claimed are invented on
inventions shall be disclosed in accordance

disclosure procedures applicable t

time or with the use of University face
equipment, and shall demonstrate the

that only personal time was Ohh clo ee We Bid 2 £9 fe

demonstrated to conform to the de Fiat

institution shall acknowledge in

sole property of the inventor

provision, below.

If the inventor so desires, inven rr discoveries made on
personal time and utilizing the inventor's own facilities and
materials may be assigned to the institution.
arrangement, the procedures will he the same a
@iscoveries made by university personnel on Universi
with the use of University faciliti
Waiver and Release of University R

Pursuant to these Polices and
constituent institution, after cons.
shall cause ion rights to subsequen
to the inventor if the institutio
facilities, time, or materials
discovery or invention, that it was

that such waiver would not conflict

between the institution and a

DROOL CAGES, AP ed ere mena No angen ee a me me

 
Pursuant to these Policies and
Conetitvuent insticutizn-, afrer <---
in its discretion and upon such terms as it deems appropriate,
cause its rights to the discovery or invention, if any, to be
released and waived to the inventor if the institution is
convinced that the discovery or invention is Clearly one that i

non-patentable, that it does not warrant further evaluation as to

patentability, or if the discovery or invention has been returned

to the institution after negative evaluation By the institution's

agent(s).
Ve. Income from Patents

The Inventor

The inventor shall receive not less than fifteen percent
(15%) of the gross royalties derived from licensing or income from
assignment or sale of each patent resulting from his invention ani
Owned by the constituent institution PYrsuant to these Policies,
With this limitation, the exact Proportion shall be determined in
accordance with the institution's patent procedures as aooroved bv
that institution's Board of Trustees and the President.
The Institution

Income earned by each constituent institution from
and licensing activity shall be hela in a separate
that institution to Support research,
institution employing the inventor or furnish;
facilities will be given preferential consideration, though

necessarily exclusive consideration, in the @llocation of such

 
~5-

royalty income by the institution. Allocations from such trust

® funds shall be made by the Chancellor of each institution after

receiving recommendations from the institutional Patent

Committee.

VI. Specific Conditions Governing Snonsored Research

| Government Sponsoréd Research

Patents on inventions arisin-
United States Government ma:
‘grants and contracts specif
to Federal law. In some cas:
patents resulting from researct

by government agencies.

@* Claimed by the United States
are waived by the government, paten
Sponsored research are controlled by
Policies. When a patent arising
government grants or contracts is ‘7 Dy a@ constituent
institution, that institution wil
non-exclusive royalty-free license for
such patent. If such a Patent is
institution shall be free to use the
Own scientific and educational nurposes

t

royalty or other charge, consistent wj

 
University Research Sponsored by Non-Governmental Entiti

negate ieee pei as american souminiansiomeranpeetensaiaibateitan

The University must ensure that its facilities and the
& results of the work of its employees are arplied in a manner
which best serves the interests of the public. Likewise, the

legitimate interests of a private sponsor who provides financial

institutions must be considered. Constituent institutions should

normally reserve the right to ownership of patents on inventions

p
arising out of research supported in whole

institutions and such organizations or agencies should

contain

Clauses setting forth such a reservation unle: deviations

therefrom are requested by the sponsor @ approved by the

3 institution consistent with the public interest. In the interest

of fair treatment to the sponsor in consideration for the

>

sponsor's investment and in the interest of Gischarying the

institution's obligation to the public in the

facilities and its employees’ time ani talent, Speci provisions

may be negotiated by the institution in Ssucn non-government

Sponsored contracts, upon request, provided that the institution

retains the right to use the invention for its Own research,

educational, and service Purposes without payrents of royalty

@ ists of the parties and to allow for the ©

‘application.

 
A major function of The University of North Carolina is the

advancement and dissemination of knowledge. Any practice that

unnecessarily restricts the publication of results

of scientific

work is to be avoided. However, it is recognized that the full

development of useful inventions or discoveries may be dependent

upon the securing of patent protection that will enable the

commercial utilization of the discoveries or inventions.

Accordingly, under certain circumstances it may be necessary to

delay for a minimum period the publication of results of

research,

If a sponsor proposes to support a research effort tnat will

involve a limited exclusive licen-e to use of patents resulting

therefron, the agreement witn respect to publication shal}

include the following. First, the Sponsor must agree that the

& results of the research may be publishe

d if desired by the

investigators or research workers. Second, in order that patent

applications not be jeopardized, the constituent

Institution,

the investigators, and research workers may agree that any

Proposed publication will be submitted to the sponsor with a

notice of intent to submit for publicati If within a period

of no more than 90 days from the date

fails to request a delay, the investi

Gadg

institution shall be free to proceed

immedia
meu 12

Publication. However, if the Sponsor noti

rome)
Fs

that a delay is desired, the submission of the manuscript

. Serneta tis enteonennemmabiamenia

 
publisher shall be withheld for the period requested,

event shall the total period of delay be lon:

from the date of the notice of intent to submit for publi
mentioned above. Such a period will permit the sponsor to have
the necessary patent aoplications prepar:3 and filed but will mt

unduly restrict the dissemination of scientific knowledge.

Viti sri Aves dance of con tt i cts

°

Conflicts involving patentable inventicns and discoveries
may arise when a constituent institution'
students enter into personal consulting
firms and organizations.
to have executed by those who ar
frequently contain provisions as
of the consultant's inventions and batents. Unless such pro-
visions are narrowly worded, they usually will apply to areas in
which the individual's University work lies and thus come into
conflict with the obligations owed by the individual to the
University under these Policies, either with respect to the
rights of the constituent institution itself in an invention or
with respect to the rights of a sponsor of research in the

field or subject matter.

ment to the attention of the appropriate adninistrators of the

constituent institution in accordance with its patent procedures

& and either obtain a waiver of University rich*s or otherwire

ne ee eee as

LOI e HY NPY ACL IPR PNA VOLS IY TTA LE, I 6 re eee

 
tion. The institutions are hereby authorized to register such
marks as are deened by that institution to be appropriate and to
license the use of such marks, provided that the income from such
licensing shall be used to support the research and educational

programs of the institution and not accrue to the personal henefit
of University personnel.
The use of trade secret agreements to
inventions developed at the constituent ins
consistent with the aims and purposes
Carolina. Special provisions may be

Gissenination of students' degree-related

XIV. Procedure

The Board of Trustees of each constituent institution shal}
adopt patent procedures that are consistent with and implement
these Policies, taking into account the nature and scope of the
institution's progqrans. The institutional patent procedures shall
be reviewed and approved by the ide: or his representative

prior to approval hy the Trustees.

XV. -Exceptions

Exceptions to the above policies are authorized
by the President following a favorable review and recomme
from the pertinent institutional corti
Patent Committee. Before approving an exce:

must determine that, on the basis of the py

Pye ee ee ee:

 
may better serve institutional and public interests. Nothing in
this section shall be construed to permit the reduction of the

minimum share due an inventor as specified in Section V of these

Policies.

er.

As a general rule, a ig! Oo ccopyvrightak ma
the property of the creator. The distribution of royaltie
any, is a matter of arrangement between the creator and his
publishers or licensees. Different treatment may be accorded by
the institution in case of specific contracts providing for an
exception, in cases where the constituent institution or sponsor
may employ personnel for the purpose of producing a specific
work, where different treatment is deemei necessary to reflect
the contribution of the institution to the work, as in the case
of software or audiovisual material, or where a sponsored

agreement requires otherwise.

NIIQZ. Service Marks, Trajemarks and Trade Secrets

’

Service marks and trademarks are the property of the

constituent institutions, and without express authorization from

the Chancellor or his designee, no steps stall be taken for
securing trademarks or service marks

with respect to products resulting oO; arising out of
research or other activities carried out at a constituent insti-
tution or developed with the aid of its facilities or staff, or

produced through funds administered by the constituent institu-

 
consisting of no less than three members, one of whom shall be
designated by the Chancellor to serve as chairman. The Committee

for the institution shall review and recommend to the Chancellor
or his delegate the procedures for the implementation of these
Policies; shall resolve questions of invention ownership that may
arise between the institution and its faculty, staff, or students
or among individuals; shall recommend to the Chancellor the
expenditure of the patent royalty fund; and shell make such
recommendations as are deemed appropriate to encourage disclosure
and assure prompt and expeditious handling, evaluation, and
prosecution of patent ovportunities.

The chairmen of the institutiona!
delegates, shall meet as an ALl-University kutent Committee.
The meetings of the All-University Patent Committee shall be
the call of the President of The University or his delegate who

Shall serve as its chairman.

m dis Patent Management

The Chancellor of each constituent institution,
designated by him, is authorized to negotiate with

agencies or firms to secure for each institution arrangenen

patent management, including competent evaluation of invention

Gisclosures, expeditious filing of applications on patents, and

licensing and administration of patents.

A constitvent. institution is ave re 7 its owr

patent management and licensing

patent management agent, if it

~
i

 
a Pics

modify the consulting agreement to conform with these Policies,

as is determined by the institution in its discretion.

The foregoing requirements are in addition to, and do not

eliminate the necessity for, any approval which may be required

by The University of North Carolina Policy on External Pro-

fessional Activity of Faculty end Other Professional Staff.

IX. Duty to Disclose Discoveries and Inventions

All individuals whose discoveries and inventions are covered

by these Policies have a duty to cisclose their discoveries and

inventions promptly in accordance ratent procedures
adopted by each constituent institutior

Policies. The duty to disclose arises as s20n as the indiv

has reason to believe, based on his or her own knowledge or
information supplied by others, that the discovery or invention
may be patentable. Certainty about patentability is not required
before a disclosure is made. Individuals shall execute such
Geclarations, assignments, or other docuvents as may be necessary
in the course of invention evaluation, pitent prose

protection of patent rights, to insure that title

inventions shall be held by the constituent institution,

hold: title. oF

the cire

oe Patent ComTitteoes

The Chancellor of each constituent institution of The

University of North Carolina sha ppoint a Patent Committee,