Policy on Patents (USA)

Policy Number: 207-USA

Academic and Faculty Affairs

The permanent link for this policy is: https://policies.northeastern.edu/policy207-USA/

This policy applies to Northeastern University United States based campuses only. For the Canadian version see the Policy on Patents (Canada).

I. Purpose and Scope

Northeastern University is a nonprofit educational institution devoted to teaching, research, and other scholarly activities in the public interest. The university’s faculty, staff, and students, as part of their normally assigned duties and scholarly activities, carry out research which may be supported in part, or in whole, by the university from its own resources, or by grants or contracts with outside sponsors. The respective rights and obligations of the university, its sponsors, faculty, staff, and students, with respect to Covered Inventions as defined herein, are delineated by this policy.

The principal objectives of this policy are to:

1. Encourage creative research, innovative scholarship, a spirit of inquiry leading to the generation of new knowledge, and the free and creative expression and exchange of ideas and comment;

2. Facilitate the transfer of university-owned research results to commerce and industry, to facilitate institutional technology agreements with parties external to the university, and to encourage the broadest utilization of the findings of scientific investigation to provide the maximum benefit to the public;

3. Establish principles for determining the rights and obligations of the university, inventors, and research sponsors with respect to Inventions, to safeguard the intellectual property of both the inventor and the university until appropriate patent protection is achieved, and to define the equitable disposition of interests therein;

4. Providing incentives to inventors in the form of professional recognition, continuing research support, and direct financial compensation; and

5. Protect the university’s rights and assets.

This Policy applies to faculty, staff, and students working on research that results in Covered Inventions, as defined herein.

II. Definitions

For purposes of this Policy,

Covered Invention means an Invention which is conceived and/or reduced to practice:

1. As a University Sponsored Invention, as defined herein;

2. As an Externally Sponsored Invention, as defined herein; or

3. As an Independent Invention, as defined herein, for which all inventors have assigned their entire right, title, and interest in the Independent Invention to the university.

Externally Sponsored Invention means an Invention:

1. Resulting from research wholly or partially funded under contracts, grants, or written agreements by industrial, philanthropic or other organizations, or by individuals; or

2. Resulting from research funded in whole or in part by an agency of the government (local, state or federal).

Gross Licensing Revenue means money accrued by the university as a result of royalty revenue, sublicensee income, proceeds resulting from a liquidation of a university equity interest in a licensee, or licensing fees included in a license agreement concerning Covered Inventions owned by the university pursuant to this Policy on Patents.

Independent Invention means an Invention conceived by a student of the university as a result of participation in unsponsored, for-credit coursework, or by faculty, staff, or students:

1. Without Significant Use of University Administered Resources; and

2. That is not an Externally Sponsored Invention.

Invention means any new and useful, process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, which is conceived and/or reduced to practice as patentable subject matter, in accordance with 35 U.S.C. § 100 et seq.

Net Licensing Revenue means Gross Licensing Revenue minus any costs and expenses incurred by the university in obtaining, defending, enforcing, maintaining, licensing, developing and/or marketing rights to Covered Inventions owned by the university pursuant to this Policy Patents.

Patent Committee means a group of technically and commercially knowledgeable individuals who provide expertise and advice regading whether patent protection for selected Covered Inventions should be pursued by the university.

Publish means the same as “Publication,” under the Copyright Act, which includes the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease or lending, or the offer to distribute copies to a group of persons for further distribution or public display or performance. A public performance or display of a work does not in itself constitute publication.

Significant Use of University Administered Resources means the use of university funds, facilities, equipment, personnel, and other resources that exceeds what is customarily and currently provided to similarly situated colleagues of an inventor/author in the inventor’s/author’s department or to similarly situated students enrolled in the same course or college. The following examples are intended for guidance purposes only and do not exclude other uses that may be considered significant:

Use of specialized services or facilities such as equipment, production facilities, service laboratories, studios, specialized computing resources or facilities, wherein fees normally required for access or use are waived.
Use of financial or other support, including reduction in levels of teaching, service, or other typical university activities (e.g. course load, student advising responsibilities, department meetings, office hours, administrative responsibilities) for the creation of the Invention that exceeds the typical supplemental pay and offloading from regular duties.
Use of university personnel (including secretarial, clerical, and administrative staff) and research assistants beyond the level customarily provided to all university faculty and departments.
Use of university proprietary property that serves as a significant basis for the resulting Invention.

The university shall not consider use of funds, facilities, equipment, personnel and other resources to be significant if the university makes them generally available to the university community, provided that such use is not in excess of the amount normally provided.

Decisions regarding whether use of resources is significant shall be determined by the dean(s) of the author’s/inventor’s college, or by the dean’s designee.

Thesis and Dissertation each mean a student work representing significant original or independent research and for which the student receives a substantial amount of credit toward a degree or certificate. Where there is a question concerning whether or not a student work is a Thesis or Dissertation, the Provost or the Provost’s designee shall make a good faith determination concerning this issue, which shall be final and binding on all parties.

Unit means, without limitation, college, department, administrative unit, group, center or institute.

University Sponsored Invention means an Invention resulting from research which has involved Significant Use of University Administered Resources.

III. Policy

The Provost or the Provost’s designee is responsible for the administration of intellectual property matters relating to Inventions, patents, trade secrets, trademarks, copyrights, and publications. The Provost or the Provost’s designee shall represent the university in all matters relating to intellectual property which affect the university’s relations with government, industry, and the public.

1. Ownership and Disposition

The ownership and disposition of Covered Inventions are as follows:

a. University Sponsored Inventions:

i. Shall be promptly evaluated by the university for patenting and commercialization; and

ii. Shall either be accepted for patenting and commercialization, or, if not accepted for patenting and commercialization, may, if possible, be released to the inventor(s) upon written request by the inventor(s). If a Covered Invention is accepted for patenting and commercialization, each inventor hereby agrees to be compensated in accordance with the applicable provisions of this patent policy.

b. Externally Sponsored Inventions

Externally sponsored inventions are governed by the provisions of contracts, grants, or written agreements associated therewith. If the provisions of such contracts, grants, or written agreements allow, the ownership and disposition of the Covered Invention is hereby a University Sponsored Invention.

c. Independent Inventions

Independent Inventions are the property of the inventor(s) and are not subject to the invention reporting obligation under this policy.

2. Assignment of Inventions

a. Any member of the faculty or staff, or any student who makes, as sole or joint inventor, a Covered Invention, which is a University Sponsored Invention or an Externally Sponsored Invention:

i. hereby assigns and agrees to assign the inventor’s entire right, title and interest in and to such Covered Invention and all associated patent applications and patents to the university or the university’s designee; and

ii. shall do whatever is reasonably necessary to enable the university or the university’s designee to apply for and maintain patents in any and all countries on such Covered Invention, whether required before, during or after their association with the university.

The cost and expense of making such assignments and procuring such patents shall be borne by the university or the university’s designee.

b. When a student makes an Independent Invention, the Independent Invention is owned by the student, provided the student’s rights or interest in the Independent Invention are not altered by the terms of any financial aid received, including external sponsorship, scholarships, fellowships, traineeships, thesis expenses, or other assistance, whether or not administered by the university. If all right, title, and interest in and to such Independent Invention is assigned to the university, then the Independent Invention is thereby a Covered Invention.

3. Invention Reporting Obligation

a. Timely Disclosure

Timely disclosure of a Covered Invention to the university is necessary to preserve the rights of the university in its Covered Inventions. Inventors who are faculty members, staff members, or students, shall make a timely disclosure of their Covered Inventions to the university, in writing, to the Unit responsible for the university patent portfolio. Covered Inventions should be disclosed to the university with sufficiently enabling description as soon after conception as possible to preserve the university’s rights in such Covered Inventions, to permit prompt evaluation of each Covered Invention by the university, and to avoid unnecessary delays in publication of works of authorship describing such Covered Invention.

b. Untimely Disclosure

A disclosure of any Covered Invention to the university shall be considered untimely if it causes the university to lose domestic or foreign rights or business opportunities in the Invention. Untimely disclosure includes, without limitation:

i. Nondisclosure of a Covered Invention;

ii. Failure to disclose a business arrangement with a third party, which in any way involves a Covered Invention;

iii. Causing Publication of an enabling description of the Covered Invention before the filing of a patent application for such Covered Invention;

iv. Unauthorized patent filing on a Covered Invention;

v. Failure to disclose material facts or documentation to the university relative to a Covered Invention; and

vi. Provision of information to the university, which information is subsequently determined to be false or misleading in any material way with respect to a Covered Invention.

If an inventor’s disclosure of a Covered Invention to the university is untimely, the university may require that an assignment of the Covered Invention be made to the university and any related benefits that have accrued prior to such assignment shall be promptly paid to the university, and the inventor shall be obligated to comply with this requirement. Thereafter, unless the university otherwise agrees in writing, it shall own all rights in the Covered Invention.

4. Patent Committee

The Patent Committee is responsible for advising and making recommendations to the Provost or the Provost’s designee concerning the suitability of selected Covered Inventions for patent protection. The composition of the Patent Committee is determined by the Provost or the Provost’s designee.

5. Release of Information

The university may determine that it will release ownership of a Covered Invention to the Inventor(s). Upon the grant of any release by the university of an Invention to the inventor(s), the inventor(s) hereby:

i. Agrees not to engage in Significant Use of University Administered Resources, or use the university’s name in the exploitation of such Invention;

ii. Grants the university a non-exclusive, fully paid-up, irrevocable, royalty-free license to the Invention for university purposes if the Invention is a University Sponsored Invention or an Externally Sponsored Invention;

iii. Conveys to the university such rights as are necessary to fulfill any obligations that the university may have to other parties; and

iv. Agrees to reimburse the university for costs and expenses associated with the filing, prosecution and maintenance of any patent applications and resulting patents filed by the university for the Covered Invention.

6. Invention License Revenue

a. Distribution of Net Licensing Revenue

i. Net Licensing Revenue derived from Covered Inventions and paid to the university, shall be distributed as follows:

I. Thirty percent (30%) directly to the inventor, or divided equally among multiple inventors, unless the inventors provide the university with an alternative revenue distribution of the designated percentage, as agreed upon by them;

II. Thirty percent (30%), but not in excess of $100,000.00 per year, divided equally between direct support to the inventor for the inventor’s research and to inventor’s Unit to foster research in the Unit. If distribution of this thirty percent (30%) would otherwise be greater than $100,000.00 per year, the inventor and the head of the inventor’s Unit shall negotiate with the Provost or the Provost’s designee regarding distribution in excess of that amount between support of the inventor’s research and the inventor’s Unit. If the inventors are associated with different Units, the license revenue distribution to the Units shall be to the Units jointly to be divided equally, unless the university is provided with an alternative royalty distribution of the designated amount as agreed upon by the heads of the respective Units and the Office of the Provost; and

III. Forty percent (40%) to the Provost’s Office and the university’s general operating funds.

IV. If the inventor’s employment by the university ends for any reason, the inventor’s share of the distribution for direct support of the inventor’s research shall be redistributed, five percent (5%) to the inventor’s Unit and ten percent (10%) to the Provost’s Office and the university’s general operating funds.

V. In the event a Unit ceases to exist, the distribution of the Unit’s funds shall be determined by the Senior Vice President for Administration and Finance upon recommendation of the Provost or the Provost’s designee.

b. If the university has entered into an agreement with a third party concerning the disposition of rights to any Invention arising from research financially supported by such party, the distribution of Net Licensing Revenue received from any patent(s) based on said research will be governed by the terms of such agreement.

c. With respect to distributions of Net Licensing Revenue made by the university, the university shall make Net Licensing Revenue distributions in accordance with this policy unless directed otherwise by a court order, and the university shall be held harmless against good faith payment of Net Licensing Revenue made in accordance with this patent policy.

d. Net Licensing Revenue shall be disbursed on or about the close of the university’s fiscal year.

e. Net Licensing Revenue derived from any agreement that licenses both patent rights to Covered Inventions and copyright associated with Computerware assigned to the university, as described in the university’s Policy on Copyright, shall be distributed according to this Section.

IV. Miscellaneous Provisions

Employment Agreements

The university may require faculty, staff, or students to sign agreements implementing this policy as a condition of employment or as a condition of participation in a sponsored project controlled by a written agreement, as may be necessary to comply with the terms of such written agreement, or to establish record title in Inventions owned by the university