Patents and inventions arising in the course of sponsored research shall belong to the University.
Patents and inventions which result from research financed wholly or in part by Federal Government funds will be treated in accordance with the provisions of Public Law 96-517, "The Patent and Trademark Amendments of 1980," and will be owned by the University.
Rights with respect to patents and inventions in this category will be governed by the agreement between the University and funding source.
Patents and inventions developed in the course of assigned duties or developed wholly or significantly through the use of general funds shall belong to the University.
All rights to foreign patents and inventions shall be retained by the inventor, unless these rights are specifically claimed by the University.
Special projects are activities to which the University makes a substantial contribution of funds, personnel, facilities, services, or reduction of workload. What constitutes a "substantial contribution" for purposes of this definition must be decided on a case by case basis. Special projects will frequently, but not always, be characterized by release time to the inventor or inventors, by the substantial use of University facilities, and/or by the contribution of University employees other than clerical and secretarial employees.
B. Board means the Board of Visitors of George Mason University.
C. Faculty has the same meaning as in the current George Mason University Faculty Handbook. For the purpose of this policy statement, administrative faculty are considered "staff" when they are fulfilling their administrative roles and "faculty" when they are carrying out their duties as regular faculty members.
D. Invention means any patentable invention, discovery, or new plant variety.
E. Inventor means sole or joint inventors, discoverers, or plant breeders.
F. Patent means a United States or foreign national patent grant, or United States certificate of invention or certificate of protection under the Plant Variety Protection Act.
G. President means the President of George Mason University.
H. Proceeds means the net remaining after deduction of unreimbursed development costs incurred and the expenses of marketing, including cost of advertising, sales, distribution, and related overhead costs.
I. Reimbursable Expenses includes all direct assignable expenses incurred in connection with the development of a patent or invention.
J. Sponsor means any agency outside the University which supplies funds or facilities for research conducted under agreement with the University.
K. Staff means all employees of the University other than faculty.
L. University research personnel means University faculty, staff, and students who as part of their normal scholarly activities carry on research which may be supported in whole or in part, by the University from its own resources or by grants from or contracts with outside sponsors.
M. Assigned Duty is narrower than "scope of employment," and is an undertaking of a task or project as a result of a specific request or direction. A general obligation to do research, even if it results in a specific end product such as a vaccine, a published article, or a computer program, or to produce scholarly publications, is not a specific request or direction and hence is not an assigned duty. In contrast, an obligation to develop a particular vaccine or write a particular article or produce a particular computer program is a specific request or direction and is therefore an assigned duty.
N. Significant Use of General Funds, and the phrase "developed wholly or significantly through the use of general funds," mean that general funds provided over half of the identifiable resources used to develop a particular intellectual property, and exceeded $10,000.00. A reasonable cost should be assigned to those resources for which a cost figure is not readily available, such as salary, support staff, and other equipment and resources dedicated to the creator's efforts. Resources such as libraries that are available to employees generally should not be counted in the assessment of the use of general funds.
7/30/87
The Committee's duties will include:
A. To recommend whether the University has a proprietary interest in a faculty invention, and, if so, to what extent, should the faculty inventors and the Vice Provost disagree;
B. To recommend the relative shares in the work of faculty co-inventors, should the faculty co-inventors and the Vice Provost disagree;
C. To recommend whether to apply for a patent and/or to market the work, should the faculty inventors and the Vice Provost disagree; and
D. To make recommendations on all matters pertaining to patents not resolved by this policy procedure and recommend modifications of the Patent Policy that may be appropriate.
A. Identify the sponsor, if any, of the project or programs under which the invention was developed, directly or indirectly;
B. Indicate whether the invention was made under terms of a consulting agreement between the inventor and a client.
The Chair shall forward this material to the Dean, and they shall recommend to the Vice Provost those inventions in which the University does and does not hold rights. The Vice Provost, following any necessary consultation with the Intellectual Property Committee, shall make a final recommendation to the President. If the President determines the University holds rights to an invention, the inventor agrees to assign all rights, title and interest in and to said invention to the University in consideration of his employment remuneration and the compensation provided by this policy on inventions.
A. Disclose inventions to the Government;
B. Elect to retain title to inventions;
C. File patent application on such inventions.
Except as superceded by provisions of a specific funding agreement, inventions and discoveries covered are retained by the University.
The principal investigator is responsible for informing co-workers of their rights and obligations under consulting contracts or sponsored agreements before initiation of the research. Inventions which are not required to be assigned by contractual terms shall be processed and disposed of by the University under the procedures of Section VI of these procedures.
A. Released to the inventors if found not to be of interest to the University in which case the University shall retain a non-exclusive, royalty free license to use the invention for its educational, research, and service purposes forever, or
B. If of interest, referred to a patent management entity with whom the University has a contract to assess for commercial potential.
2. If judged by a patent management entity not to have sufficient commercial potential for development by them, the invention shall be
a). Referred back to the University for patenting or exploitation by the University or, at the University's sole option,
b). Released to the inventors. If an invention is released to the inventors, the University shall retain a non-exclusive, royalty free license to use the invention for its educational, research, and service purposes forever.
Whenever the University determines that it has no proprietary interest in an invention, or whenever the University releases an invention to its inventors, the inventors agree not to use the University, or the University's name, in the exploitation of such invention without prior written approval by the University.
A. Income which exceeds reimbursable expenses shall be divided fifty percent to the inventors and the balance to the University.
B. When inventions are made under contract with an outside agency, the division of income shall be in accordance with the terms of the contract.
C. The allocation of income between the inventors and the University may be changed in individual cases with the President's approval.
8/23/89