Patent Policy
I. Preamble.
Liberty University (the “University”) is committed to creating an academic environment that encourages excellence in teaching, scholarship, and research. The University recognizes the importance of discovering new knowledge and disseminating that knowledge for the public good. This Patent Policy (the “Policy”) was adopted to promote academic freedom and create incentives for engaging in research, while ensuring that the rights of all parties involved in University research are clearly and equitably established.
II. Scope and Application.
This Policy is binding on the University and all University faculty, staff, and students. Compliance with this Policy, as amended from time to time, is a condition of employment for faculty, staff, and students, a condition of faculty, staff and students’ use of University resources and facilities, and a condition of their participation in any sponsored research program. Compliance is also a condition of enrollment for students. This Policy prescribes the requirements for disclosing Inventions, clarifies ownership of such intellectual property and how it may be transferred, the process for allocating costs and proceeds of commercialization of such intellectual property, and the process for resolving disputes about it. “Invention” means any novel idea, discovery, invention, know-how, show-how, or process, whether or not patentable, together with any associated or supporting technology necessary or useful for the protection, development or application of the idea, discovery, invention, know-how, show-how, or process, and also includes all patents and patent rights derived from that Invention, and all non-patentable copyrightable works, tangible research property and research data that are closely associated with the Invention. “Closely associated with” includes useful in practicing the patent, in effectively prosecuting the patent application or in maximizing the licensing potential or other commercialization of the Invention.
III. Administration of Policy.
A. Duty to Disclose Inventions.
All faculty, staff, and students whose Inventions might be subject to this Policy have a duty to promptly disclose to the academic deans or administrative vice presidents of their departments their Inventions, regardless of whether they are individual works or institutional works by completing an Invention Disclosure Form, contained in Appendix A of this Policy. The duty to disclose arises as soon as a faculty or staff member or student should reasonably believe that his/her Invention may be patentable. The duty to disclose does not require that patentability be certain. If the University transfers ownership of an Invention to the inventor pursuant to Section VII.A and the inventor’s subsequent research results in new an Invention for which a continuation-in-part or related new patent application could be made, the Inventor must fully disclose such new Invention to the University, which may claim ownership of the new Inventions.
B. Inventor Cooperation with University Ownership Rights.
If the University maintains ownership rights to an Invention pursuant to this Policy, the University has the right, either directly or through a third party, to evaluate the Invention, to seek patent or other protection of the Invention, and to undertake commercialization and/or otherwise introduce the Invention into public use. Each inventor is required to cooperate as reasonably requested by the University, and in every necessary way, but at no out-of-pocket expense to the inventor, with the University’s efforts, including, without limitation, executing confirmatory assignments or agreements documenting the University's ownership, executing documents necessary or useful for prosecuting or enforcing patents and patent applications in the United States or in any other jurisdiction or with respect to the commercialization of the Invention or its introduction into public use, and providing reasonable advice regarding the Invention to companies who have acquired rights to the Invention pursuant to this Policy. An inventor’s obligation to cooperate as set forth herein continues after the inventor ceases to be a member of the University community with respect to Inventions covered under this Policy.
C. Ownership Determination.
Upon disclosure of an Invention, the University shall determine whether ownership vests in the University. If the University asserts ownership rights to the Invention, the University has the right (but not the obligation), either directly or through an outside agent, to evaluate and seek patent or other protection of the Invention, and to undertake efforts to introduce the Invention into public use. Inventors shall cooperate in every necessary way (but at no out of pocket expense to them) with the University and/or the outside agent, including signing all necessary documents and assigning to the University any ownership rights the inventor may have in order to permit the University or the outside agent to evaluate the Invention, to seek, maintain and defend a patent, and/or otherwise to introduce the Invention into public use.
D. Responsible Parties.
1. Provost. The Provost is responsible for administering this policy and, in consultation with the Office of Legal Affairs, for interpreting this Policy as it applies to questions of patent ownership, licensing, and royalties. The Provost shall also appoint a Patent Committee, consisting of no less than three members, one of whom will be designated by the Provost to serve as chairman.
2. Office of Legal Affairs. The Office of Legal Affairs is responsible for consulting with and advising the Provost regarding legal issues and actions related to this Policy. The Office of Legal Affairs is responsible for the periodic review and revision of this policy.
3. Patent Committee. The Patent Committee will consist of no less than three members, one of whom will be designated by the Provost to serve as chairman. The Office of Legal Affairs may advise the Committee but may not have any of its attorneys serve as a member of the Committee. The Committee shall review and recommend to the Provost or his designee the procedures for the implementation of these policies; shall resolve questions of Invention ownership that may arise between the University and its faculty, staff, or students or among individuals; shall make recommendations to the Chancellor regarding the expenditure of University proceeds from the commercialization of patents and non-patented Inventions; and shall make such recommendations as are deemed appropriate to encourage disclosure and assure prompt and expeditious handling, evaluation, and prosecution of patent opportunities.
Disputes concerning the application of this Policy must be brought to the Provost, who will refer the matter to the Patent Committee, which shall then report its recommended decision for resolution of the dispute to the Provost, to the academic dean or administrative vice president concerned, and the General Counsel. The decision of the Provost will be final. The Provost shall render a determination within ninety days of receiving written notice of the dispute. If the Provost fails to render a decision within one hundred twenty days, the University will be deemed to have relinquished any rights to the disputed patent.
IV. Ownership.
A. Faculty, Staff and Student Employees.
The University will own all Inventions conceived or first reduced to practice by its employees (i) in the course of University employment or (ii) with significant use of University resources, as defined in Section IV.F.2. The University will not claim ownership of an Invention that was conceived and first reduced to practice (a) pursuant to a consulting agreement, if certain conditions are met (See, Section V.B) or (b) during unpaid leave.
B. University Employees on Leave, Visiting Other Institutions, and Non-Employment.
In general, Inventions conceived or first reduced to practice by employees during a paid leave (whether at the University or elsewhere, including another institution or a company) are the property of the University. However, Inventions conceived and first reduced to practice by employees during an unpaid leave are not the property of the University, unless there was significant use of University resources, as defined in SectionIV.F.2.
If conception of an Invention occurred during an unpaid leave or prior to employment and reduction to practice occurred after the employee’s return to the University (after the unpaid leave ended) or after employment begins, the Invention is wholly or partially the property of the University, depending on the circumstances under which the Invention was conceived and reduced to practice. Similarly, if conception of an Invention occurred before the leave began and reduction to practice occurred while the faculty member was on leave or after employment terminates, the Invention is wholly or partially the property of the University, depending on the circumstances under which the Invention was conceived and reduced to practice.
In cases in which there are potential conflicts between the University’s policies and those of another employer or institution at which employee will be on leave and/or visiting, such conflicts will be resolved through good faith negotiations between the University and such institution or employer, preferably before the leave begins or employment changes.
C. Visitors from Other Institutions (Non-Employees).
Visitors from other institutions (“home institutions”) may participate in research or other activities at the University or under University auspices. Such participation by a visitor might result in Inventions. Such visitors are often subject to intellectual property polices of their home institutions. The obligations of each visitor under this Policy and his/her home institution’s intellectual property policy should be assessed and potential conflicts resolved through good faith negotiations between the University and his/her home institution prior to the start of the visitor’s participation in such research or other activities. It is particularly important that such conflicts be resolved prior to the start of a visit when the research at the University is sponsored by a third party.
Inventions made by a visitor will be jointly owned by the University and the home institution, unless agreed otherwise by the University and the home institution. Terms and conditions for commercialization of such jointly-owned Inventions, including sharing of proceeds, if any, from commercialization, will be determined through good faith negotiations between the University, the visitor’s home institution, and any third parties.
D. Graduate and Undergraduate Students.
This section applies to students enrolled at the University and non-enrolled students who are visiting the University, without regard to their employment status.
1. Class Work. In general, students will retain ownership of Inventions conceived or first reduced to practice as part of class work, whether the student works individually or as part of a team of students. Under these circumstances, faculty instruction and evaluation of class work will not be considered significant use of University resources and the University will make no claim of ownership.
2. Research. When a student conceives or first reduces to practice or contributes to the conception of an Invention in the course of (a) sponsored research (e.g., under a graduate or research assistantship), including research for the student’s thesis or dissertation (but excluding class work); (b) any research involving significant se of University resources, as defined in Section IV.F.2; (c) participation as a team member in a University-based project (but excluding class work) involving other students, faculty or staff; or (d) employment at the University; the University will own such Invention and the student will share in the proceeds, if any, as an inventor in accordance with Section VI on Commercialization of Patents.
E. Consultants Hired by the University.
Inventions conceived or first reduced to practice in the course of a consultant’s paid consulting work for the University will be the property of the University. Consultants should be hired only pursuant to a prior written agreement in a form approved by the University.
F. Definitions.
1. “Field of appointment” refers to the broad academic field or area of research or clinical activities in which a faculty member is engaged. Primary indicators include, but are not limited to, the academic unit or department in which the faculty member is appointed or closely related departments, or any area in which the faculty member might conduct research as part of his/her academic appointment.
2. “Significant use of University resources.” The precise determination of what level or usage of University material resources and assistance from non-faculty personnel will be considered “significant,” involves the exercise of judgment based on the circumstances and on practices within the discipline. As a basic principle, however, use of University material resources and assistance from non-faculty personnel that is incidental and not essential to the development of the Invention does not constitute significant use. Thus, for example, none of the following will be considered significant use of University resources:
· Use of office space, computers and network equipment, secretarial staff, graduate assistants, office supplies, libraries, and research database subscriptions;
· Occasional use of a specialized piece of equipment or facility for routine tasks;
· The use of resources or facilities generally available to students as part of their educational activities;
· Receipt of salary by an employee who develops an Invention.
V. Outside Consulting Activities.
A. When employees enter consulting agreements with third party firms or organizations, a possible conflict arises involving patentable Inventions. All employees who engage in outside consulting activities have the following obligations:
1. Consulting activities and agreements under which they are carried out must be consistent with any employment contracts and all University policies, including, but not limited to, the Faculty Handbook, Employee Handbook of Policies and Procedures and this Policy.
2. Employees should disclose to their academic dean or administrative vice president all consulting activities in order to facilitate the ownership determination in the event the employee’s consulting activities result in a patentable Invention.
3. Prior to beginning outside consulting activities, employees shall inform the party for whom the consulting activities are to be performed of the University’s intellectual property and conflict of interest policies, including this Policy, and the employees’ obligations under such policies.
B. The University will make no claim to an Invention made by employees in the course of a disclosed consulting engagement if:
1. The Invention resulted from work on a problem or topic (a) proposed by the company with which the employee is consulting and (b) on which the employee has not engaged in research at the University (whether or not it is within the individual’s field of appointment), and
2. The Invention was conceived and first reduced to practice without the use of any University resources or personnel. (Note that this is a more restrictive standard than “significant use.”)
A faculty member may agree to assign Inventions made in the course of consulting to the company only if these conditions are satisfied. Faculty are encouraged to disclose Inventions made in the course of consulting to the University to determine if such conditions are met.
C. Disclosure of Inventions.
If an Invention does not meet the conditions described in Section V.B above, the employee shall disclose the Invention to the University as described in Section III.A.
VI. Commercialization of Patents.
A. Distribution of Proceeds Derived from Commercialization of Patents.
When the University owns the patent rights to an Invention, the inventor has the right to share in the net proceeds derived from commercializing the patent. Specifically, net proceeds (see below) will ordinarily be distributed as follows:
1. Fifteen percent (15 %) for the general support of the University and to cover any other expenses associated with the commercialization of the University’s Inventions (this does not include the University’s actual out-of-pocket expenses that are deducted from gross proceeds, as outlined below); and
2. The remaining net proceeds (85 %) will be distributed as follows:
· Inventor share: half percent of net proceeds to the inventor or inventors (including inventors at other institutions).
· The remainder of net proceeds will be used by the University for research, scholarship and other educational activities.
Gross proceeds are all proceeds from licensing or otherwise granting rights in an Invention to third parties, including license fees, royalties on sales or other usage, and milestone payments, but excluding research funding. Net proceeds are gross proceeds minus all out-of-pocket expenses incurred by the University that are associated with the particular Invention. Out-of-pocket expenses may include patent expenses, legal expenses associated with negotiating an agreement, travel expenses, payments due to other parties with rights in the Invention, or any reasonable expenses incurred in pursuing the University’s patent rights. If the University pursues or defends litigation to enforce patent rights against non-employee third parties, then the proceeds of any judgment or settlement from such litigation will be included in gross proceeds after associated litigation expenses are deducted from such judgment or settlement. If litigation against non-employee third parties is pursued, the distribution described above may be modified at the sole discretion of the University to reflect the greater economic risk being incurred by the University in pursuing such litigation.
B. Payment of License Fees or Royalties with Ownership Interests.
Ownership interests received from a company or other entity in lieu of license fees or royalties will be allocated by calculating and distributing the appropriate number of shares, using the same percentages outlined above, irrespective of their value. In the event there is a single share or a partial share which cannot be distributed to the inventor(s), that share or partial share will belong to the University. Unless otherwise required by contractual arrangements or applicable law, the University will distribute shares of equity at the time they are received by the University or will require that the inventor receive such equity directly from the company or other entity. In the event that the University is required to hold the shares for any length of time or is otherwise restricted from distributing shares to inventors, the University will hold such shares or other interests but will not be responsible for any fluctuation in the value of the shares or any matters relating to the administration of such shares or interests.
C. Sharing Proceeds with More Than One Inventor.
If more than one inventor is to share in the inventor share, the inventors shall decide among themselves their respective shares and shall provide the Provost with a written agreement signed by all inventors. Such written agreement among the inventors must be provided to the University within three months of a written request from the University for such an agreement and must be irrevocable unless it is modified in a document signed by all inventors. In the absence of such a written agreement, the University may in its sole discretion determine the distribution of shares to inventors.
D. Rights Reserved by University.
Whenever the University licenses rights to an Invention, it will reserve the right for the University to use the Invention for internal educational, research, operational, and other non-commercial purposes and will generally seek to reserve such rights for other nonprofit research institutions.
E. Payments to Inventors.
Inventors are personally responsible for the payment of all required taxes on income derived from Inventions. If an inventor ceases employment at the University, the inventor must furnish, and update, personal contact information to the Provost.
VII. Transfer of Intellectual Property Owned by University to Inventor.
A. Transfer of Ownership to Inventor.
If the University determines that it will not pursue patenting and/or commercialization of an Invention subject to the University’s ownership under this Policy, the University will consider a written request by the inventor to transfer ownership in the Invention to the inventor, subject to the terms of any applicable agreements with third parties under which the Invention was conceived or first reduced to practice. Transfer of ownership to the inventor may be subject to an irrevocable royalty-free license to the University to use the Invention for education, research, operations, and other non-commercial purposes and reservation to the University of the right to grant similar licenses to other nonprofit institutions and sponsors. In those instances in which there are multiple inventors, all inventors must be in agreement and be party to such a request. If the University (1) has not filed a patent application 120 days after an Invention has been disclosed to the University pursuant to Section IX.A or (2) has notified the inventor(s) that it will abandon the Invention or its patent application(s) and/or patent(s), an inventor may make such a written request for transfer of the University’s ownership. In the event that the 120 day waiting period would result in a loss of patent rights, an inventor may make such request at an earlier time so long as the request contains an explanation for the timing of the request.
B. Continuing Duty to Disclose New Inventions Derived from Prior Inventions.
If, after transfer of ownership to the inventor pursuant to Section VII.A, the inventor’s research at the University results in new Inventions for which a continuation-in-part or related new patent application could be made, he/she must fully disclose each such new Invention to the University, which may claim ownership of such new Inventions.
C. Reimbursement of Expenses After Transfer of Ownership
If, after the transfer of ownership to the inventor pursuant to a request made under Section VII.A, the inventor receives proceeds from commercializing the patent, the University may require reimbursement from the inventor for any out-of-pocket expenses incurred by the University in connection with the Invention, including legal and marketing expenses.
D. No Patent Application or Transfer of Ownership by University.
In some instances, the University will not pursue patenting but may elect not to release rights to an Invention to the inventor. For example, it may be most efficient to protect and commercialize cell lines and other biological materials without patent protection. In such cases, materials will generally remain owned by the University which will grant licenses to third parties to use the materials for specified purposes, in return for compensation (in the case of commercial use) and under the condition that such materials will be returned or destroyed at the University’s request. Any such commercialization of unpatented research property will first take into consideration (i) the ability of the inventor under a material transfer agreement signed by the University to openly exchange those materials with utility as research tools with scientific colleagues outside of his or her laboratory and (ii) the responsibility of the inventor and the University otherwise to use materials resulting from sponsored research to promote and facilitate further research.
E. Inventor’s Patent Application in Foreign Countries.
In some cases, the University may decide to seek patent protection for an Invention only in the United States or only in select foreign countries and not to file patent applications in other foreign countries for such Invention. If the inventor wishes to file patent applications in foreign countries in which the University does not wish to file, he or she may request permission to do so at his or her own expense. In the case of multiple inventors, all inventors must agree and be party to the request, although all inventors need not agree to participate in the expense of such filings. The University, in its sole discretion, will decide if permission will be granted. Because the existence of patent rights which are not owned by the University in particular countries could block a licensee of the patents which the University has pursued from commercializing the Invention in such countries, and could therefore impede the University’s ability to license the patents which it has pursued, the University will retain ownership of all patent applications filed and all patents issued (U.S. and non U.S.) for the Invention.
F. Revenues from Inventor’s Patent Application in Foreign Countries.
If the University receives revenues that are or can be attributed specifically to such foreign patent applications and patents for which the inventor has paid expenses, the inventor’s share of net proceeds from such revenue will be increased from 42.5 percent to 50 percent, and the University shares will be reduced correspondingly from 57.5 percent to 50 percent in order to recognize both the expenses incurred by the University in the preparation of the U.S. application which will serve as the basis for foreign applications and the expenses incurred by the inventor on the foreign applications. The inventor may also request reimbursement of out of pocket patent expenses he/she incurred in filing such foreign patent applications and in obtaining and maintaining resulting patents from gross proceeds attributed specifically to such foreign patent applications and patents. In the event an inventor takes such action, the inventor shall provide the University with copies of all documents relating to such foreign filings, including, but not limited to, all documents sent from and submitted to any foreign patent office and documents showing the costs of obtaining such protection. These expenses will be deducted from gross proceeds when calculating net proceeds.
VIII. Making University-Owned Inventions Freely Available to the Public.
If the inventor of an Invention owned by the University wishes to make such Invention freely available to the public, through royalty-free licensing or other means, the University, subject to the terms of any applicable agreements with third parties under which the Invention was conceived or first reduced to practice, will consider a request to do so, in order to determine whether the benefits to the public of making such Inventions freely available outweigh any advantages that might be derived from commercialization. In the case of multiple inventors, all inventors must agree and be party to the request. The Provost, or his or her designee, may seek advice from the Patent Committee and will make a determination on such requests.
Issuing Office
Office of the Provost
Initial Approval Date
6/26/2015
Date of Last Review
3/04/2021
Date for Review
3/04/2026