Ohio Admin. Code 3337-3-35

Current through all regulations passed and filed through October 28, 2024

Section 3337-3-35 - Patent policy

(A) Patentable discoveries sometimes result from research performed at Ohio university. It is the desire of the university to be as helpful as possible in protecting the patent rights of the faculty and researchers, students and employees, to the fullest extent compatible with the public interest and the rights of the university. To this end the university has set up a patents committee and has contracted for the patent management services of the "Research Corporation" and of the "Battelle Development Corporation" and has authorized the hiring of patent attorneys to file patent applications.

(B) Section 3345.14 of the Revised code, the state law governing patent rights of Ohio university personnel states:

(1) "Rights to discoveries or inventions to be property of university or center; disposition of income therefrom. All rights to and interests in discoveries or inventions, including patents thereon which result from research or investigation conducted in any experiment station, bureau, laboratory, or research facility of any state college, university, or agricultural research and development center shall be the sole property of such college, university, or center. No person, firm, association, corporation, or governmental agency which uses the facilities of such college, university, or center in connection with such research or investigation and no faculty member, employee, or student of such college, university, or center participating in or making such discoveries or inventions, shall have any rights to or interests in such discoveries or inventions, including income therefrom, except as may, by determination of the board of trustees of college or university, or by determination of the board of- control in case of such center, be assigned, licensed, transferred, or paid to such persons or entities. As may be determined from time to time by the board of trustees of any state college, university, or by the board of control in case of the agricultural research and development center, the college or university, or center may retain, assign, license, transfer, sell, or otherwise dispose of, in whole or in part and upon such terms as the board of trustees or board of control may direct, any and all rights to, interests in, or income from-any such discoveries, inventions, or patents which the college, university or center owns or may acquire. Such dispositions may be to any individual, firm, association, corporation, or governmental agency, or to any faculty member, employee, or student of the college, university, or center, as the board of trustees or board of control may direct. Any and all income or proceeds derived or retained from such dispositions shall be applied to the general or special use of the college, university, or center, as determined by the board of trustees of such college, university, or by the board of control in the case of such center. History: 129v1665, 1 (effective October 26, 1961); 131vII 64, 1, effective July 28, 1965."

(2) The board of trustees of Ohio university, on April 17, 1962, authorized the president of Ohio university, "to assign, license, or transfer to any government agency furnishing funds for research and investigation, any discoveries or inventions including patent rights thereon, resulting from investigation, or research supported in whole or in part by the said government agencies, providing the president finds it advisable to assign these patent rights in order to obtain the contract", and on January 29, 1965, "to assign, license, or transfer to any individual, firm, association, corporation, or governmental agency furnishing funds for research and investigation, any discoveries or inventions including patent rights thereon, or any portion of patent rights, resulting from investigation, or research supported in whole or in part by said individual, firm, association, corporation, or governmental agency, providing the president finds it advisable to assign these patent rights or portion of the patent rights in order to obtain the contract".

(C) For purposes of classification under this policy, the following types of research and development efforts are recognized.

(1) Wholly supported by Ohio university as to time, facilities and equipment.

(2) Partly supported by Ohio university as to time and/or facilities and/or equipment.

(3) Not supported by Ohio university as to time or facilities.

(4) Government supported contract research and development.

(5) Government and university jointly supported contract research and development.

(6) Privately supported- contract research and development.

(7) Jointly supported by Ohio university and private sources.

(8) Government supported grants.

(9) Private grants.

(10) Ohio university supported grants.

(11) Other.

(D) The rights of the inventor in each of the support situations outlined in three above shall be determined as follows:

(1) When support is wholly by Ohio university, the university shall at its option, process the discovery through its patent management agencies, or through other agencies not specified in paragraph (A) or permit the inventor to process his discovery or publish it to safeguard the public interest.

(2) When Ohio university support has been fifty per cent or more or over two thousand dollars in fair value paragraph (D)(1)(above) applies. Otherwise, as in paragraph (D)(3).

(3) When Ohio university has contributed neither time nor facilities nor equipment the idea may, at the option of the inventor, be submitted to the patent management agency with the stipulation that action must be taken within six months or the invention will revert to the inventor on his request. Otherwise, the idea is and remains the property of the inventor. It is his prerogative to patent, sell, license, or otherwise utilize as he may choose.

(4) Government supported contract research shall be treated as in paragraph (D)(1) where the contract permits and with such exceptions as are required by the contract.

(5) As in paragraph (D)(4)(above).

(6) As specified in the contract.

(7) As specified in the contract.

(8) As specified in the grant.

(9) As specified in the grant.

(10) As specified in the grant.

(11) To be determined on the basis of prior agreement and/or by action of the director of research in consultation with the patent committee.

(E) The inventor's share.

(1) In cases covered by paragraph (C)(1) and (D)(1) (above), if the university elects to have the invention processed by either of its patent management agencies the inventor shall receive fifteen per cent of the gross in case per cent of the net (fifty per cent of the university share) in case "Battelle Development Corporation" is used. If the university elects to act as its own patent management the inventor shall have the option either to receive twenty-five per cent of the net returns after payment of the cost of prosecuting domestic and foreign patents, the cost of work to develop the invention and the cost managing the patent or fifteen per cent of the gross royalties. If the university chooses to let the inventor process his own idea, the inventor shall retain ninety per cent of the' net proceeds. If the discovery or invention is processed by agencies not specified in paragraph (A), fifty per cent of the net proceeds to the university will constitute the inventor's share. If the invention results in a joint disclosure by a member of the faculty and a student, the royalty income due under one of the specified options shall be divided two-thirds to the faculty member and one-third to the student unless mutually agreed otherwise by the faulty member and the student.

(2) In the cases covered by paragraphs (C)(2) and (D)(2)(above) the director of research will determine (and if necessary submit to the patent committee for arbitration) the per cent of support from Ohio university. The inventor shall in case "Research Corporation" handles the patent, receive fifteen per cent of the gross plus a per cent of the proceeds to the university corresponding to his share of the support as determined above. If he bears the expense of processing, he shall receive ninety per cent of the net after repayment of the university support. If the discovery or invention is processed by agencies not specified in paragraph (A), fifty per cent of the net proceeds to the university will constitute the inventor's share.

(3) In the case of no university support, as in paragraphs (C)(3) and (D)(3)(above), if the inventor elects to use the Research Corporation as patent management agency, he shall receive fifteen per cent of the gross plus eighty per cent of the university share. If Battelle Development Corporation's the agency he shall receive forty-five per cent of the net. If he elects to process his own idea he shall receive one hundred per cent (Ohio university will make no claims).

(4) These cases, covered in paragraphs (C)(4) to (C)(10) and paragraphs (D)(4) to (D)(10)(above) shall be determined by the contract or grant or by the appropriate paragraph (E)(2), or (E)(3) where the contract or grant permits.

(5) Cases falling under paragraphs (C)(11) and (D)(11)(above) will be determined by action of the director of research in consultation with patent committee.

(6) In all cases falling under paragraphs (C) and (D) the inventor or discoverer will receive one hundred per cent of any finder's fee offered by the patent management agency.

(F) Administration of the patent policy.

(1) The control of patents is vested in the board of trustees of Ohio university by law.

(2) In the board of trustees meeting held on December 12, 1968 the following resolution was adopted:

"Whereas, section 3345.14 of the Ohio Revised Code vests in the Ohio university all rights to and interests in discoveries or inventions including patents thereon which result from research or investigation conducted in any experimental station, bureau, laboratory or research facility of Ohio university, and; Whereas, the board of trustees of Ohio university deem it desirable to encourage members of the student body, academic and administrative staff to engage in research and investigation, and;

Whereas, the board-of trustees believes that such interest and activity by members of the student body, academic and administrative staff can best be encouraged by recognizing that the person responsible for the development of a discovery or invention including patents thereon should participate in the financial rewards incident to the development, sale, assignment, transfer and/or distribution of the discovery or invention, and;

Whereas, the board of trustees are aware that the research and development projects of the university, its students, employees, agents and representatives are numerous, and;

Whereas, the position of the director of research has been established at Ohio university. Now, therefore, be it hereby resolved, that the board of trustees hereby determines that it desires to encourage members of the student body, academic and administrative staff in connection with their research and development activities and desires to permit the assignment, license, transfer or sale of rights and interests in the discoveries and inventions including patents thereon that may result from the activities of members of the student body, academic and administrative staff.

And be it further resolved, that the power, authority, and responsibility of the board of trustees of Ohio university as defined in section 3345.14 of the Ohio Revised Code be and the same hereby is delegated and confided in the director of research of Ohio university, subject, however, to the following:

(a) The developer, inventor or other person either a member of the student body or on the academic or administrative staff responsible for any discovery or invention including patents thereon shall have a right of participation in the financial rewards incident to the sale, assignment or license to use such discovery or invention including patents thereon in some reasonable amount as determined by the director of research.

(b) The Ohio university shall retain a right of participation in the financial rewards incident to the sale, license, assignment or transfer of rights to or interest in any discovery, invention or patents thereon which may hereafter be developed by members of the student body, academic or administrative staff.

(c) The director of research is hereby given and granted the authority to contract with respect to, to sell, assign, license or transfer rights in and to discoveries and/or inventions and the patents thereon and to determine the division of the income or sale proceeds generated thereby as between the university and the originator or inventor of the discovery or patentable matter.

(d) The director of research shall make a report to the board of trustees once each calendar quarter in which he would set forth all actions by him taken or authorized by him, pertaining to this grant of authority,' during the preceding quarter and failure of the board of trustees to direct a revision, recision amendment or other change in connection with the matters reported upon within sixty days of the receipt of such report, shall cause the same to become binding and obligatory upon the board of trustees of the Ohio university with respect to the matters covered therein."

This resolution delegates to the director of research the authority to negotiate and contract for the sale or licensing of inventions and to determine the division of income between the university and the inventor.

(3) The director of research shall appoint a committee on patents consisting of seven members, four from the faculty, one graduate student and two from administration to study ideas for patentable, inventions and make recommendations to the director of research.

(4) Disclosures must be submitted in writing to the director of research and will be acknowledged in writing by him within thirty days.

(5) At monthly intervals after the submission of a disclosure, the inventor is to be informed in writing by the director of research about the progress and disposition of his idea. If the university takes no action within a six-month period the invention shall become the property of the inventor.

(G) Personnel patent agreement. Each employee of the university who is involved in a project that might become patented is asked to sign an agreement embodying the patent policy of the university as stated.

Ohio Admin. Code 3337-3-35

Effective: 3/14/2015
Promulgated Under: 111.15
Statutory Authority: 111.15
Rule Amplifies: 111.15
Prior Effective Dates: 3/16/1978