As a result of employment and because employees are provided opportunities and occasions to develop new inventions and creative works, each employee is required to execute an Employee Intellectual Property Agreement that reflects the provisions of the AUI contractual agreements with its funding agencies as well as with the AUI Patent Policy adopted on March 12, 1987. In the absence of a signed Employee Intellectual Property Agreement (EIPA) the employee’s responsibility shall not be reduced under this policy on intellectual property (IP policy). Copies of this IP policy shall be made available to employees at the time they are requested to sign the EIPA. The provisions of this IP policy apply to all intellectual property that were created, conceived or first reduced to practice in the course of employment at an AUI Research Center after November 8, 1984. This Policy covers inventions, patents, trade secrets, copyrights, mask works and trademarks created or otherwise made by all employees of AUI.
Any employee of AUI in the course of his or her employment with AUI that conceives, reduces to practice or otherwise makes an invention agrees to promptly file an Invention Disclosure Form (IDF) with AUI (or its designee), and to do so at least 30 days prior to public disclosure. The IDF must contain sufficient detail such that one or more defensible patent applications for the invention can be prepared and filed.
- The IDF creates a record of an invention, but does not establish its patentability. Contents of an IDF are considered confidential and privileged, and, should not be disclosed to third-parties without the consent of the inventor(s) or the consent of AUI (or its designee).
- When public disclosure is needed within the 30 day period, the employee may request a fast-track IDF with AUI (or its designee), which, if approved, grants the employee permission to publicly disclose the invention after the date provided in the approved fast-track request.
- Any employee of AUI in the course of his or her employment with AUI that conceives, reduces to practice or otherwise makes an invention agrees to promptly file an Invention Disclosure Form (IDF) with AUI (or its designee), and to do so at least 30 days prior to public disclosure. The IDF must contain sufficient detail such that one or more defensible patent applications for the invention can be prepared and filed.
- AUI must disclose each invention to the federal sponsoring agency within two months using the Record of Invention after receiving an IDF from the inventor(s). The inventor(s) agree(s) to do all things that are necessary to enable AUI to fulfill its obligations to any person, corporation, or other agency sponsoring the particular research projects.
- Any additional contractual provisions shall prevail, under which the work is being conducted, which require a different time frame for reporting inventions to a funding sponsor, or, which retain title to the invention, so long as these contractual provisions to not conflict with established AUI or NSF rules and agreements.
Intellectual Property Ownership
Under the provisions of
as amended by
AUI owns title to and/or has the right to take title to all inventions conceived or first reduced to practice, including actually reduced to practice, and to all creative works for hire otherwise made by AUI employees in the conduct of their employment.
“Conduct of their employment” shall mean:
- the invention or creative work relates to the employee’s responsibilities while at AUI;
- the invention or creative work relates to one or more AUI projects on which the employee has performed activities or otherwise been involved or exposed;
the invention or creative work was made using more than de minimis AUI resources.
- For the avoidance of doubt, de minimis shall mean solely telephone or solely Internet access on a computer, and not involving significant employee time and/or use of AUI equipment other than a telephone or computer for Internet access.
- “Conduct of their employment” shall mean:
- This right of AUI is reflected in the “Patent Rights” and “Copyrightable Material” clauses implementing these statutes included in AUI’s contractual agreements. These clauses may be found in the NSF Financial & Administrative Terms and Conditions (FATC).
- Inventions and creative works made by employees on their own time that are unrelated to the employee’s past and present responsibilities or activities at AUI, and without the use of AUI or sponsoring agency resources shall not be subject to claims by AUI.
- Inventions and creative works made prior to AUI employment may be listed on the EIPA Supplemental for specific exclusion under this policy, provided all previous work was not performed using AUI resources or sponsoring agency resources related to AUI.
- Under the provisions of
- The Inventor(s) agree(s) to promptly supply all information that may be later requested by AUI (or its designee) for the purpose of prosecuting patent applications thereon, and to act in good faith and for the benefit of AUI in support of the enforcement of AUI’s patent rights to such invention. All expenses of filing such assignments, prosecuting such patent applications, and procuring such patents shall not be the responsibility of the inventor(s). AUI reserves the right to abandon the prosecution of any patent application.
Determination to Apply for Patent(s)
AUI will determine whether to take title of any invention reported, and, if it decides to take title, AUI will provide resources to attempt to obtain patent coverage and to license the invention. If AUI takes title, the inventor(s) agree(s) to cooperate fully and in good faith to assist AUI in preparing and prosecuting, and enforcing one or more patent applications for protection of the invention.
- If AUI does not take title to an invention to which it is entitled under the terms of a contract with the U.S. Government, title normally remains with the U.S. Government. If the Government has title, the inventor(s) will cooperate and assist AUI and the Government in preparing and prosecuting a patent application or other application for protection of the invention.
- If AUI does not take title and the sponsoring US Government agency does not choose to obtain patent or other protection, AUI will notify the inventor(s) who may, at their discretion, petition the agency for a waiver of Government rights. Before the agency will consider a waiver request from an AUI employee, AUI must consent to this waiver.
- AUI will determine whether to take title of any invention reported, and, if it decides to take title, AUI will provide resources to attempt to obtain patent coverage and to license the invention. If AUI takes title, the inventor(s) agree(s) to cooperate fully and in good faith to assist AUI in preparing and prosecuting, and enforcing one or more patent applications for protection of the invention.
- AUI reserves the right to selectively license all intellectual property, held in title by AUI, to third-parties using contractual terms of its own choosing, and in compliance with its sponsoring contractual agreements.
- AUI reserves the right to selectively reproduce all intellectual property, held in title by AUI, for sale to third-parties, and in compliance with its sponsoring contractual agreements.
- In the above two instances, AUI shall be considered to have exercised its title rights to license the intellectual property.
- AUI reserves the right to selectively license any intellectual property, held in title by AUI, through a royalty-free license to further research and education.
- For clarification, AUI shall not be considered to have exercised its title rights to license when reproducing any intellectual property for internal use within AUI or its Research Centers.
Income Distribution Schedule
- All income derived from intellectual property licensing activities covered by this IP policy, shall be payable to AUI and a formal accounting of all activities will be maintained in an AUI Patent Account for the appropriate Research Center on a fiscal year basis of October 1 through September 30. Permanent, continuous accounting records will also be maintained for each invention.
- AUI will distribute income received from its intellectual property licensing activities in accordance with the provisions of the funding agency contractual agreements and in a manner that recognizes the best interests of the Research Center that developed the technology.
Distribution of licensing income (known as “residual funds”) from the AUI Patent Account will be made in accordance with the following provisions:
- Legal and related costs directly associated with protecting, licensing, negotiating, marketing or reproducing that particular intellectual property will first be applied.
Remaining residual funds will be divided into three equal parts, one part being awarded to the inventor(s) of record or to the creator(s) of record, one part assigned to the Research Center Director discretionary fund (designating TTO as its source), and one part assigned to the AUI discretionary fund.
- Distribution of available residual funds will be made on the second monthly pay period after the end of each fiscal quarter the income is received (i.e. to be dispersed in Feb, May, Aug, Nov) subject to any limitations imposed by law.
- Residual funds originating from intellectual property shall be in addition to regular pay and other awards made to the inventor/creator.
Joint inventors shall receive portions established by the IDF royalty share % section.
- Disputes regarding royalty share %, should be resolved within 180 days after the IDF is first filed. While the USPTO considers ALL inventors equal co-inventors, AUI retains the right to establish the royalty share % based on the IDF.
- Non-patented inventions should also use the IDF to establish royalty share % using the same parameters as above.
- In the absence of an IDF, or where the royalty share % is in dispute, AUI retains the right to make a good-faith determination of each inventor’s royalty share %, and may elect to make all inventors equal in their portions.
Co-creators of copyrights, mask works, trademarks or other works of authorship shall receive equal portions, unless a royalty share % is established prior to receiving first licensing payments at AUI.
- Where the royalty share % is in dispute, AUI retains the right to make a good-faith determination of each creator’s royalty share %, and may elect to make all creators equal in their portions.
- Distribution of the employee share of residual funds shall continue to be made regardless of changes in, or termination of, the individual’s employment status with AUI.
- If an inventor or creator is not an AUI employee but has assigned to AUI his/her rights to intellectual property as covered by this AUI IP policy, such inventor will participate in the distribution of residual funds as if he/she were an AUI employee.
- In the event of an employee’s death, his/her share of residual funds will be made available to that individual’s estate.
Intellectual Property Disputes
- AUI shall continue to make good-faith payments of residual funds distribution(s), based on AUI’s understanding of the agreement, while legal disputes are being resolved with the inventor(s) and/or the creator(s) of AUI held intellectual property.
IP policy Updates
- AUI reserves the right to update this policy to reflect changes in sponsoring contractual agreements, changes in the way AUI does business, or changes needed by commercialization efforts.