Patent & Invention Policy

University Policy

Title

University of North Carolina at Chapel Hill Patent & Invention Policy

Introduction

The University of North Carolina at Chapel Hill is dedicated to education, research, and public service, including economic development in North Carolina. Inventions and discoveries sometimes arise during research conducted by University faculty, students, and staff. The Board of Governors of the University of North Carolina has determined that patenting and commercialization of these inventions and discoveries is consistent with the mission of the University.

Purpose

Service to the public is an integral part of the University's mission. Where possible, the University should enable inventions and discoveries resulting from its research to reach the public in a manner that will maximize their impact on society and, at the same time, provide adequate recognition and reward to inventors. The University has established this policy to ensure that those inventions and discoveries in which the University has an interest will be used in a manner consistent with the public good through patent protection or other mechanisms as appropriate. In addition, the University is obligated under the Bayh-Dole Act and other statutes to be a responsible steward of inventions resulting from research funded with public money.

Scope

This policy applies to Inventions made by:

  • any University employee
  • any non-employee (including students, adjunct faculty, visiting researchers, or volunteers) using University facilities (excluding student housing, libraries, and maker spaces), equipment, materials, or resources
  • any person who receives funds provided by or administered by the University

The provisions of this policy are subject to any applicable laws, regulations, or specific provisions of the grants or contracts that govern the rights in inventions or discoveries made in connection with sponsored research.

Definitions

The Bayh-Dole Act  (35 U.S.C. §§ 200–212 and 37 CFR § 401): A U.S. law that allows universities, small businesses, and nonprofits to retain ownership of inventions developed through federally funded research.

Invention: an invention or discovery of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, compounds, prototypes, biological materials, software, complex multimedia works, research data, and tangible research results, provided that such invention or discovery (1) is patentable or commercializable, or (2) is obligated under a sponsored research agreement, or (3) is created to support the University’s administrative operations.

Public Disclosure Event: any publication, submission of a manuscript for publication, sale, public use, or plans for sale or public use of an Invention.

Report of Invention: information necessary for the evaluation of an Invention, including the name of the contributors(s), funding sources used to create the Invention, and a description of the Invention

Policy

Policy Statement

I. Duty to Disclose Inventions to University

Each contributor must disclose their Invention promptly upon its creation, conception, or discovery through submitting a Report of Invention. The Office of Technology Commercialization, or its designee, determines the form and means of submission of the Report of Invention. The University will use United States patent law, when applicable, or the Office of Technology Commercialization’s procedures to determine inventorship.

Failure to report an Invention may:

  • prevent the Invention from being patented;
  • subject the University to risks for noncompliance with federal laws and/or contractual obligations; and
  • result in other University sanctions, including disciplinary action.

II. Duty to Report Before Public Disclosure; Publication

The results of faculty and student research should be published in scholarly form. Except for short periods of time necessary to protect patent rights, this Patent & Invention Policy does not limit the right to publish. Public disclosure, including publication, presentation, or public use, may prevent the University from obtaining patent protection for the Invention. Under U.S. law, a patent application must be filed within one year of the first public disclosure. In most foreign jurisdictions, public disclosure immediately bars patentability.

The contributor must notify the Office of Technology Commercialization of any upcoming Public Disclosure Event if a Report of Invention has previously been filed. If the contributor is not available to make such a report, the contributor’s supervisor must notify the Office of Technology Commercialization. This duty to report:

  • applies immediately upon the contributor or the contributor’s supervisor becoming aware of any such Public Disclosure Event; and
  • remains an affirmative duty until a patent application or a provisional patent application is filed, or until the one-year anniversary of the first Public Disclosure Event, whichever event occurs first.

Additionally, if an Invention is disclosed to any person who is not a University employee or working in cooperation with the University upon that Invention through a University-approved agreement, the disclosing party must keep a record of:

  • the date and extent of the disclosure,
  • the name and address of the person to whom the disclosure was made, and
  • the purpose of the disclosure.

III. University Ownership of Inventions

Unless otherwise transferred in a written agreement signed by a University official with delegated authority, the University owns all right, title, and interest in any Invention made by:

  • any employee;
  • any non-employee (including but not limited to students, adjunct faculty, volunteers, visiting scientists) using University facilities, equipment, materials, or resources; and/or
  • anyone who receives funds provided by or administered by the University.

As a condition of each inventor's employment at the University and/or use of University facilities or funds, each inventor does hereby assign all such Inventions to the University; and must promptly execute all contracts, assignments, waivers, or other legal documents deemed by the University necessary to implement this policy, including an assignment agreement or patent applications relating to the Invention.

If a work falls under both the University's Copyright Policy and the Patent & Invention Policy, and the University decides to commercialize the work through the Office of Technology Commercialization under the Patent & Invention Policy, the inventor or creator must transfer copyright ownership to the University.

Some contracts or agreements between the University and outside organizations (such as government agencies, companies, or private groups) may require the University to transfer or license rights to inventions or discoveries created as part of the work done under these agreements to the contracting party. The University retains the right to enter into such agreements whenever such action is in its best interest and the public interest.

University personnel must not:

  • sign patent agreements with outside persons or organizations that may abrogate the University's rights and interests as stated in the Patent & Invention Policy or as provided in any grant or contract funding the Invention, nor
  • without prior authorization, use the name of the University or any of its units in connection with any invention in which the University has an interest.

IV. Inventor Ownership of Inventions

An inventor who is a University employee or student may own all right, title, and interest in certain Inventions (each an "Inventor-Owned Invention") under either of the two following circumstances as determined by the Office of Technology Commercialization:

  1. If the subject matter of the Invention is outside the scope of the inventor's employment activities (such activities including the inventor's research, clinical work, teaching, administrative, service activities, or permitted entrepreneurial activities) at the University, an Invention may be an Inventor-Owned Invention if it was made:
    1. without the material use of University facilities, equipment, materials, technology, personnel, or resources;
    2. without funds provided by or administered by the University; and
    3. without interfering with the inventor's obligation to carry out all of the inventor’s primary University duties in a timely and effective manner.
  2. If the subject matter of the Invention is within the scope of the inventor's employment activities (such activities including the inventor's research, teaching, clinical work, administrative, service activities, or permitted entrepreneurial activities) at the University, an Invention may be an Inventor-Owned Invention if it qualifies as an "external professional activity invention." An "external professional activity invention" means an Invention that:
    1. meets the conditions set forth in section 1(a) through (c) above;
    2. is made in the course of the inventor's external professional activities in compliance with the University's Policy on External Professional Activities of Faculty and Other Professional Staff (or as evidenced in writing under any substitute or complementary policy or procedure);
    3. is not based on or, to be practiced, does not require the use of intellectual property owned by the University;
    4. arises out of a specific scope of work defined in a written document (either stand-alone or included in a written agreement between the inventor and a third party); and
    5. such inventor has:
      • received prior review and approval of the specific scope of work document from the inventor’s departmental chair, school dean, unit director, or similar administrative officer to engage in the external activity described in the specific scope of work document; and
      • provided notice of such approval to the University's Office of Technology Commercialization.

Any person claiming that an invention is an Inventor-Owned Invention must disclose such invention to the University and provide additional information to the University, as requested by the Office of Technology Commercialization, to demonstrate that such invention qualifies as an Inventor-Owned Invention as defined by this policy. Any person making such an invention must follow the University's Report of Invention procedures to notify the University of their claim (contact the Office of Technology Commercialization prior to submission if the subject matter to be disclosed is not yet published). Upon its final determination, the University will acknowledge in writing whether such invention is an Inventor-Owned Invention.

The University does not claim any rights in Inventor-Owned Inventions.

V. University Release of University-Owned Inventions

  1. The University Office of Technology Commercialization, after consultation with the inventor(s), may in its sole discretion cause the University's rights to an Invention to be released to the sponsor of the research leading to the Invention, the inventor(s) of such Invention (or the inventor's designee), or to the public domain, if any one of the following conditions are met:
    1. the Office of Technology Commercialization has determined that there is limited commercial opportunity for such Invention, OR
    2. the Office of Technology Commercialization determines that the Invention is not patentable or does not warrant further evaluation as to patentability.
    3. to Sponsors, where obligated in accordance with the terms of the applicable sponsorship agreement.
    4. to the public domain if the inventors or creator(s) agree in writing to make the Invention readily available to the public under an open-source license or similar open distribution method.

Unless otherwise agreed in writing between the inventor(s) and the University the Office of Technology Commercialization will make such determination within 90 calendar days of receipt of a complete Report of Invention, or 30 days where the release is requested under Section (d).

  1. If the University has determined to discontinue or abandon patent prosecution or maintenance, it will notify the sponsor and the inventor(s) at least 90 calendar days before the abandonment date to permit sponsors and/or inventor(s) to request a release. The Office of Technology Commercialization may, in its discretion and upon such terms as it deems appropriate, cause the University's rights to an Invention to be released or licensed to the sponsor, or if the sponsor declines, to the inventor of such an Invention (or to the inventor's designee)
  2. If the University has not taken action towards commercialization of the Invention within one year after the date of a complete disclosure, the inventor(s) may request the release of their Invention from the University, through the Office of Technology Commercialization. Upon receipt of a request, the Office of Technology Commercialization may, in its discretion and upon such terms as it deems appropriate, cause the University's rights to an Invention to be released or licensed to the inventor(s) of such Invention (or to the inventor's designee).
  3. Each release of a University-owned Invention in accordance with this policy is subject to the University's ongoing right to use such Invention in connection with its educational, clinical, and research mission.

VI. Revenue Sharing

  1. The University must share with the inventor(s) revenue that it receives from the commercialization of Inventions. Revenue that the University receives from such Inventions may be exclusive of payments of royalty shares owed by contract to joint owners, sponsors, or contractors. The University may hire outside persons or organizations to obtain, manage, and/or defend patents as part of the commercialization process. The University may also deduct any royalty shares or expenses contractually committed to such persons or organizations before revenues are distributed to the University and the inventor(s).
  2. The revenues the University receives from an Invention will be applied first to reimburse the University for payments and expenses described in the preceding paragraph (including patenting costs). The Office of Technology Commercialization will collect the remaining revenue and share that revenue among the office (20%), the inventor(s) (40%), and the inventor's department(s) or unit(s) (40%).
    1. Office of Technology Commercialization Share: The University will apply the 20% share of the revenues allocated to the Office of Technology Commercialization to the Invention Management Fund for:
      • obtaining and maintaining patents,
      • marketing, licensing, and defending patents or licensable inventions, and/or
      • technology transfer.
    2. Inventor(s) Share: The Office of Technology Commercialization will distribute the inventor's share of such revenues (40%). When there is more than one inventor, the University will subdivide the inventors' share equally by default. If all inventors sign a written agreement to distribute income other than in equal shares, the University will distribute to inventors per that agreement. However, applicable laws, regulations, or provisions of grants or contracts may require that a lesser share be paid to the inventor. Under no circumstances will the total share paid by the University to the inventor(s) be less than 15% of the gross royalties the University receives.
    3. Department/Unit Share: The Office of Technology Commercialization will distribute the department/unit’s share of such revenues (40%). The department/unit must use the revenues for research or other appropriate purposes. When there is more than one inventor, the Office of Technology Commercialization distributes the department/unit share of income to each inventor's department/unit following the same proportion as the share received by the inventor in the Inventor written agreement. The University may adjust distribution among departments/units when the dean, department chair, or unit director has agreed to such an adjustment in writing with another department, center, or unit.

VII. Dispute Resolution

Any dispute arising in connection with this policy is subject to the written determination of the Director of the Office of Technology Commercialization.

  • Any University employee or student may appeal that decision by filing a written request to the Vice Chancellor for Innovation, Entrepreneurship and Economic Development within 30 calendar days of the decision.
  • If the Vice Chancellor's written determination fails to resolve the dispute, the University employee or student may further appeal by filing a written request to the University's Chancellor within 30 calendar days of the date of the Vice Chancellor's determination.
  • Promptly upon receipt of such notice, the Chancellor must appoint a committee to recommend a resolution to the dispute. The committee must be comprised of faculty, staff, and/or (when appropriate) students qualified to evaluate and resolve such a dispute. The committee must report its recommendation to the Chancellor no later than six (6) months after the committee has been appointed.
  • The Chancellor will make the final and binding decision after receiving such a recommendation within 30 calendar days.

Related Requirements

University Policies, Standards, and Procedures 

The Office of Technology Commercialization has established procedures and guidelines to implement this policy.

The rights and obligations set forth in this policy are in addition to the rights and obligations set forth in other University policies, including:

Contact Information

Primary Contact

Unit: Office of Technology Commercialization

Telephone: 919-966-3929

Email: otc@unc.edu

Website: Office of Technology Commercialization homepage

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