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Name: Patent Policy
Responsible Office: Board of Trustees

Applies to: (examples; Faculty,Staff, Students, etc)

Faculty , Staff , Students , Contractors_Vendors

Policy Overview:

Issued: 03-16-2016
Next Review Date: 03-16-2016
Frequency of Reviews: Every 3 years

St. Louis College of Pharmacy ("STLCOP") is dedicated to advancing the knowledge and practice of pharmacy and the health sciences through its mission of education, research, scholarship, and patient care. STLCOP strives to provide an environment that encourages and supports innovation, and promotes the discovery of new knowledge and inventions. STLCOP may seek to protect and reduce new knowledge or inventions to practice whenever there is the potential to make a significant contribution to STLCOP's mission or the greater good for the general public. This policy provides a framework for establishing ownership of patentable inventions while rewarding inventors and sustaining the research enterprise at STLCOP.

This policy applies to all faculty, staff, students, and third-parties who use the College's facilities or resources.

 


Details:

A. Scope and Applicability

This policy shall apply as a condition of employment or study to the following individuals:

1. All personnel, including but not limited to members of the faculty and staff holding appointments at or employed by STLCOP, persons holding any form of research appointment, visiting professors or visiting scientists, undergraduate and professional students, graduate assistants, teaching assistants, post-doctoral fellows, and residents.

2. All other persons with inventions that result in whole or in part from use of STLCOP facilities or resources.

3. In the event that any person to whom this policy shall ordinarily apply is subject to an agreement or policy elsewhere under the terms which prohibit assignment of patent rights to STLCOP, it shall be the obligation of that person to inform the President, through the appropriate academic dean or chief administrator, before entering upon a program of study at, entering the employment of, accepting any form of support from, or usingthe facilities of STLCOP. Upon such notification, STLCOP will enter into a specific, written agreement respecting the rights and obligations of each involved party in regard to patentable discoveries. In the absence of such written agreement, the provisions of this policy shall apply.

4. STLCOP faculty and staff who have reached an agreement with STLCOP to pursue inventions not owned by STLCOP, and in which they have full rights. In return for this support and related services, the individual will be required to assign to STLCOP his/her rights to the invention, which then will be administered as all other inventions subject to this policy.

B. Requirement to Disclose and Assign Rights to STLCOP

This policy shall not be construed so as to infringe upon the rights of all persons connected with STLCOP to freely pursue research and publish the results. However, it is the obligation of the inventor to disclose his/her invention or discovery, including improvements and reductions to practice, to STLCOP in accordance with this policy before disclosure is made of research results by publication or through any other medium.

Any person identified in Section A who conceives or makes or reduces to practice any invention, discovery, improvement or reduction to practice that is conceived or made during the course of or related to his/her STLCOP activities, shall promptly, before he/she makes a public disclosure and soon enough to permit timely filing of a patent application in the United States and in foreign countries, disclose the invention, discovery, improvement, or reduction to practice to the appropriate Dean, chief administrator, and the General Counsel. All persons who are subject to this policy are required to assign to STLCOP their individual rights to inventions, discoveries, improvements, and reductions to practice to STLCOP, including, without limitation, United States and foreign patent rights and the right to claim priority under
the terms of any international patent agreement. In the event that such a person's invention, discovery, improvement or reduction to practice arises out of an agreement between STLCOP and another party, then that person will be bound by the terms of that agreement.

Student inventions created as a part of the student's coursework are owned by the student inventor(s) provided that: (a) the coursework is not part of a sponsored research agreement, or (b) no STLCOP personnel contributed intellectual property to the invention, or (c) STLCOP funds, facilities, or resources were not used in whole or in part in connection with the discovery or reduction to practice.

STLCOP employees, who as participants in consulting activities are required to enter into agreements concerning assignment of patents or rights in discoveries or inventions, must forward these agreements to the appropriate dean or chief administrator for their area to review. This includes, without limitation, consulting activities involving specific research at STLCOP or with STLCOP facilities or resources by the employee or by others under the employee's direction. The appropriate dean or chief administrator will in turn seek legal review by the General Counsel to be certain that such agreements do not inappropriately assign STLCOP's rights to third parties. In no case will STLCOP employees assign to others rights to any invention or discovery which has been conceived or reduced to practice in whole or in part using STLCOP facilities or resources without the approval of the appropriate dean, chief administrator, and the President. This prohibition will apply to work performed under all consulting agreements, unless STLCOP is party to an agreement and has specifically agreed to such an assignment.

Laboratory notebooks and all other documents pertaining to research activities are the property of STLCOP. These records are necessary for STLCOP to document an invention or discovery and to support a related patent application.

C. Return or Assignment of Rights

If STLCOP elects not to file a patent application or otherwise protect or commercialize information which has been disclosed to STLCOP on or following the effective date of this Patent Policy, this decision will be promptly communicated by the President to the appropriate dean or chief administrator and to the person who made the disclosure. If such person, or if any other person requests that STLCOP permit him/her to file such a patent application or to have assigned to him/her STLCOP's rights, STLCOP may, at the President's sole discretion and under conditions he or she deems appropriate, grant such permission and assign or license to such person or persons some or all of STLCOP's rights to such information and to all related derivative inventions. In reviewing the request, STLCOP's President shall take into account the following factors: the public interest; the interests of sponsors, including the provisions contained in an agreement with a sponsor executed prior to the initiation of the research activity which led to this discovery; the interests of the inventor and STLCOP; and such other considerations as it deems appropriate. In every case, STLCOP will retain a world-wide, non-exclusive, royalty-free license to practice the invention for internal STLCOP purposes.

If STLCOP elects to contract for outside evaluation, protection, or commercialization of a disclosure, this decision will be communicated promptly by the President to the appropriate dean or chief administrator and the person who made the disclosure. Moreover, the person who made the disclosure periodically will be briefed on the strategy and progress of the outside contractor in meeting its obligations under the contract.

D. Reservation of Rights in Sponsored Research

Ownership of patents arising from work sponsored by Federal agencies shall be subject to the provisions of Public Law 96-517, the Bayh-Dole Act as amended, other applicable law, and the provisions of this patent policy. The Bayh-Dole Act gives nonprofit institutions a right of first refusal to title in inventions resulting from research performed with the support of Federal contracts and grants.

Ownership of patents arising from work funded by other external sponsors shall be subject to specific provisions contained in research proposals and agreements with those sponsors which have been executed by an appropriately authorized individual in accordance with STLCOP regulations.

E. Licensing of Rights to Inventors

STLCOP faculty, staff,or student inventors may submit a request for a license to commercially develop their STLCOP-owned inventions to the appropriate dean or chief administrator for their area where such licensing will enhance the transfer of technology, is consistent with the STLCOP's obligations to third parties, and does not involve an impermissible conflict of interest.  The appropriate dean or chief administrator will forward the request along with their recommendation to the President for final review and a determination.  The President will notify the appropriate dean or chief administrator and the person who submitted the request of the final decision.

F. Distribution of Licensing Income

STLCOP will share with inventors the revenue which it receives on patents according to a schedule of distribution designed to recognize the inventor's creativity, the academic unit as an innovative environment, STLCOP's mission, and the administrative leadership necessary for inventions to be commercialized successfully.  STLCOP reserves the sole right to enter into licensing agreements that may or may not generate income on inventions, discoveries, improvements, reductions to practice and related patents that enhance the mission of STLCOP.  These agreements may include terms, such as nonexclusive and royalty-free, which could influence or even obviate licensing income.  STLCOP also may contract for outside patent management, and any share of income to a patent management organization will be deducted before revenues on patents for distribution are calculated.  All monetary consideration received by STLCOP in exchange for licensing rights to use an invention which it owns, shall be subject to the following distribution schedule of net income after deducting direct expenses assignable to the specific patent that are not paid by a license.  These expenses include patent filing, prosecution and maintenance fees, and marketing and litigation costs incurred in commercializing and defending the specific invention.

Distribute Net Income as Indicated below:

Inventor                             35%

STLCOP                              25%

Department                      20%

Dean/Director                  20%

The inventor may, at his/her option at the time of annual distribution of these funds, deposit in a STLCOP account all or part of the inventor's share to support his/her research in his/her research unit.  The inventor's personal share shall survive termination of affiliation with STLCOP and, in the event of death of the inventor, shall pass to his/her estate.

In the absence of a specific agreement to the contrary filed with the appropriate dean or chief administrator and the President, STLCOP will distribute the inventor's share of licensing income

1) equally among multiple inventors, and

2) equally among all income-produing patents covered by a single license.

Before filing for a patent, the appropriate dean or chief administrator will consult with the inventor and with the chair/direetor of all units in which the inventor is budgeted or affiliated to attempt to determine the relative contributions of the different units, and precisely where the research that resulted in the invention was conducted and funded. The appropriate dean or chief administrator will then use this information to make a recommendation to the President with respect to the research unit and/or department to receive licensing income.

The President may modify the distribution of licensing income in the event of new information relating to inventors' contributions to the invention or other extraordinary circumstances that require a change in distribution to avoid an inequitable result. The allocations of licensing income to research units and departments are intended to recognize and reward these units and departments for providing an environment that fosters creativity and innovation. However, in using licensing income, consideration will be given to the contributions made by individual faculty members to the generation of this income. Allocations of licensing income to research units and departments generally will remain unchanged should the inventor relocate within or outside STLCOP, and in the event of death or retirement of the inventor. Should a research unit or department receiving licensing income be disestablished, its share of licensing income will be assigned to STLCOP.

In the case of a patentable discovery made jointly by STLCOP's personnel and personnel from an external organization or institution or an individual inventor without institutional affiliation, distribution of licensing income will be governed by the terms of any contractual agreement entered into by STLCOP upon the initiation of the activity which led to the patentable discovery. In the absence of such a contractual agreement, the President, or his/her designee, will negotiate an agreement concerning the distribution of licensing income.

G. Equity Holdings

STLCOP has the right, at its sole discretion and under conditions it deems appropriate, to enter into agreements involving equity. The terms of agreement involving equity and the distribution of income on equity will be negotiated by the appropriate dean or chief administrator for review and approval by the President.

H. Advisory Committee

The President will establish a Patent Policy Advisory Committee comprised of faculty to advise the President and the appropriate Dean or chief administrator on the resolution of disputes on patent matters arising under this policy including inventorship and ownership. The committee shall consist of five (5) voting members jointly appointed by the Deans and the President of the Faculty Senate. Committee membership shall consist of one (1) faculty representative from the School of Arts & Sciences, one (1) faculty representative from the School of Pharmacy, and three (3) at-large tenured members of the faculty.  A majority of members shall constitute a quorum. The committee will annually elect a chair from among the members. Either the inventor(s) or the administration may submit a written request to resolve a dispute to the Chair of the committee. Copies of the request will be provided to the affected parties and units including the inventor(s) and the appropriate Dean or chief administrator, the President of the Faculty Senate, and the General Counsel. Within ten (10) business days of receiving the request, the Chair will convene the committee to review the issues and develop a plan for collecting information from the inventor(s) and the appropriate administrator(s). The committee will review the information collected and make written recommendations by a majority vote. In the case of faculty or student related disputes, the Committee will send its recommendations to the appropriate Dean. Recommendations involving staff related disputes will be sent to the chief administrator.  The Dean or chief administrator will issue a written decision including a summary of the findings and supporting evidence within ten (10) business days after receipt of the Committee's recommendation. Either the inventor(s) or the administration may appeal the decision to the President by submitting a written statement outlining the issues and the reasons why the decision should be modified or reversed within ten (10) days after receipt of the Deans' or chief administrator's decision. Upon receipt of the appeal, the President will review the Dean's or chief administrator's decision and the statement ofappeal. The President may seek additional clarifying information from the parties and discuss the initial recommendations and subsequent decision with the Patent Policy Advisory Committee and the appropriate Dean or chief administrator. Within thirty (30) days after receipt of the appeal, the President will issue a written decision including a summary of the findings and supporting evidence. The President shall have final and binding authority to interpret, enforce, and resolve any disputes arising under this policy.

I. Timeliness of Decisions

STLCOP shall make every reasonable effort to act expeditiously under the circumstances in arriving at all decisions under this policy. From the time of disclosure, inventors will work in close collaboration with the General Counsel who will monitor progress of the invention through the STLCOP process. Under normal circumstances an inventor can expect an initial response to a disclosure from the appropriate Dean or chief administrator for the division within sixty (60) days. lnventor(s) may seek assistance with issues relating to timeliness by filing a grievance with the Patent Policy Advisory Committee.

Responsibilities:

Position/Office/Department

Responsibility

Chief unit administrator, Deans School of Pharmacy/School of Arts & Sciences

Review invention disclosures and third-party patent and license agreements, make recommendations on patent licensing requests, and decide patent related disputes

President

Approve patent filings, patent assignments, license agreements, decide appeals of patent related disputes, and oversee administration of this policy on behalf of the Board of Trustees

General Counsel

Provide legal advice and manage patent related matters including without limitation patent disclosures/filings, patent prosecution, patent assignments, license agreements, enforcement actions

Vice President Finance, Chief Financial Officer

Financial accounting and reporting

Resources:

St. Louis College of Pharmacy Contracts Administration and Signature Authority Policy

St. Louis College of Pharmacy Conflicts of Interest Policy

St. Louis College of Pharmacy Copyright Policy

United States Patent & Trademark Office, http://www.uspto.gov

Policy Contacts:

Name

Contact Information

Ken Fleischmann

Kenneth.fleischmann@stlcop.edu

Supplemental Information:

None