Licensing of Inventions to Inventors, University of Connecticut Policy on

Title: Licensing of Inventions to Inventors, University of Connecticut Policy on
Office of Economic Development
Applies to: Faculty, Staff, Others
Campus Applicability:
Effective Date: August 14, 2012
For More Information, Contact Andrew Zehner
Contact Information: (860) 486-1339
Official Website: http://ccei.business.uconn.edu/innovation-accelerator/

Policy

Inventions developed by University of Connecticut employees, or developed with the significant use of university resources, are by policy and state statute, owned by the university*. The university exercises its best efforts to protect its intellectual property, and license those technologies to potential commercial licensees. In some cases, the university may decide not to patent its intellectual property, and may decide to license the invention back to the original inventor(s) (meaning to the entire group of inventors listed on the patent in accordance with applicable U.S. patent law). When the university chooses to take such action, it does so with the intent of recovering its investment in the resources used to create the invention.

Terms & Conditions

  1. The university may take as long as six (6) months after full and complete disclosure of an invention to decide whether to seek patent protection for that invention. During this period of time, the university will evaluate the commercial potential of the invention, and decide whether the costs of securing patent protection are warranted. During this time, the university may also engage in negotiations with potential licensees of the invention. If, for commercial advantage or publishing deadlines, the inventor(s) believes that a review and interim decision ought to be made within three (3) months, the Office of Economic Development (OED) will consider a request for an accelerated review. Otherwise, the six-month option for the university will prevail.
  2. After six (6) months from the date that a full and complete invention disclosure is received by the OED, the university has not decided to seek patent protection, or has not initiated license negotiations with a potential licensee, the university will, at the inventors’ request, license exclusive worldwide rights to the invention to the original inventors provided that the original inventors agree:
      a.  to provide evidence that they have the technical and financial capability to patent and commercialize the invention as required by federal regulations (52FR8554, March 18, 1987) which implement the Bayh-Dole Act (35 U.S.C. 206); and,
      b.  to assume all costs of acquiring patent protection and to maintain said patent(s); and,
      c.  to patent the invention within 12 months of licensing as required by federal regulations (52FR8554, March 18, 1987) which implement the Bay-Dole Act (35 U.S.C. 206); and,
      d.  to provide the university with 10% of all revenues received from the commercialization of the invention, including all cash, stocks, stock options, deferred and actual compensation in any form received by the inventors; and,
      e.   to waive their rights to share in the university’s revenues collected in accordance with paragraph 2.d of this policy; and,
      f.   to abide by terms and conditions imposed on the university by the agencies which sponsored the research that led to the invention; and,
      g. that all improvements of the invention created and first reduced to practice by university employees utilizing the resources of the university shall be owned in their entirety by the University of Connecticut.
  3. If after six (6) months from the date a full and complete invention disclosure is received by the OED, the university has taken no action on that disclosure (meaning that no action has been taken to evaluate the commercial potential of the invention, to seek out potential licensees or to refer the invention to a third party for similar purposes), then the university will, at the original inventors’ request, license the invention to them, provided the inventors agree to the terms and conditions outline in paragraphs 2.a. through 2.g. above. The inventors may, at any time, request updates on OED’s actions regarding their invention disclosure.
  4. If so required, the licensing of rights to an invention back to the original inventors is contingent upon approval by the agencies which sponsored the research that led to the invention in question.

*Pursuant to Section 10a-110a(4) of the CT General Statutes.

Revised August 14, 2012