The University of Alabama, Research & Economic Development

Intellectual Property Policy

Unit:  Research and Economic Development
Contact: Lauren Wilson
Title:  Assistant Vice President for Research
Effective Date: 03/08/2022
Revision Date: 03/08/2022


 
 

Purpose

The purpose of this Policy on Intellectual Property (“Policy”) is to establish a Policy consistent with Board Rule 509 and federal laws. Per Board Rule 509, among other requirements, i) the President shall appoint an officer or Patent Committee to administer this Policy; ii) the President may promulgate additional regulations and guidelines pursuant to this Policy to administer this Policy and how best to develop, commercialize and protect the invention as deemed appropriate, including, but not limited to, applying for patent protection or requesting further development of the invention or discovery; iii) the President or their designee shall be responsible for the development of a policy governing the percentage of royalties, fees, and other financial returns on and paid to the inventor and governing the internal distribution of the campus of the University's share of such financial returns. 
 

Policy

  1. This Policy may be referenced by hyperlink in any manual, handbook or reference material, but may not be reproduced or presented in any other way in any such material. This Policy supersedes and replaces any and all Intellectual Property policies upon its effective date.  This Policy is subject to all applicable laws, including, but not limited to, Title 35, United States Code; Title 17, United States Code, US Trademark Act 15 U.S.C. § 1051,  the Bayh-Dole Act 35 U.S.C. §§ 200-212 and its implementing regulations at 37 C.F.R. § 401, and the American Jobs Creation Act  26 U.S.C. § 170
  2. The Vice President for Research & Economic Development (“VPRED”) is designated by the President to administer this Policy, with all powers delegated.
  3. The VPRED will seek feedback from the Faculty Senate Steering Committee in advance of making substantive changes to this policy.
  4. The VPRED will appoint an Intellectual Property Patent Committee (“IPPC”) composed of members representative of the entire University to review, analyze and generally advise the VPRED on Intellectual Property and Intellectual Property issues. The IPPC will also advise and facilitate on: patent applications, licensing of Intellectual Property, new revised policies and procedures to provide necessary clarity and uniformity in Intellectual Property matters.  The IPPC members shall be selected based on recommendations and approvals from the Associate Deans for Research, college/school Deans, and the director of OIC. The IPPC shall be composed of eight (8) members.  IPPC members shall include five (5) UA employees, two (2) ad hoc technical experts and one (1) representative recommended by the faculty senate and approved by their ADR and Dean.  The IPPC members shall serve a three (3) year term that may be renewed.  
  5. The Office for Innovation & Commercialization (“OIC”), designated by the VPRED, is the office responsible for the protection and commercialization of University Intellectual Property. OIC will establish operational guidelines and procedures, subject to the terms of this Policy and any related policy, for the administration of University Intellectual Property. This will include, but is not limited to, presiding over the Intellectual Property Patent Committee (IPPC), receipt, investigation and analysis of Intellectual Property disclosures, determination of ownership, assignment, protection, release of rights, licensing, marketing, maintenance of records and oversight of revenue collection.
  6. With the exception of specific written agreements to the contrary (see section 6(B)), and without limiting the general disclosure obligations (see section 8), nothing in this Policy will be interpreted to prevent any faculty, staff, or students from sharing the results of their research and other academic activities with others, including by publishing those results. Faculty, staff, and students should however be aware that under certain circumstances disclosure can jeopardize the ability to secure a patent for an Invention and they are therefore advised to consult with OIC prior to such public disclosure.
  7. Ownership of Intellectual Property.
    1. Ownership by University. All right, title and interest in any Intellectual Property (1) which is the result of research carried on by or under the direction of an employee of the University and/or having the costs thereof paid from funds provided by, under the control of or administered by the University, or (2) which is made by an employee of the University and which relates to the employee’s field of work, or (3) which has been developed in whole or in part by the utilization of resources or facilities belonging to the University, is the sole property of the University.
    2. Assignment as Condition of Employment. As a condition of their employment or continued employment by the University, each faculty member, employee and student agrees that he or she is contractually bound by this Policy. All Intellectual Property that meets the criteria set forth in Section 6(A) of this Policy is hereby assigned to the University. Each faculty member, employee and student shall execute such assignments and other documents required, as determined and required from time-to-time by the VPRED, or designee.  Faculty members, employees and students do not have the authority to assign rights in such Intellectual Property to third parties. 
    3. Limited Assignment to Faculty and employees. The University, after review, may assign to the inventor(s) any Intellectual Property developed by faculty or staff acting outside of the scope of their employment provided that such activity is disclosed and fully approved per the Policy for the Disclosure of External Activity By Faculty and Other Research Grant and Contract Eligible Employees, and the Intellectual Property was developed with no more than insignificant use of University resources.
    4. Conflicting Agreements. It is understood that many research contracts, grants and consulting agreements from or with the United States Government or its agencies, for profit and not-for-profit entities, or individuals contain provisions regarding ownership of Intellectual Property that may be at variance with this Policy, but which, if agreed to, require compliance. Notwithstanding any other provision in this Policy to the contrary, nothing in this Policy will be construed to limit the University from entering into specific written agreements with any faculty, staff, or student or with any third party (including in connection with sponsored research) that will specify different terms regarding the ownership, distribution, and commercialization of Intellectual Property. Such an agreement will supersede the terms of this Policy if:
      1. The inventor is a party to such an agreement; or
      2. The inventor explicitly or implicitly consented to the terms of such an agreement prior to the creation of the Intellectual Property. Without limiting the generality of the foregoing, a decision of an inventor to develop Intellectual Property when the inventor knows, or should know, that such Intellectual Property is subject to an agreement will be considered consent to that agreement. However, continued employment or affiliation with the University is not, by itself, sufficient to establish consent as required by this section.
  8. This Policy, as amended from time to time, shall be deemed a condition of employment and contractual obligation, both while employed and thereafter, of every employee of the University, including student employees.
  9. As a condition of their employment and enrollment at the University, each faculty member, employee and student signs an Intellectual Property Agreement (“IPA”) as a condition of enrollment and employment. This agreement states that he/she is contractually bound by this Policy. Pursuant to that IPA, Board Rule 509 and this Policy, faculty, employees and students shall promptly report to OIC any Intellectual Property which such faculty member, employee or student has conceived, discovered, developed and/or reduced to practice by them or under their direction as a UA employee, at any time following their initial appointment by or employment by the University. All Intellectual Property that meet the criteria of section 5 are hereby assigned to the University. VPRED, through OIC, is authorized to further assign any Intellectual Property the University is deemed to own pursuant to this Policy, which said assignment shall be conditioned on full compliance with this Policy, regulations promulgated hereunder by the Board of Trustees or by VPRED and appropriate state and federal law. 
  10. If the Intellectual Property is determined to be owned by the University, VPRED, through OIC may further evaluate the Intellectual Property and determine if and how best to develop, commercialize and protect the Intellectual Property as deemed appropriate, including, but not limited to, applying for Intellectual Property protection, or requesting further development of the Intellectual Property.  In making this determination, the benefits that might accrue to both the campus of the University and the inventor(s) shall be considered.
  11. In consideration of the automatic assignment of ownership set forth in the IPA, which is required to be signed by all students and employees, and this Policy, VPRED, through OIC, is authorized to pay to the inventors or creators, their heirs or assigns, a percentage of the royalties, fees, or other financial returns received by the University from such Intellectual Property after a deduction of overhead costs, plus a deduction for costs of patenting and protection of Intellectual Property rights and any unusual expenses paid by the University or the inventor or creator (which have been approved by the University). VPRED shall be responsible for the development of a Policy governing the percentage of royalties, fees and other financial returns paid to the inventor and governing the internal distribution of the campus of the University’s share of such financial returns.  
  12. Annual reports of patent matters will be made to the Chancellor for his/her information and that of the Board within thirty days (30) following the end of each fiscal year, to include, at a minimum, i) identification of each patent and patent applied for, ii) the distribution of patent revenue including the share going to the inventor, and iii) the expenses of obtaining and managing patents. The Chancellor may prescribe appropriate formats for such reporting.

Definitions

  • Board Rule 509: The Board of Trustees of the University of Alabama Board Manual, Board Rule 509, (Adopted February 23, 1980 as Rule 510; amended September 16, 1981, February 27, 1986; renumbered December 5, 1997; amended June 19, 2009, February 8, 2013.)
  • Insignificant use of University resources:  includes, but is not limited to, de minimis use of: University networks and email systems; office spaces; libraries and their resources; desktops, laptops, cell phones, tablets, and software that is commonly installed thereon; servers; and cloud storage services. Insignificant use of University resources does not include the use of: a) other University employees or students in developing, testing, or distributing the Intellectual Property; or b) University laboratories or equipment besides the equipment referenced above in subsection 6 or similar commonly used items.
  • Intellectual Property: intellectual goods, a work or invention that is the result of creativity, such as a manuscript or a design, to which one has rights and for which one may apply for a patent, copyright or trademark, including, but not limited to know how, formulae, designs, drawings, procedures and methods, the creation of data or materials.
  • Inventions: any invention or discovery that is or may be patentable or otherwise protected under Title 35 of the United States Code, or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act, 7 U.S.C. §§ 2321, et seq.
  • Inventor or Creator: a person who creates a work or invents a particular process or device.
  • Intellectual Property Agreement (IPA): a contractual obligation requiring all employees and students to acknowledge they must follow all Intellectual Property Policies while at The University of Alabama.
  • Scope of employment: the range of activities that an employee is reasonably expected to do as part of his or her job. “Outside the scope of employment” would include acts that do not fall within the job expectations or description. If any employee or student is unsure whether particular activities are within or outside the scope of employment, such activities should be disclosed per the Policy for the Disclosure of External Activity By Faculty and Other Research Grant and Contract Eligible Employees for review and determination. For example, outside consulting may be within or outside the scope of employment and should be disclosed as stated. 

Scope

This Policy applies to all UA employees including part-time and full-time staff and faculty, adjunct faculty, emeritus faculty, visiting scholars and students including volunteer students, work-study students, and students that are University employees.
 
 

Office for Research and Economic Development

Approved by Russell J. Mumper, Ph.D, Vice President for Research and Economic Development, 03/08/2022