SIU-SOM Policies and Procedures
Patents and Copyrights Policy
[The following was approved on May 12, 2008]
Southern Illinois University School of Medicine encourages its faculty and staff to undertake research and other scholarly and creative endeavors and assumes responsibility for promoting a research program. Basic policies of the university support freedom of research and unrestricted dissemination of information. Research and other scholarly activities that produce and disseminate new knowledge are an important part of the work of a comprehensive senior and graduate-level institution. It is the philosophy of SIU-SOM that these activities always reflect their intrinsic relationship to the mission of the institution.
The university is responsible to itself and to the public for the kinds of research it sponsors and for obtaining the greatest public benefit from such research. The university policy regarding patents and other developments from research encourages maximum public benefit and encourages faculty members to promote the patentable, marketable, and copyrightable results of their research. All faculty and staff members are required by the conditions of their employment to abide by the university policy on patents and copyrights.
A University Intellectual Property Committee, appointed by the Vice Chancellor for Research and Graduate Dean, and a School of Medicine (Springfield and Carbondale) Patent and Copyright Committee, appointed by the Dean and Provost of the School of Medicine, exist to review and make recommendations for the disposition of patents and copyrights. The locus of faculty and staff primary appointment is the basis for determining which committee has authority.
The Policy on Patents and Copyrights concerning new technologies, discoveries, inventions or potential inventions (including products, processes, or any improvements thereof), and copyrightable materials that accrue from research and other scholarly and creative activities conducted by faculty and staff members is as follows:
1. If it meets the criteria detailed in sections 2 and 3 below, any new technology, discovery, invention or potential invention, or copyrightable material developed by an employee of the university belongs to the university and shall be used and controlled in the sound discretion of the university in ways that will produce the greatest benefit to the university and to the public. All employees are required to report any such new technology, discovery, invention or potential invention, or copyrightable material, and the university will determine the disposition thereof, in the manner set forth below.
2. The criteria for new technologies, discoveries, inventions or potential inventions, and copyrightable material include anything a) developed within the scope of an employee's duties at this university; b) developed in whole or in part by the use of university facilities or resources; c) developed as the result of efforts carried on by, or under the direction of, any employee, student, or other user of university facilities; or d) developed in part or in full from university funds or from funds under the control of or administered by the university.
3. The university shall not place any claim or restriction on any copyright resulting from scholarly activity, with the exception of material produced under specific written contract with the university. Material produced under specific written contract means any material which a faculty or staff member is specifically assigned or directed to produce as part of his or her employment responsibilities with the university. These copyrightable materials may include but are not limited to a) textbooks, workbooks, articles, and other forms of literary matter; b) dramatic works and materials; c) educational television/radio programs and works in such other media as films, videotapes, and recordings; d) musical compositions and visual art; e) tests and other measurement devices; and f) computer software.
4. If a new technology, discovery, invention or potential invention, or copyrightable material is otherwise developed by an employee of the university, it belongs to the employee. This would allow the creator/author to pursue an individual patent or copyright or to pursue a joint patent or copyright with the university. In either case, detailed documentation should be kept by the creator/author about when, where, and by whom the development occurred. Such documentation may be needed to establish the rights of the creator/author to the new technology, discovery, invention or potential invention, or copyrightable material, as well as to pursue a patent or copyright.
5. New technologies, discoveries, inventions or potential inventions, and copyrightable materials covered by this policy must be disclosed by the creator(s)/author(s) in writing to the Springfield Office of Technology Transfer (Springfield OTT) if the creator/author is based in a Springfield or Carbondale School of Medicine. A School of Medicine disclosure is made in two parts. First, an Evaluation Request Form (available from the Springfield OTT) is submitted to the Springfield OTT. The Springfield OTT will then evaluate the disclosure and advise the creator on the best course of action. It should be noted that the Evaluation Request Form should be submitted to the Springfield OTT preferably prior to any publication or other public disclosure. Second, a more formal Invention Disclosure Form (also available from the Springfield OTT) is submitted to the Springfield OTT. After an initial evaluation of the disclosure by the Springfield OTT, the School of Medicine Patent and Copyright Committee shall review the related data based on the scientific, technical, and economic merit, commercial possibilities, and potential importance of the discovery, and the likelihood and desirability of seeking a patent or copyright. The committee shall make a recommendation on the disposition of the activity which will be forwarded to the Dean and Provost of the School of Medicine for final disposition. New technologies, discoveries, inventions or potential inventions, or copyrightable materials that are created by faculty, employees, or students of SIUC (not affiliated with the School of Medicine) shall follow the procedures for disclosure through the Office of Research Development and Administration (ORDA) according to the SIUC Intellectual Property Policy. New technologies, discoveries, inventions or potential inventions, or copyrightable materials that are jointly created by faculty, employees, or students of SIUC and the School of Medicine may optionally submit a disclosure according to: 1) the SIUC Intellectual Property Policy or 2) the School of Medicine Patents and Copyrights Policy.
6. The Dean and Provost of the School of Medicine will determine the disposition of the new technology, discovery, invention or potential invention, or copyrightable material. Such disposition may include, but is not limited to, the following options: a) release to the creator/author, b) retention by the university for development, licensing, etc., or c) release to the individual or agency sponsoring the project in the course of which the new technology, discovery, invention or potential invention, or copyrightable material was made. Any decision to retain the new technology, discovery, invention or potential invention, or copyrightable material may be reconsidered by the Patent and Copyright Committee based on further developments following the above delineated procedures. The creator(s)/author(s) should be notified within 6 months of submitting an Invention Disclosure Form. Should the university fail to notify the creator(s)/author(s) within the six-month period, the creator/author(s) may petition the university to relinquish all rights or portion thereof in any intellectual property interests that have been established.
7. Grants/contracts between the university and any other agency shall, whenever feasible, state clearly the obligations and rights of the university and of the cooperating agency, and the procedure to be followed should the activity result in patentable discoveries or copyrightable materials. It should be noted that grants from various agencies frequently require the agency's prior approval of the terms and conditions of patent and copyright agreements dealing with the development and dissemination of products resulting from activities performed under the grant/contract. In such cases, the university shall negotiate with the sponsoring agency about future patent rights, copyrights, and licensing agreements. Situations not specified in the agreement with the sponsoring agency will be subject to the university policy.
8. If income is received by the university from any patent, copyright, or other protectable intangible property (such as a trade secret, trademark, or tradedress), all costs of procuring, developing, and administering such patent, copyright, or other protectable intangible property shall first be paid from such income. All income in excess of such expenses shall be shared equally by the creator/author and the university, unless otherwise agreed in writing. If the university uses a marketing or management firm or other intermediary in procuring a patent, copyright, or license, the distribution of income/royalties shall be established by an agreement between the university and the intermediary firm. After all expenses have been paid, including those paid to any marketing or management firm or other intermediary, the income will be evenly divided between the university and the creator/author. Multiple creators/authors sharing in income shall decide among themselves how their share is to be divided, with the stipulation that the inventors/authors shall divide one share and the university will receive one share.
9. If the university elects to retain ownership in a new technology, discovery, invention or potential invention, or copyrightable material, then the university or its designated agent shall assume primary responsibility for protecting and/or promoting property rights to the subject matter covered by the policy, with the consultation of the creator(s)/author(s).
10. If the university elects to retain ownership, the creator(s)/author(s) shall supply on a timely basis all information and execute all papers necessary for preparing and/or presenting patent and copyright applications or licensing agreements on subject matter covered under this policy and to assign interests therein to the university.
11. Any controversy or claim arising out of this statement of policy, or an agreement between the creator(s)/author(s) and the university delineating individual and university rights, claims, and responsibilities, or the breach thereof, shall follow the internal grievance procedures of the university. If no agreement results from internal grievance procedures, arbitration shall be sought in accordance with the rules of the American Arbitration Association.