In view of the far-reaching research in the various divisions of the University, it is inevitable that new discoveries and inventions will be made. The University of Alabama recognizes that the protection and control provided under the patent laws may have to be invoked to obtain the greatest public benefit and usefulness from the products of scientific research. It is recognized that employees of the University need assistance in determining and evaluating patentability and in prosecuting patent applicants of inventions made by them.
Many such inventions involve equities beyond those of the inventors themselves because the use of University facilities, the assignment of duties as a condition of employment, and the use of research funds with contractual obligations regarding patent rights give rise to complicated questions concerning rights and equities of all concerned. Therefore, in order to appraise relative rights and equities of all parties concerned, to facilitate patent applications, licensing, equitable distribution of any royalties or other financial returns, to provide a uniform procedure in patent matters, and to serve the public benefit and interest, The Board of Trustees of The University of Alabama (herein called University), on recommendation of the President of the University, authorizes the establishment of a Patent Committee and the adoption of the patent policy as set forth herein.
- The President of the University shall appoint a University Patent Committee composed of members representative of the entire University to administer the patent policy and to designate a patent administrator to administer the policies of the committee. This committee and the patent administrator shall serve at the pleasure of, and their actions shall be subject to, the approval and right of review of the President of the University.
- Subject to the approval of the President of the University, the Patent Committee shall have power to adopt such rules and procedures as are deemed appropriate; to determine the interest of the University in all reported inventions; to cause all reported inventions to be investigated in order to evaluate the interest of the University in said invention (with due consideration given to the achievement of the inventor and the financial returns to the inventor and the University); to authorize the release of patent rights when the Patent Committee decides that the University has no interest in the invention or decides that the University does not desire to pursue the patenting or development of the patent; to authorize applications for patents on reported inventions and to retain patent counsel, in association with the Office of Counsel, for matters pertaining to patent applications; and to make recommendations to the President of the University with regard to the prosecution and protection thereof and any litigation that may arise therefrom. The Patent Committee shall also have power to do all things appropriate for the investigation of patent rights and for the exploitation of patent rights by direct exercise, exclusive or nonexclusive licensing, and make recommendations to the President of the University with regard to partial or total assignment or sale thereof. All questions concerning the methods by which the patent shall be commercially exploited shall be decided by the Patent Committee.
- This patent policy of the University, as amended from time to time, shall be deemed to be a condition of employment and contractual obligation, both while employed and thereafter, of every employee, including student employees, and a condition of enrollment and attendance and contractual obligation, both while in attendance and thereafter, by every student.
- Any invention or discovery (1) that 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) that is made by an employee of the University and that relates to the employee’s field of work, or (3) that has been developed in whole or in part by the utilization of resources or facilities belonging to the University, shall be the property of the University. The applicability of the above stated criteria to any invention or discovery will be determined at the sole discretion of the President of the University or the President’s designee.
- As a condition of their employment or their continued employment by, or enrollment at, the University, faculty members, employees, and students agree that they are contractually bound by this patent policy as implemented by the University. They shall report to the officer or to any non-profit organization so designated by the President of the University to manage and commercialize such inventions and discoveries, any invention or discovery that such faculty member, employee, or student has conceived, discovered, developed, and/or reduced to practice by them or under their direction at any time following their initial appointment by, employment by, or enrollment with, the University. All inventions and discoveries that meet the criteria of paragraph 4 above are hereby assigned to the University for the benefit of the University. Faculty members, employees, and students do not have the authority to assign rights in such inventions and discoveries to third parties. The President of the University is authorized to further assign any invention or discovery the University is deemed to own pursuant to this policy to a designated non-profit organization established for the benefit of the University. Said assignment shall be conditioned on full compliance with this policy, regulations promulgated hereunder by The Board of Trustees or by the President of the University, and appropriate state and federal law.
- The Patent Committee shall cause each invention or discovery to be investigated in order to determine the interest of the University and, if the Patent Committee determines that the University has an interest in the invention that it desires to pursue, it shall undertake to obtain a patent on the invention. In determining whether the University has an interest in the invention, the Committee shall consider the benefits that might accrue to both the University and the inventor. The patent administrator and the Patent Committee are responsible for prompt action for the purpose of protecting the property rights of the inventor and the University.
- If it is determined that the invention or discovery is one that is owned by the University pursuant to this policy, but is one in which the University has no interest in retaining ownership, the University (or the non-profit organization to which an invention may have been assigned in accordance with the terms of this policy) may, but is under no obligation to, release its ownership rights to the inventor(s) on terms and conditions determined by the President or the President’s designee, subject to any third-party rights.
- As further consideration for the assignment of rights set forth herein, the University agrees to pay annually to the inventors, their heirs and assigns, fifty percent (50%) of the royalties, fees, or other financial returns received by the University from such invention after a deduction of fifteen percent (15%) thereof for overhead costs, plus a deduction of costs of patenting and protection of patent rights. Recoupment of any unusual expenses paid by the University or the inventor may be allowed by the Patent Committee on patents assigned to the University or to a University-designated non-profit organization established for its benefit.
- It is understood that many research contracts, grants, and consulting agreements from or with the United States government or its agencies, corporations, or individuals contain ownership of intellectual property clauses that may be at variance with this policy but which, if agreed to, require compliance. Such documents that are at variance with this policy may be referred to the appropriate designated officer of the campus for recommendation prior to approval.
- This statement of policy shall not apply to copyrights except as they may pertain to inventions covered by this policy. A separate copyright policy exists. See Chapter 3, Section XIV.