Patent Policy

A. General

1. As defined by the Patent and Copyright Policies of The University of North Carolina Board of Governors (“UNC Patent and Copyright Policies”), to which this Policy is expressly subject, the University of North Carolina at Charlotte has an interest in all inventions of University personnel that are conceived or first actually reduced to practice as a part of or as a result of; (1) University research, (2) activities within the scope of the inventor's employment by the University, or (3) activities involving the substantial use of University time, facilities, staff, materials, University information not available to the public, or funds administered by the University. De minimis use of office, library resources, University-issued computer, and/or software, is not regarded as substantial use of University resources. 

2. The University may also have an interest in inventions under the terms of contracts, grants, or other agreements. Faculty, staff, and students whose inventions are made outside the scope of their employment by and/or enrollment at the University, on their own time, and without University facilities, materials, or resources and which inventions are, therefore, their exclusive property as specified by the UNC Patent and Copyright Policies, may avail themselves of the opportunity to submit the invention to the University for possible patenting and/or commercialization and management under terms to be agreed between the inventor and the University.  External activities resulting in any such inventions are subject to disclosure requirements specified in the University’s External Professional Activities Policy of Faculty and Other Professional Staff and the University’s Policy on Conflicts of Interest and Commitment, as applicable.

3. The provisions of this Patent Policy are subject to any applicable laws, regulations, or specific provisions of the grants or contracts that govern the rights in inventions made in connection with sponsored research.

4. Under the terms of certain contracts and agreements between the University and various agencies of government, private and public corporations, and private interests, the University is or may be required to assign or license all patent rights to the contracting party. The University retains the right to enter into such agreements whenever such action is considered to be in its best interest and in the public interest. Except as provided in specific written agreements, the University will not agree to assign rights in future inventions.

B. Rights and Responsibilities of University Personnel

1. University personnel’s assignment of inventions in which the University has an ownership interest, as specified in Section A above, is a condition of employment and/or enrollment.  Accordingly, all personnel who conceive such inventions hereby irrevocably assign to the University all right, title, and interest in and to any such inventions and related patent applications and patents, and shall cooperate fully with the University in the preparation and prosecution of patent applications and patents, to the extent applicable.

2. University personnel may not: (a) sign patent agreements or any other agreement with outside persons or organizations that may abrogate the University's rights and interests as stated in the UNC Patent and Copyright Policies or as provided in any grant or contract funding the invention, or (b) without prior written authorization use the name of the University or any of its units in connection with any invention in which the University has an interest.

3. University personnel who, either alone or in association with others, make an invention during their employment or enrollment shall disclose such inventions on the Invention Report (IR) form provided for this purpose by the Office of Research Commercialization and Development (Appendix A). The requirement to disclose applies to inventions conceived or reduced to practice during periods, such as the summer months for Nine-Month faculty, when personnel are not contractually required to perform work for the University but nevertheless remain employed by the University.  The Director of the Office of Research Commercialization and Development will promptly acknowledge receipt of completed IR forms and will, as appropriate, provide such forms in confidence to the University Patent Committee and its agents for consideration. The inventor or their representative shall be allowed to examine all written materials submitted to the Office of Research Commercialization and Development and/or the Patent Committee in connection with their IR and to make a written and, where practicable, oral presentation to the Patent Committee, as appropriate. If the inventor believes that the invention was made outside the general scope of their University duties, they shall, in the IR, request that the Director of the Office of Research Commercialization and Development, in consultation with the Committee, as appropriate, determine the respective rights of the University and the inventor in the invention, and shall also include the following information in the IR:

1. The circumstances under which the invention was made and developed;
2. The employee's official duties at the time of the making of the invention;
3. Whether they request waiver or release of any University claims or acknowledgment that the University has no claim;
4. Whether they wish a patent application to be prosecuted by the University, if it should be determined that an assignment of the invention to the University is not required under the UNC Patent and Copyright Policies; and
5. The extent to which they would be willing voluntarily to assign domestic and foreign rights in the invention to the University if it should be determined that an assignment of the invention to the University is not required under the UNC Patent and Copyright Policies

4. The University strongly encourages scholarly publications of the results of faculty and student research. Though the UNC Patent and Copyright Policies do not limit the right to publish, except for short periods of time necessary to protect patent rights, publication or public use of an invention constitutes a statutory bar to the granting of a United States patent for the invention unless a patent application is filed within one year of the date of such publication or public use. Publication or public use also can be an immediate bar to patentability in certain foreign countries.

In order to preserve rights in unpatented inventions, it shall be the duty of each inventor to assure that a report is filed with the Director of the Office of Research Commercialization and Development notifying that office of any publication, submission of manuscript for publication, sale, public use, or plans for sale or public use, of an invention for which an IR  has previously been filed. If an invention is disclosed to any person who is not employed by the University or is not otherwise committed to maintain such invention in confidence, the inventor shall keep a written record of the date and extent of each such disclosure, the name and address of the person to whom the disclosure was made, and the purpose of the disclosure.

After the invention has been disclosed to the Office of Research Commercialization and Development, the inventor shall promptly notify the Director of the Office of Research Commercialization and Development if they submit for publication, or has accepted for publication, any manuscript describing the invention, or if they plan or makes any sale or public use of the invention.

5. As to any invention in which the University determines, consistent with this policy, that it has an interest, the inventor, upon request, shall execute promptly all contracts, assignments, waivers or other legal documents prepared by the Office of Research Commercialization and Development that are necessary to vest in the University or its assignees any or all rights to the invention, including complete assignment of any patents or patent applications relating to the invention.

6. As provided under the UNC Charlotte Copyright Policy (University Policy 315), where an invention is subject to protection under both patent law and copyright law, if the University through the Office of Research Commercialization and Development determines to retain title to its patent rights, the inventor/creator shall assign copyright to the University. On commercialization of such works, the inventor/creator shall be compensated in accordance with the provisions of this Policy and such procedures as may be developed hereunder. The Office of Research Commercialization and Development may on its own initiative investigate whether a copyrighted work reported to it may also be subject to patent protection.

C. Appointment and Authority of Patent Committee

1. The Chancellor has delegated authority under the UNC Patent and Copyright Policies to appoint the Patent Committee and to designate the Chair of the Patent Committee to the Vice Chancellor for Research. The Patent Committee shall have duties pursuant to Section X of the UNC Patent and Copyright Policies, which require the committee to:

1. Review and recommend to the Chancellor or their designee the procedures for the implementation of the UNC Patent and Copyright Policies;
2. Resolve questions of invention ownership that may arise between the institution and its faculty, staff, or students or among individuals;
3. Recommend to the Chancellor the expenditure of the patent royalty fund; and
4. Make recommendations as are deemed appropriate to encourage disclosure and assure prompt and expeditious handling, evaluation, and prosecution of patent opportunities.

2. The Director of the Office of Research Commercialization and Development shall, in their discretion, disclose to the Patent Committee each IR submitted that warrants further review by the Patent Committee.  Notwithstanding the forgoing, the members of the Patent Committee shall have the right to review, at their discretion, every IR submitted to the Office of Research Commercialization and Development.  

3. The Patent Committee will review promptly each IR submitted to it and recommend to the Director of the Office of Research Commercialization and Development the proper disposition of the invention to secure the interests of the University, the inventor, the sponsor, if any, and the public. Its recommendation may include, but is not limited to, one or a combination of the following:

1. To submit the invention for review by a patent or invention management firm;
2. To make inquiries of potential licensees as to their interest in the invention and their willingness to finance a patent application, where applicable;
3. To study the practicality of applying for a patent with University resources (an option with limited application because of financial constraints);
4. In certain cases, to release the University’s rights to the inventor subject to an agreement to protect the interests of the University, the sponsor, if any, and the public, including an obligation to compensate the University, where necessary, to recognize the University’s contribution.
5. To dedicate the invention to the public.

As soon as practicably possible after receipt of the IR, the Director of the Office of Research Commercialization and Development will notify the inventor in writing of the University’s decision regarding applying for patent protection.  If, after the University has filed a patent application, it decides to abandon the patent, the Director of the Office of Research Commercialization and Development will promptly notify the inventor in writing, and all rights, at the Director's discretion, in consultation with the Patent Committee as appropriate, may be released by written agreement to the inventor, with the permission of the sponsor, if any. 

In those cases in which the University has obtained a patent without obligation to sponsors or in those cases where the University chooses to neither file a patent application, nor dedicate the invention to the public, or if no arrangement has been made for commercial development within a reasonable period from the date of the issuance of the patent, the inventor(s) may request in writing a release of the University's patent rights. The Director of the Office of Research Commercialization and Development, in consultation with the Patent Committee, as appropriate, will promptly either grant the request or will advise the inventor of the University's plans for the development of the invention.  If released, the inventor shall, at a minimum, agree (a) that the University reserves a royalty-free, non-exclusive, irrevocable right to use the invention for research and educational purposes; (2) to allow other academic and non-profit institutions similar use on similar terms; and (3) to indemnify the University against any liability arising from commercialization.  Such release may also be contingent on reimbursement of the University’s patent application expenses and may include an obligation to compensate the University, where necessary, to recognize the University’s contribution.

The Director of the Office of Research Commercialization and Development shall provide reports to the Patent Committee no less frequently than every six months regarding the disposition and patenting of university inventions including those for which the Patent Committee did not discuss.  

D. Revenue Sharing

1. The University shall share a portion of technology transfer revenue that it receives from patents or inventions with the inventors. As noted in Section A.4., specific provisions of grants or contracts may govern rights and revenue distribution regarding inventions made in connection with sponsored research; consequently, revenues the University receives from such inventions may be exclusive of payments to sponsors or contractors.  Moreover, the University may contract with outside persons or organizations for the obtaining, managing, and defending of patents.  Any expenses incurred for the services of such persons or organizations, as well as any and all incremental expenses incurred by the University in obtaining and maintaining patents and/or in marketing, licensing, and defending patents or inventions, shall be deducted before the University distributes revenues as provided in Section D.2 below.

2.  The revenues that the University receives from a patent or invention including proceeds from any stock or equity interests (“Gross Revenue”) less the costs and expenses incurred as described in Section D.1 (“Net Revenue”) shall be distributed as follows:

50% of Net Revenue to the Inventor(s),*

10% of Net Revenue to the Inventor’s Home Department(s), **

5% of Net Revenue to the Inventor’s College(s), and

35% of Net Revenue to the University.

            *Net Revenue payable to the Inventor(s) under this section shall be considered their personal compensation unless the Inventor(s) and University have agreed otherwise in writing prior to the disbursement.

            **Net Revenue payable to the Inventor’s Home Department under this section shall be distributed as follows: fifty percent (50%) to the Inventor(s) account to support research in the Inventor’s lab, provided the Inventor is still employed by the University, and fifty percent (50%) to the Inventors Home Department to support research within the department. 

Applicable laws, regulations or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. In the case of co-inventors, each percentage share described in this paragraph as due a sole inventor shall be subdivided equally among the co-inventors unless all the co-inventors provide the University a written instrument signed by each of them allocating Net Revenue distribution and equity distribution (if applicable) among them other than in equal shares.  In no event shall the share payable to the inventor or inventors in the aggregate by the University be less than 15% of Gross Revenue received by the University.

3. To the extent practicable and consistent with State and University budget policies, amounts allocated to the University pursuant to  Section D(2) above will be dedicated to supporting University research and commercialization activities, including research in the inventor's department or unit, if approved by the Chancellor or designee; provided, however, that the Chancellor, in their sole discretion, may direct that some of those revenues be allocated for other purposes when consistent with the UNC Patent and Copyright Policies and federal regulations.

E. Administration

The University recognizes that the evaluation of inventions and discoveries and the administration, development and processing of patents and licensable inventions involves substantial time and expense and requires talents and experience not necessarily found in its staff; therefore, it may enter into a contract or contracts with an outside organization or organizations covering specific inventions or discoveries believed to be patentable or covering all such inventions, discoveries and patents in which the University has an interest.

F. Students

In general, students will own their inventions unless: (1) the invention is made in the scope of the student’s University employment or (2) the invention is conceived or reduced to practice as a part of or as a result of University research or in reliance on substantial use of University resources, including facilities, staff, materials, information not available to the public, or funds administered by the University. As noted above, de minimis use of library resources and university-issued computer and/or software is not regarded as substantial use of University resources.

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APPENDIX A

REPORT OF INVENTION