30.3 University of Iowa Patent Policy

(Amended 12/09)
  1. Introduction.
    1. (Nature of a patent. Patent protection provides the owner with a limited period of time in which the owner can exclude others from making, using, offering to sell, or selling the invention. The resulting temporary exclusive rights to the invention can provide an incentive for a patent owner or a licensee to invest the resources required to advance the invention toward commercialization and use by the public. In return for offering temporary exclusive rights to the owner of a patent, a government requires the owner of the patent to make details of the invention available to the public in the patent document. Under United States law, the life of a patent extends 20 years from the date of application.

      A patent is the grant of a property right by a government to the owner of an invention. Unlike copyright protections, patent rights do not follow automatically from the act of creation. The inventor or the patent's owner generally must request patent protection from the government of each country in which a patent is desired. The Patent Office in each country then will examine the application against its own laws and regulations and will — in due course — either deny or allow the grant of a patent in its jurisdiction. Because patent laws and associated administrative procedures are fairly complex, patent applications generally are prepared and prosecuted by specialists working on behalf of the inventor or owner.
    2. Inventions eligible for patent protection. In the United States, an invention or discovery may be eligible for patent protection if it is a process, a machine, a manufactured object, a composition of matter, or a new use or improvement of any of the preceding. Courts have interpreted the patent statute (see https://www.uspto.gov/patent) to extend to software-related inventions when there is some connection to a useful, concrete result, and to biological substances when there is some evidence of human intervention. For example, isolated DNA sequences or their purified protein products can be patented because in their "natural" states they are neither isolated nor purified. New uses of "products of nature" also may be patented, as may genetic modifications of otherwise natural organisms.

      If an invention meets the threshold eligibility conditions for patenting, it still must meet additional criteria in order to earn a patent. Under U.S. law, a patented invention must be useful, novel, not obvious, and supported by adequate information.
    3. Nature of inventorship. To be named as an "inventor" on a patent, an individual must have made an original contribution to the conceptualization of the invention as it is defined in the patent. The aspects of a patent that assert the defining elements of an invention are called the "claims" of the patent. If an individual has made a contribution to the conceptualization of anyone defining claim of patent, then he or she is an "inventor" of the claimed invention. If any individual is responsible for all the claims of a patent, then he or she is the sole inventor of the patent. In any other situation, the patent will have more than one co-inventor. One is not an inventor if his or her contribution was limited to "reducing to practice" the conception of the invention.
    4. Objectives of the University of Iowa Patent Policy. The primary objective of the University of Iowa Patent Policy is to enable the public to use and benefit from inventions originating at the University. In pursuing this objective, the University will seek to manage inventions in a way that advances the academic missions of the institution, including research and scholarship. The Patent Policy further provides a framework for the orderly transfer of academic inventions to the private sector in exchange for equitable compensation to the institution as well as to individual inventors. In keeping with the University's academic objectives, the policy directs that portions of the institutional earnings from any patent will support research broadly across campus, research related to the patent, and administrative efforts to secure and manage additional patents.
  2. Policy.
    1. Summary of the Patent Policy. Through its designee, the University of Iowa Research Foundation (UIRF), the University will assume ownership of patents on qualifying inventions made by its employees and appointees. In a limited number of situations, the University, through its designee, will assume ownership of patents on qualifying inventions made by students and institutional visitors. Earnings from patents subject to this policy will be distributed according to the provisions of this policy.
    2. Applicability of the Patent Policy. The policy applies to inventions meeting either of the criteria below. For convenience, inventions meeting either of these criteria will be designated as "qualifying inventions."
      1. Inventions made by University employees or postdoctoral appointees in the course of their employment or appointment or in a field or discipline reasonably related to the inventor(s)' field(s) of employment or appointment.
      2. Inventions enabled by significant use of University resources when made by University employees, postdoctoral appointees, students whose inventive contribution did not arise from employment by the University, or institutional visitors not employed by the University. In both paragraph (a) above and paragraph (b), "employees" includes faculty members, staff members, part-time employees, and student employees.

        The following, when customarily provided to researchers in their respective disciplines and units, shall not be considered significant use of University resources: salary, developmental assignment or award, library resources, computers, communications technologies, secretarial services, assigned offices and laboratories, and utilities.

        Significant use of University resources may include: use of substantial funds received by the University through a contract or grant, use of funds allocated from internal discretionary pools, assistance of support staff outside of the inventor's department or unit, or assistance of support staff from the inventor's department when such assistance is greater than that normally provided others in the department. Significant use of University resources also may include use of shared research equipment or facilities.
    3. Role of the University of Iowa Research Foundation. The University of Iowa designates the University of Iowa Research Foundation (UIRF) as the owner of its patent rights and manager of its interests in qualifying inventions.
    4. Disclosure required. Any individual who believes that he or she has made, or contributed to the making of, a qualifying invention must disclose the invention in writing to the UIRF on the Invention Disclosure Form provided by the UIRF.
    5. University rights in qualifying inventions. On behalf of the University, the UIRF shall assume ownership of patents to qualifying inventions. In order for the UIRF to assume ownership, inventors subject to this policy shall assign to the UIRF their entire right in the invention and shall provide reasonable assistance to the UIRF in obtaining patent protection and in licensing the patent rights to others. In the case of qualifying inventions arising from federal research support, this assertion of ownership rights follows from federal law. In other contexts, the University's right to require assignment from its employees or appointees will be understood as a condition of employment or appointment. Similarly, the limited right of the University to claim ownership of patents in inventions made by students will be understood as a condition of enrollment, whereas the limited right of the University to claim ownership of patents to inventions made by institutional visitors will be understood as a condition of their access to institutional resources. Institutional visitors must acknowledge in writing their awareness of this policy before making use of institutional resources.

      No inventor of a qualifying invention has the authority to assign, license, or otherwise dispose of a qualifying invention except to the University or its designee pursuant to this policy. Faculty and staff who engage in outside consulting or other external activities are responsible for ensuring that any agreements relating to those activities are not in conflict with this policy or with the University's rights or ownership interests in any qualifying inventions.

      If the UIRF informs in writing the University inventor(s) that it does not wish to file a patent application in any territory based on a disclosure by the inventor(s), the inventor(s) may request from the UIRF an opportunity to take on the prosecution of the patent application. The inventor(s) may request that the UIRF waive its rights to the invention in the territory(ies) in which the UIRF has elected not to file. The UIRF will not unreasonably deny such a request. However, any waiver of rights will be subject to the interests of any third parties, including, but not limited to, sponsors of the research leading to the invention. In addition, any waiver of the institution's rights in the patent application will expressly allow the University to continue to use the invention for research purposes and will be limited to the scope of the invention as disclosed and as used as a basis for the UIRF's determination not to file an application in the territory(ies). The UIRF waiver of institutional interest in an invention may result in personal ownership of the invention by University inventor(s) who wish to conduct further research on the invention within the institution. Such inventor(s) should be mindful that use of personally owned patents in an institutional setting may create a conflict of interest requiring disclosure and management under the institution's policies pertaining to conflict of interest (https://coi.research.uiowa.edu).
    6. Licensure of inventions assigned to the UIRF. Consistent with the objectives of this policy and subject to the rights of any other parties, the UIRF will seek diligently to license to others the right to use inventions under patents assigned to it.
    7. Distribution of proceeds of licensure. The UIRF shall receive all payments due under a license and shall distribute such earnings under the terms of this policy within 45 days from the end of the quarter in which the earnings were received. Prior to any distribution, the UIRF shall recover any out-of-pocket expenses incurred in applying for the licensed patent(s), maintaining the licensed patents(s), or defending the licensed patent(s). Also prior to any distribution under this policy, the UIRF shall make any payments to others required by agreements, including but not limited to interinstitutional agreements for the management of jointly owned patents. Gross UIRF earnings, less its out-of-pocket expenses, less payments required to others, are designated as "distributable income." Distributable income shall be allocated as follows:
      1. The first $100,000 of distributable, cumulative income earned under a single license will go to the inventor(s).
      2. After the first $100,000 is distributed to the inventor(s), any further distributable income will be allocated as follows unless income in any fiscal year triggers the conditions of V-30.3b(7)(c) below:
        1. 25% of distributable income to inventor(s)
        2. 25% of distributable income to the UIRF
        3. 20% of distributable income to an institutional "research enrichment fund" (REF) administered on a discretionary basis by the University of Iowa Vice President for Research
        4. 15% of distributable income to the department from which the invention arose
        5. 15% of distributable income to the college from which the invention arose
      3. In the event that income from a single license or licensure of a single patent or set of patents exceeds $10 million in any single fiscal year, the University itself shall be granted a share of distributable income in that year, it being understood that the University President shall determine the use of such institutional share. In any year in which an institutional share is awarded, the shares allocated to the UIRF, REF, college, and department will be reduced. The share allocated to inventor(s) shall remain at 25 percent. In the event that distributable income from a single license or from licensure of a single patent or set of patents exceeds additional thresholds over $10 million, the institutional allocation for that year shall grow while the allocations to the UIRF, REF, department, and college will be further reduced. The following summarizes the intention of the policy:
        1. When annual income is greater than $10 million, the next $5 million in annual income shall be distributed as follows:
          1. Inventor(s) 25%
          2. UIRF 20%
          3. REF 16%
          4. Department 12%
          5. College 12%
          6. University 15%
        2. The next $10 million in annual income shall be distributed as follows:
          1. Inventor(s) 25%
          2. UIRF 17%
          3. REF 13%
          4. Department 10%
          5. College 10%
          6. University 25%
        3. Any further income in that year shall be distributed as:
          1. Inventor(s) 25%
          2. UIRF 13%
          3. REF 11%
          4. Department 8%
          5. College 8%
          6. University 35%
      4. Additional considerations. The University shall allow the UIRF to maintain an operating reserve equal to the estimated annual operating budget of the UIRF. Every two years the board of the UIRF will propose to the President of the University the appropriate level for the operating reserve. If the President approves the modified level, the size of the reserve may be increased or decreased accordingly. In addition, the University shall allow the UIRF to maintain a litigation reserve of $2 million. At such point as documented national norms for the cost of patent litigation may change, the board of the UIRF may seek permission from the President of the University to alter the size of the litigation reserve.

        In any single fiscal year, the UIRF may apply its share of earnings to its operating costs, the establishment of the operating reserve at the then-authorized level, and the establishment of a litigation reserve at the then-authorized level. The UIRF will return to the University any excess according to this formula: 50 percent to the REF and 50 percent to the University. The University may choose to allocate a portion of its share to departments and colleges whose inventions made significant contributions to the earnings in that year.

        When more than one University inventor is named on any licensed patent, the inventors will receive equal portions of the share of distributable income allocated to that patent unless there is a modifying written agreement signed by all inventors and approved by the UIRF.

        If an inventor is appointed in more than one department, the related departmental shares will be equivalent to the share each contributes to the inventor's salary. If the appointing departments are in different colleges, the related collegiate shares will be pro-rated on the same basis as the departmental shares. From time to time, it may be appropriate to allocate a portion of income otherwise granted to an academic department to an organized research unit. Any share granted to a "center," "institute," or other similar, formally acknowledged organized research unit will be determined by the Vice President for Research after consultation with the organization's director as well as relevant academic officers. In making any such determination, the Vice President for Research should consider the optimal means of advancing research at the institution.
  3. Administration of the Patent Policy.
    1. Patent Advisory Group. The University of Iowa Intellectual Property Policy, of which this Patent Policy is a component, shall be administered under the oversight of the Vice President for Research. The Vice President shall be advised on matters pertaining to the Patent Policy by the Patent Advisory Group, a subcommittee of the University of Iowa Intellectual Property Committee. The Intellectual Property Committee, the responsibilities and composition of which are set forth above in V-30.2 of the University's overarching Intellectual Property Policy, shall be appointed by the Vice President for Research, who also shall designate those of its members who will comprise the Copyright Advisory Group. The Vice President for Research will consult with the Executive Vice President and Provost when designating members of the Patent Advisory Group.

      The role of the Patent Advisory Group shall be to advise and make recommendations to the Vice President for Research regarding patent matters, including, but not limited to, the following:
      1. Resolution of disputes concerning the application and interpretation of the Patent Policy;
      2. Amendments to the Patent Policy resulting from technological and legislative changes affecting patent; and
      3. Changes to administrative procedures involved in the implementation of the Patent Policy.
      In addition, the Patent Advisory Group shall provide a forum to which faculty, staff, and students may refer questions and recommendations about the Patent Policy. Further, the Patent Advisory Committee may advise the UIRF on the disposition of selected invention disclosures.

      The day-to-day administration of the Patent Policy will be performed on behalf of the University by the UIRF, under the supervision of the Vice President for Research.
    2. Appeal process. Any University faculty member, staff member, postdoctoral scholar, or student who believes he or she is adversely affected by any action or non-action of the UIRF pursuant to the Patent Policy may appeal such action or non-action in writing to the Vice President for Research, who shall consult with the Patent Advisory Committee in considering the appeal. The resulting decision of the Vice President for Research may be appealed in writing to the President of the University. Where the action or non-action forming the basis for the dispute is that of the Vice President for Research rather than the UIRF, appeal may be made in writing directly to the President of the University.

      The foregoing process does not preclude the use of either informal means to resolve the dispute or applicable grievance procedures normally available to the individual based on his or her University status. (See III-28 Conflict Management Resources for University Staff; III-29 Faculty Dispute Procedures; III-30 Student Employee Grievance Procedures; and III-31 Appeals by Employees to Board of Regents.)
  4. Examples.
    1. Case P1: Faculty member A makes an invention while working under the terms of a federal research grant. The UIRF assumes ownership of the related patent. (See V-30.3b(2)(a) and V-30.3b(5).)
    2. Case P2: Faculty member B is an acknowledged expert in cancer therapy. Working at her desk at home on Saturday, she designs a chemical compound that may fight non-Hodgkins Lymphoma. The UIRF assumes ownership of the related patent. (See V-30.3b(2)(a) and V-30.3b(5).)
    3. Case P3: Staff member C is employed by the University to fabricate medical devices. Working in his garage on Saturday, C invents a novel device for pruning rose bushes. The UIRF may not assume ownership of the related patent. (See V-30.3b(2)(a) and (b).)
    4. Case P4: D is a researcher spending a year-long leave at the University. D is not an employee of the University but is assigned a laboratory at the University and is provided access to University research equipment. Working in a University laboratory, D invents a device for monitoring airflow in a wind tunnel. The UIRF assumes ownership of the related patent. (See V-30.3b(2)(b) and V-30.3b(5).) Note that D must acknowledge in writing awareness of the University's Patent Policy prior to beginning work.
    5. Case P5: As a result of a class assignment, Student E invents a novel method of manufacturing a fine chemical. The UIRF's review of E's obligatory disclosure determines that E did not make significant use of University resources in making the invention. The UIRF may not assume ownership of the related patent. (See V-30.3b(2)(b).)
    6. Case P6: Working on her dissertation in her adviser's laboratory, Student F invents a novel method for the manufacture of a pharmaceutical agent. Review of F's obligatory disclosure determines that F did make significant use of University resources in making the invention. The UIRF assumes ownership of the related patent. (See V-30.3b(2)(b) and V-30.3b(5).)
    7. Case P7: Faculty member I discloses an invention to the UIRF. In the course of reviewing the disclosed invention it becomes clear that a national professional organization of which I is a member has issued an advisory suggesting that inventions such as I's should not be patented. The matter is referred to the board of the UIRF. The board heeds the advice of the professional organization and directs that a patent application should not be filed. (See V-30.3b(5).)
    8. Case P8: Faculty member J makes an invention in collaboration with a colleague at another university. By application of its own patent policy, the employer of J's collaborator has an ownership right in the resulting patent because of the collaborator's inventive contribution. Similarly, the UIRF has an ownership right in the resulting patent as a result of J's inventive contribution. The UIRF and the employer of J's collaborator enter an "interinstitutional agreement" (IIA) specifying that the joint ownership rights shall be licensed together and that any earnings from such a joint license will be divided equally. In the event the UIRF is designated in the IIA as the manager of the jointly owned patent, it would receive earnings attributable to both parties. After out-of-pocket expenses are recovered, the UIRF would disburse to its partner university its share of earnings, with the retained remainder treated as distributable income under this policy. (See V-30.3b(5).)