30.3 University of Iowa Inventions Policy

(Amended 12/09; 8/17)
  1. Introduction.
    1. Inventions and nature of a patent. An "invention" is generally anything that is created, discovered, or devised with some novel, useful, and non-obvious characteristics, and which is therefore potentially patentable under United States patent law. "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.

      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 Inventions Policy. The primary objective of the University of Iowa Inventions 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 missions of the institution, including research and scholarship. The Inventions Policy further provides a framework for the orderly transfer of 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 objectives, the policy directs that portions of the institutional earnings from qualifying inventions will support research broadly across campus, research related to the qualifying inventions, and administrative efforts to secure and manage additional intellectual property rights.
  2. Policy.
    1. Summary of the Inventions Policy. Through its designee, the University of Iowa Research Foundation (UIRF), the University has ownership of rights in qualifying inventions made by its employees and appointees. In a limited number of situations, the University, through its designee, has ownership of rights in qualifying inventions made by students and visiting scientists/scholars. Earnings from qualifying inventions subject to this policy will be distributed according to the provisions of this policy.
    2. Applicability of the Inventions 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 scope of their employment or appointment, including inventions which can be viewed as an extension of the inventor's/inventors' University research.
      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 visiting scientists/scholars 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 inventors 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 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, or use of preexisting intellectual property in which the University has rights.
    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 assumes ownership of rights in qualifying inventions. In order for the UIRF to assume ownership, inventors subject to this policy assign to the UIRF their entire right in the qualifying invention and provide reasonable assistance to the UIRF in obtaining patent protection and in commercializing the qualifying invention. In the case of qualifying inventions arising from federal research support, such ownership by the UIRF is necessary to enable the University to meet its obligations to the federal government under sponsored research awards and federal law. Inventors agree, at the time of and by internally routing sponsored projects, to comply with this policy, and the certifications made by principal investigators during that routing process include a present assignment of rights in qualifying inventions. The University's right to require assignment of rights in qualifying inventions from its employees or appointees is understood as a condition of employment or appointment. The University includes a present assignment of rights in qualifying inventions in its hiring documents for new appointments, renewals, and changes in appointment, and expects all other current employees who are not currently the subject of such hiring documents to make such an assignment via University systems. Similarly, the limited right of the University to claim ownership of rights in qualifying inventions made by non-employee students and by visiting scientists/scholars is understood as a condition of their access to and significant use of University resources. The University includes a present assignment of rights in qualifying inventions in its enrollment document for students. Visiting scientists/scholars must sign a visiting scientist/scholar agreement acknowledging in writing their awareness of this policy and making a present assignment of rights in qualifying inventions before having access to and significantly using University resources.

      No inventor of a qualifying invention has the authority to assign, license, or otherwise dispose of an existing or future 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, with any applicable University of Iowa Health Care policies, or with the University's rights or ownership interests in any qualifying inventions. Such faculty and staff are encouraged to work with the UIRF on the possibility of creating an interinstitutional agreement for the management of inventions and/or patents which are or could be jointly owned by the UIRF and the external entity for whom the faculty or staff is consulting.

      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 rights in qualifying inventions 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), defending the licensed patent(s), and marketing the invention to potential licensees. 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 and Economic Development
        4. 15% of distributable income to the department (or, in the absence of a department, the comparable center/institute/unit) from which the invention arose
        5. 15% of distributable income to the college from which the invention arose (or, in the absence of a college, to the REF)
      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 (or, in the absence of a department, the comparable center/institute/unit) 12%
          5. College (or, in the absence of a college, to the REF) 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 (or, in the absence of a department, the comparable center/institute/unit) 10%
          5. College (or, in the absence of a college, to the REF) 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 (or, in the absence of a department, the comparable center/institute/unit) 8%
          5. College (or, in the absence of a college, to the REF) 8%
          6. University 35%
      4. Additional considerations. The UIRF shall from its share of earnings maintain an operating reserve and a litigation reserve adequate to perpetually sustain its operations. The board of the UIRF shall, at any time when low UIRF earnings jeopardize the UIRF’s reserves, work with the President of the University to identify and implement other means to maintain adequate reserves, such as shifting funds from other revenue streams.

        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 and Economic Development after consultation with the organization's director as well as relevant academic officers. In making any such determination, the Vice President for Research and Economic Development should consider the optimal means of advancing research at the institution.
  3. Administration of the Inventions Policy.
    1. Inventions Advisory Group. The University of Iowa Intellectual Property Policy, of which this Inventions Policy is a component, shall be administered under the oversight of the Vice President for Research and Economic Development. The Vice President shall be advised on matters pertaining to the Inventions Policy by the Inventions 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 and Economic Development, who also shall designate those of its members who will comprise the Inventions Advisory Group. The Vice President for Research and Economic Development will consult with the Executive Vice President and Provost when designating members of the Inventions Advisory Group.

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

      The day-to-day administration of the Inventions Policy will be performed on behalf of the University by the UIRF, under the supervision of the Vice President for Research and Economic Development.
    2. Appeal process. Any University faculty member, staff member, postdoctoral scholar, student, or visiting scientist/scholar who believes he or she is adversely affected by any action or non-action of the UIRF pursuant to the Inventions Policy may appeal such action or non-action in writing to the Vice President for Research and Economic Development, who shall consult with the Inventions Advisory Committee in considering the appeal. The resulting decision of the Vice President for Research and Economic Development 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 and Economic Development 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 rights in the qualifying invention. (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 rights because B’s design work is determined to be within the scope of her University employment and the design can be viewed as an extension of B’s University research. (See V-30.3b(2)(a) and V-30.3b(5).)
    3. Case P3: Researcher C is spending a year-long leave at the University. C 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, C invents a device for monitoring airflow in a wind tunnel. The UIRF assumes ownership of the related rights in the qualifying invention. (See V-30.3b(2)(b) and V-30.3b(5).) Note that prior to beginning work at the University, C must sign a visiting scientist/scholar agreement acknowledging awareness of the University's Inventions Policy and making a present assignment of rights in qualifying inventions.
    4. Case P4: As a result of a class assignment, Student D invents a novel method of manufacturing a fine chemical. The UIRF's review of D's obligatory disclosure determines that D did not make significant use of University resources in making the invention. The UIRF may not assume ownership of the related rights in the invention. (See V-30.3b(2)(b).)
    5. Case P5: Working on her dissertation in her adviser's laboratory, Student E invents a novel method for the manufacture of a pharmaceutical agent. Review of E's obligatory disclosure determines that E did make significant use of University resources in making the invention. The UIRF assumes ownership of the related rights in the qualifying invention. (See V-30.3b(2)(b) and V-30.3b(5).)
    6. Case P6: Faculty member F makes an invention in collaboration with a colleague at another university. By application of its own patent policy, the employer of F'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 F's inventive contribution. The UIRF and the employer of F's collaborator enter into 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).)
    7. Case P7: While conducting research with a faculty member in his or her laboratory on an institutionally or federally funded research project, Student G, though not an employee, discovers a new gene editing technique. The UIRF's review of G's obligatory disclosure determines that G did make significant use of University resources in making the invention. The UIRF assumes ownership of the related rights in the qualifying invention. (See V-30.3b(2)(b).)
    8. Case P8: Faculty member H develops a new medical device concept. In order to maximize the probability that this concept will be successfully reduced to practice, it is desirable for H to consult in a personal capacity with a medical device industry technology partner, company X. Company X has the specialized resources required to translate device concepts into commercial products, and will be capable of developing successful products with the personal consulting assistance of H. In order to implement this strategy, (an) interparty agreement(s) must first be reached between H, company X, and the UIRF that address(es) inventions and/or patents which are or could be jointly owned by the UIRF and company X, including the licensing and commercialization thereof. (See V-30.3b(5).)