A.7: TRINITY COLLEGE PATENT AND INVENTION POLICY
Approved by the Board of Trustees on February 25, 1997. This policy is effective as to all inventions/discoveries made on or after February 25, 1997.
A. Introduction: The mission of Trinity College is to advance knowledge. Trinity recognizes that the various activities of its Faculty, students, and staff may produce patents and inventions. For the purpose of this policy, an "invention" shall mean any design, concept, technique, discovery, or improvement, whether or not patentable. The invention can be the result of research activities, or work, or study. The Trinity College Patent and Invention Policy is designed to make inventions developed in the course of College research or operations available to the public on a reasonable and effective basis and, at the same time, to protect the rights of the College and to provide adequate recognition to the inventors.
B. Applicability: This policy applies to inventions by Faculty, staff, or any other person performing research or engaging in work or study at the College, where such inventions are created or discovered: (1) within the course of, or relating to, their employment; (2) with the use of College resources or facilities; or (3) with the support of external sources (e.g. grants) obtained while employed at the College. Title to all such inventions will belong to Trinity College. The College makes no claim to inventions by College employees unrelated to the activities for which the individual is employed and which have not involved the use of College resources or facilities.
An invention made by a student will be deemed made under College auspices and therefore the property of the College pursuant to the Patent Policy if it is made by a student (1) in connection with work in a course in which the student is enrolled or which the student is auditing, or (2) in connection with Faculty-supervised independent work, or (3) in the course of the student’s College employment, or (4) in the course of other work using College facilities or resources. Royalties from the College’s licensing of any invention made by a student will be shared with the student on the same basis that royalties are shared with Faculty inventors.
C. Procedures: Any person who discovers an invention covered by this policy shall promptly disclose that invention by completing an invention disclosure form (attached) and submitting it to the Office of Faculty Grants.
Within 30 days of receipt of the invention disclosure form, the Director of Faculty Grants will convene a meeting of an ad hoc Committee on Patent and Invention, consisting of the Treasurer, Dean of the Faculty and Chairperson(s)/ Director(s) of the department(s)/program(s) of the Faculty member(s), staff, or student(s) submitting the invention disclosure forms and other chairs as the College deems appropriate.
The responsibilities of the ad hoc Committee on Patent and Invention shall be:
a. to determine whether to proceed with evaluation of an invention;
b. to determine the means of evaluation for patentability (internal or external evaluation);
c. to review evaluation results and determine a course of action.
If the Committee decides to pursue a patent, it may recommend that the College alone, or with the assistance of an external organization, make applications for letters patent. The College will retain title to all such patent applications and resulting patents.
If the Committee concludes that it does not wish, and has no legal obligation, to recommend College participation in the patenting or licensing of an invention, the College will release to the inventor the College’s interest in the invention within ten working days of the decision, and the inventor shall then be free to dispose of the invention.
If it secures a patent, the College will seek to enter into appropriate licensing or other arrangements with third parties to commercialize the invention.
D. Income-Sharing Arrangements: After the recovery of costs related to the patent and commercialization process, including without limitation any royalties that are paid to an external organization, the net royalties[1] will be divided as follows:
50% to the inventor(s) and 50% to the College. In each of the first three years in which royalties are received, the College will allocate one-fifth of its share (i.e., 10% of net royalties) to the department(s)/programs(s) of the inventor(s)[2]. These funds may be used for equipment purchases, research and instructional activities, and other purposes approved by the Dean of the Faculty, but they may not be used to create or support Faculty positions.
The inventor(s) shall agree to assist the College in the prosecution of the patent application. In the event of multiple inventors, these individuals will be expected to agree among themselves on the fractional distribution of the "inventor" share of any royalties. The individuals involved shall sign a written form (available from the Office of Faculty Grants) specifying the fractional distribution of the inventors’ share. It will be deposited for the record in the Office of Faculty Grants.
E. Dispute Resolution: In the event of any dispute arising under this policy, including, without limitation, the ownership of an invention or the allocation of the inventors’ share of royalties, the ad hoc Committee on Patent and Invention shall arrange for arbitration of the dispute in the following manner:
Unless the disputing parties concur in the appointment of a single arbitrator, the matter in dispute shall be referred to a panel of arbitrators: one to be appointed by each disputing party, and an additional arbitrator to be appointed by the arbitrators selected by the disputing parties. If within a month after the Committee provides notification of arbitration a disputing party shall not have appointed his or her arbitrator, then such arbitrator shall be appointed by the American Arbitration Association. The arbitrator(s) shall determine the place or places where meetings are to be held. The decision of a majority of the arbitrators shall be final and binding on all of the parties. Judgment on the arbitration award may be entered in any court having jurisdiction thereof. Any fees charged by the arbitrators shall be shared equally by the disputing parties.
The foregoing notwithstanding, in the event of a dispute which involves only students, the Committee shall hear the positions of the disputing students and render a decision, which shall be final and binding on all of the students.
F. Revocation or Amendment: This patent policy is subject to revocation or amendment by the College. In case of doubt as to the interpretation of this patent policy, a definitive interpretation will be provided by the President after receiving the advice of the ad hoc Committee on Patent and Invention.
Invention Disclosure Form (Required Format)
I. Basic Information About the Invention
Please provide name or title for your invention and a brief description. Inventions include such innovations as the development or improvement of new processes, products, apparatus, compositions of matter, organic or inorganic organisms, and software which may be patentable. Use additional sheets and attach descriptive materials to expand answers to questions as needed. (Sketches, drawing, photos, reports and manuscripts will be helpful.)
A. Invention Name or Title:
B. Description:
C. What are the immediate and/or future applications of the invention/innovation?
D. Why is the invention/innovation better -- more advantageous -- than present technology? What are its novel and unusual features? What problems does it solve?
E. Is work on the invention continuing? Are there limitations to be overcome or other tasks to be completed prior to practical application? Are there any test data?
F. Have products, apparatus or compositions, etc., actually been made and tested?
II. Publications, Public Use and Sale
Note: valid patent protection depends on accurate answers to the following items:
A. Has invention been disclosed in an abstract, paper, talk, news story or thesis?
Type of disclosure:
Disclosure date:
(Please enclose a copy.)
B. Is a publication or other disclosure planned in the next six months?
Type of disclosure:
Date:
(Please enclose drafts, abstracts, preprints.)
C. Has there been any public use or sale of products embodying the invention?
(Please describe, giving date.)
D. Are you aware of related developments by others? If possible, attach copies of any relevant patents or publications.
III. Sponsorship
If the research that led to the invention was sponsored, please fill in the details and attach a copy of the contract or agreement if possible.
A. Government agency:
Grant no:
B. Name of industry, university, foundation or other sponsor.
C. Has the invention been disclosed to industry representatives? If "yes," please provide details, including the names and addresses of companies and their representatives.
IV. Inventors’ Data and Signatures
A. Names and titles of inventors:
(Please list names, provide signatures and date signed.)
B. Contact for more information:
(Please provide name, phone number and e-mail address.)
C. Mailing address(es) for inventor(s):
(Please provide addresses and e-mail addresses for each party.)