Invention and Patent Policy

I. Scope

All faculty, staff, and students involved in the creation of original intellectual property with the potential for patentability and commercialization.

II. Policy Statement

Employees must disclose, in writing and in a timely manner, the creation or discovery of all potentially patentable inventions created or discovered in the course of their University activities or with more than incidental use of University resources. Ownership of such inventions or discoveries is assigned to the University regardless of the source of funding. The inventor will share in royalties earned as determined through negotiation with the University.

III. Reason for the Policy

The goal of this invention and patent policy is to ensure that discoveries, inventions, and other creations generated by faculty, staff, and students of IWU are utilized in ways most likely to benefit the public. IWU seeks to assist its faculty and other researchers in properly disclosing their scholarly work, in complying with applicable laws and formal agreements, and in gaining the protection available under United States laws governing patents. Likewise, IWU seeks to ensure that commercial benefits are distributed in a fair and equitable manner that recognizes both the contributions of the inventors and the interests of IWU.

IV. Procedures

A. Administration:

a. The administration of this policy will reside with the Patent Advisory Committee (PAC). The committee shall consist of the Associate Dean of the School of the Physical and Applied Sciences, the Chief Financial Officer of IWU, the Provost, the President or his/her appointee, along with at least two faculty members plus any needed outside experts selected as appropriate for the particular invention. If the President does not serve on the committee then the Provost shall act as chair. When an invention is submitted for consideration, it will be the responsibility of the PAC Patent Advisory Committee to consult with the inventor(s) and appropriate experts in order to:

1. evaluate the patentability and commercial or other value of the invention;

2. determine a course of action for patenting and commercializing the invention;

3. ensure that all sales or licensing of inventions and/or discoveries are implemented to bring the inventions and/or discoveries to the public while securing financial reward for IWU and the inventors.

b. The Chair of the PAC shall report to the President of IWU. An experienced Patent Law attorney shall be consulted on all legal matters pertaining to this policy. Advice may be sought from outside consultants (such as venture capitalists) to determine whether a patent should be commercialized.

B. Applicability:

This policy, as amended from time to time, applies to all inventions conceived or first reduced to practice by full-time, part-time or visiting faculty, post-doctoral researchers, graduate assistants, staff, students, or any other persons performing research or engaging in work at IWU where such inventions may be created or discovered as a condition of ongoing employment or enrollment, independent of whether the individual is remunerated in their role by IWU. All IWU personnel may be required to sign a Patent Agreement with IWU which will detail the parties’ patent related rights and responsibilities and the ownership of the invention as provided herein. The absence of such a signed agreement will not in any way be interpreted as lessening or reducing IWU's claim on such inventions.

C. Ownership:

a. Ownership of inventions, including any intellectual property rights therein, that are conceived or reduced to practice by faculty, staff or any other person performing research or engaging in work or study at IWU, where such inventions are created or discovered within the course of their employment or with substantial use of IWU resources, personnel, or facilities beyond the usual office and library provisions, will reside with IWU. Inventions or discoveries that are made off IWU premises, are unrelated to teaching and professional activities, and are created without IWU support and resources are exempt from this policy.

b. Any student invention will be deemed made under IWU auspices and therefore the property of IWU pursuant to the patent policy only if it is made in the course of the student’s employment by IWU for an assigned work project, or when the student pursues faculty- or staff-guided or assigned research projects in research courses or on a voluntary basis. Students will be expected to sign a release form at the start of their research activities. Royalties from IWU’s licensing of any student invention will be shared with the student on the same basis that royalties are shared with faculty or staff employees.

c. When an invention is developed through a sponsored grant or contract, the special provision contained in the grant or contract will prevail. In the absence of such special provisions, IWU policy will apply. Generally, while IWU is assigned the rights to intellectual property generated during the course of federally-sponsored research activities, the government retains the option to claim ownership under certain circumstances. In the event that the government does not exercise its option and regardless of ownership, the government retains a non-exclusive, non-transferable, irrevocable, royalty-free, worldwide license to the invention produced under government sponsorship.

d. Any use of the University’s name in connection with the commercialization of an invention by an individual must be approved in advance by the PAC.

D. Procedures for Reporting an Invention:

a. When any person makes a discovery or invention to which this policy applies, a report of the invention should be made promptly to the Chair of the PAC. The report should be made on the Invention Disclosure Form. A link to the Invention Disclosure Form can be found in the “VI. Related Information” section of this policy. If ownership of the invention resides with IWU, the inventor(s) shall assign all intellectual property rights to the invention to IWU upon the PAC’s request.

b. Within sixty (60) days of receipt of an Invention Disclosure Form, the Chair will convene a meeting of the PAC to evaluate the invention. The PAC shall have the sole right to determine the disposition of inventions in which IWU has a proprietary interest. A decision to exercise this right shall be transmitted in writing to the inventor within one hundred and twenty (120) days of the date of disclosure of the invention to the PAC. If the committee decides to pursue a patent, it may recommend that IWU alone, or with the assistance of an external organization such as a technology transfer company, make applications for letters of patent. Title to all such patent applications and resulting patents shall be held by IWU. If the committee decides not to patent an invention, or not to commercialize a patented invention, IWU will release to the inventor its interest in the invention. In this case, IWU will get a royalty free license to use the invention for research and non-commercial purposes for as long as the patent is in effect.

E. Legal Expenses and Distribution of Income:

An account will be opened to which expenses associated with patenting and marketing inventions will be charged. Expenses include, but are not limited to, invoiced costs such as legal fees, patent filing fees, licensing agent fees, development fees, production fees and other out-of-pocket expenses. Revenues attributable to a particular invention will first be used to recover expenses incurred according to the following formula:

a. One Hundred percent (100%) of the income shall go to IWU until all out-of- pocket expenses associated with the protection and exploitation of the invention have been reimbursed. After IWU's full recovery of expenses, the net revenues received by IWU will be distributed according to the following formula:

Net Income	Inventor	Department	Division	IWU
Up to $10,000	75%	15%	5%	5%
Next $90,000	70%	15%	5%	10%
Next $900,000	60%	15%	5%	20%
Over $1 Million	40%	15%	15%	30%

b. Royalties attributable to inventions developed as a result of assigned IWU duties are normally divided as follows: seventy-five percent (75%) to IWU and twenty-five percent (25%) to the inventor.

c. In the event of multiple inventors, the inventors will be expected to agree among themselves on the fractional distribution of each inventor’s share of any royalties. If an agreement is not reached, the PAC will bring in an appropriate arbitrator. The inventors shall sign a written agreement specifying the fractional distribution of their share of royalties. The inventor's share will continue even if s/he leaves Indiana Wesleyan University.

d. In the event of multiple Departments or Divisions included in an invention, the Department and Divisions will be expected to agree among themselves on the fractional distribution of each inventor’s share of any royalties. The Departments or Divisions shall sign a written agreement specifying the fractional distribution of their share of royalties. If an agreement cannot be reached, the Provost will determine an appropriate distribution.

F. Express Agreement: In the event IWU and the inventor pursue an invention or patent pursuant to an express written agreement between them, the provisions of the written agreement regarding division of royalties shall control.

G. Consulting Agreements: Any faculty or staff member engaged in consulting work or in business is responsible for ensuring that clauses in the individual’s agreements are not in conflict with this policy, and with IWU’s commitments or agreements with third parties and that IWU’s rights and the inventor’s obligations to IWU are in no way abrogated or limited by the terms of such agreements, without the express written consent of IWU.

H. Waiver Request: Provisions of this policy may be waived only in extraordinary and compelling circumstances. The waiver request must be sent to the Provost and must identify which provisions of the policy are requested to be waived, the reasons why, and how the waiver would be consistent with the educational, research, or scholarly purposes of the university and the public interest. Each request will be considered on its own merit and have no implication for subsequent requests.

I. Dispute Resolution: In the event of any dispute regarding a decision of the committee, or a decision of the inventors in the case of multiple inventors, under this policy, including, without limitation, the ownership of an invention or the allocation of the inventor’s share of royalties, the President shall have the final decision concerning IWU’s position in the matter.

V. Definitions

Invention(s) means any and all ideas, processes, inventions, machines, technology concepts, designs, manufacture, programs, trade secrets, compositions of matter, discoveries, other proprietary information, or an improvement thereof, whether patentable or unpatentable, that have been or are created, discovered, acquired, conceived or reduced to practice.
Revenue(s) means any income that result from the sale or licensing of an invention other than fixed royalties as defined below.
Royalty(ies) means any payment made for the right to use an invention that is based on the amount to which it is used (e.g., units produced or volume manufactured).

VI. Related Information

Link to Indiana Wesleyan University Invention Disclosure Form
Relevant Law
1. 35 USC (Patent Laws)
2. 37 CFR (Patent Rules
3. American Inventors Protection Act of 1999