July 2010

Intellectual Property and Technology Transfer Policy

3-2


Intellectual Property

Intellectual property developed by UCAR employees in the course and scope of their employment belongs to UCAR unless provided for otherwise by this policy.  All employees must sign an intellectual property agreement that identifies UCAR's and each employee's proprietary interests with regard to intellectual property.  Directors may require appointed visitors to sign a similar agreement.

Disclosure

All potentially patentable inventions conceived or first reduced to practice in whole or in part by UCAR employees and visitors in the course of their UCAR responsibilities or within the scope of their employment or with the use of UCAR resources shall be disclosed on a timely basis to the UCAR Office of General Counsel.

Copyrightable Works

In keeping with academic tradition, and except to the extent required by the terms of any funding agreement, UCAR does not claim ownership of pedagogical or “Scholarly Works,” regardless of their form of expression. However, consistent with UCAR's Publication & Information Dissemination Policy, UCAR will retain a nonexclusive, royalty-free right to use in any manner, for its research and educational purposes, the Scholarly Works. If required by the applicable funding agreement, the Federal government or other UCAR sponsor may also retain such a right. Underlying ideas or concepts of a patentable nature that are to be included in such a work should be disclosed and protected, as appropriate, before publication of the work.  Other than Scholarly Works, UCAR retains ownership of any copyrightable work prepared by an employee within the scope of employment, also known as a “Work for Hire.”

Confidential and Proprietary Information

Employees have a duty to maintain the confidentiality of confidential and proprietary information belonging to UCAR and third parties, where third party confidentiality is specifically requested.  UCAR or third party non-disclosure or confidentiality agreements should be executed where appropriate.

Technology Transfer

UCAR will normally transfer its intellectual property to the UCAR Foundation to facilitate technology commercialization.  The UCAR Foundation is obligated to ensure that revenue from such technology commercialization activities flows back to UCAR. At the time of transfer to the UCAR Foundation for commercialization, the NCAR Associate Director or UCAR/UCP Program Director will be asked to specify the relative contribution of any patented technology to the overall commercialization effort.  

All monetary proceeds from technology commercialization will be distributed as set forth in the Procedures. 

Please see UCAR's Intellectual Property and Technology Transfer procedures as well as UCAR's policies on Conflict of Interest, Ethical Conduct, Outside Employment, Special Appointments, and Publication and Information Dissemination.

Contact the Office of General Counsel for interpretation of this policy.

 

July 2010

Intellectual Property and Technology Transfer Procedures

(related to Policy 3-2)


Introduction. In compliance with the terms of federal government cooperative agreements, sponsor agreements and federal laws, UCAR has adopted the UCAR Intellectual Property and Technology Transfer Policy and the following procedures.

Definitions.

  1. Copyright.
    The exclusive right to produce or reproduce (copy), to perform in public or to publish an original work that is fixed in a tangible medium, or to create a derivative work from the original work. Tangible mediums of expression include: printed materials, music, visual arts, computer screen displays, sound recordings, electronic expressions, and the object, source, and microcode forms of computer programs. Only the manner of expression is protected under copyright law; ideas are not protectable under copyright law.

  2. Defensive Publication.
    A publication, whether in printed, visual, or electronic form, the purpose of which is to dedicate an idea to the public domain and to preclude any other individual or entity from gaining a proprietary interest in the idea. Scholarly works, scientific computer models, and scientific research results may be considered defensive publications.

  3. Equity.
    For purposes of this Policy, equity is stock, the right to receive stock, or an ownership interest in a business. Where the UCAR Foundation accepts equity in private or publicly held businesses in addition to and/or in lieu of licensing payments, the equity revenue, once realized, will be distributed using the distribution percentages set forth in the table below or, in the case of Significant Contributors, as determined by the President's Council and the President of the UCAR Foundation.

  4. Intellectual Property.
    For the purposes of this Policy, intellectual property includes patents, proprietary know-how, trademarks, service marks, copyrights, and defensive publications that are developed by an employee of UCAR either through his/her employment or other agreement, or by operation of law.

  5. Invention.
    The human creation of a new technical idea and the physical means that can accomplish or embody the idea. Under the patent laws, an invention is only patentable if it meets the standards of patentability. Thus, it must be novel, non-obvious, useful, not similar to or disclosed in prior art, and not publicly disclosed, used or sold more than one year prior to the date of the application for patent in the United States.

  6. Inventor.
    For the purposes of this Policy and consistent with the meaning of "inventors or patentees" under U. S. patent law (35 U.S.C. §1), employees who receive a patent on an invention are defined as "Inventors." Inventors shall receive a portion of revenue generated from commercialization activities derived from the invention (see Commercialization of Intellectual Property set forth in these Procedures).

  7. Joint Inventors.
    Where two or more employees (or non-employees) collaborate to make an invention, they are joint owners of an undivided entire interest in the invention and any subsequent patent.

  8. Know-how.
    A confidential and proprietary technological idea, concept, process, business plan, or strategy, including trade secrets, which may be protected for an indefinite period of time, provided that no public disclosure occurs.

  9. Patent.
    A grant by the federal government to an inventor of the right to exclude others from making, using, selling, or offering to sell or import the invention in the United States. The federal statutes governing the patentability of inventions and grant of patents can be found at 35 U.S.C. §1 et seq.

  10. Public Domain.
    The term "public domain," describes the status of an invention, mark, commercial symbol, or any other creative work that is not protected by a form of intellectual property. If a work is in the "public domain" that means that anyone can freely copy, reproduce, and commercialize the work without permission or attribution to the original creator(s) or inventor(s). A creator or inventor may choose to dedicate the work to the public domain, or it may "fall" into the public domain if the owner of the work does not maintain statutory protection for the work under the applicable federal law: patent, copyright or trademark.

  11. Scholarly Work.
    A scientific article published in a refereed journal, a monograph, a book, a thesis, or a similar contribution to a collective work which is authored by an employee within the scope of employment and which is not created as a result of a contractual obligation on behalf of UCAR. The scholarly work may add to the existing body of fundamental scientific knowledge. Although a Scholarly Work may be published on a web site, the web site itself is not a Scholarly Work. Software and any computer program codes are not included in the definition of a Scholarly Work.

  12. Significant Contributor.
    A "Significant Contributor" is a UCAR definition that describes the one or more current employees, who make significant contributions to technologies that return royalty revenues to UCAR under this Policy, but do not qualify as Inventors. A significant contribution is a non-routine contribution that was essential for the commercialization of the technology.

  13. Trademark or Service Mark.
    A word(s), design, slogan, symbol, logo, picture or phrase, which is used to identify and distinguish a product or service.

  14. Work for Hire.
    A "work made for hire" is any work prepared by an employee within the scope of his or her employment that is not specifically defined by UCAR as a "scholarly work." In such cases, UCAR is deemed to be the author of the work, and thus the owner of the copyright or any other intellectual property rights. In addition, a "work made for hire" is any work that is commissioned by UCAR with a third party where the parties agree to treat the work as a work made for hire.

Invention Disclosure. Consistent with the Employee Intellectual Property Agreement, federal government cooperative agreements, sponsor agreements, and federal statutes and regulations, employees are encouraged to disclose ideas, work product and technological advances to their NCAR Associate Director or UCAR/UCP Program Director. The internal disclosure should occur before public disclosure of the technology is made in publications, seminars, and conferences to ensure that the rights of the employee, UCAR, and the sponsor are optimally protected. The director should consult with an attorney in the Office of General Counsel when determining what type of public disclosure best meets the needs of the program while protecting the interests of all parties involved. The director will make the final decision on the type and timing of public disclosure with due regard to both the scientific mission of the unit and the UCAR policy to commercialize technology advances where feasible.

The invention disclosure form and invention disclosure guidelines are available on the OGC Web site.

Invention Assignment. All employees who have created a patentable invention are required to execute an assignment form (link) that assigns the invention to UCAR. Typically, the assignment form is executed at the time that an invention proceeds to the patent application stage. When the assignment is made, the inventor unequivocally conveys all his or her rights in the invention, including the rights to make, use and sell, to UCAR.

Confidential and Proprietary Information. Each employee has a duty to protect UCAR confidential and proprietary information as well as any confidential and proprietary information of third parties. Before disclosing UCAR confidential and proprietary information to a third party, consult with the Office of General Counsel to determine if the parties should enter into the UCAR Nondisclosure Agreement (NDA). To ensure consistency and compliance, the Office of General Counsel executes and maintains all NDAs on behalf of the organization. The NDA form and NDA procedures are also available on the OGC Web site.

A third party may disclose to UCAR the third party's protected or proprietary, technical, scientific, engineering, and business concepts, information, and data. In some cases, third parties may request that UCAR enter into a NDA or Confidentiality Agreement to protect the non-UCAR confidential or proprietary information and technology. UCAR employees should consult with the Office of General Counsel to negotiate the NDA and to determine proper handling and use of non-UCAR confidential and proprietary information and technology or data that are made available to or are known to UCAR employees.

Conflicts of Interest. Outside consulting by employees may lead to a conflict of interest (or the appearance of a conflict of interest) or a tainting of technologies between UCAR and the third-party employer. Employees must not compromise their obligations and responsibilities to UCAR when engaged in outside consulting. UCAR employees should consult with their supervisor, or laboratory or program director to determine whether a conflict of interest exists or to seek advice as to how to avoid a conflict of interest or the compromising of UCAR's proprietary interests. Refer to UCAR's Conflict of Interest Policy.

Commercialization of Intellectual Property. Technology commercialization activities include the following activities:  licensing patented, copyrighted or other non-patented technology to third parties for which UCAR or the UCAR Foundation receive license fees and/or royalties, and business development projects, including sponsored development, joint development or other business development, for which UCAR or the UCAR Foundation receive license fees, royalties and/or equity in a commercial enterprise.  Technology commercialization, however, does not include sponsored research projects for which UCAR receives contract revenue intended to cover the operational costs of the project.

UCAR will normally transfer its intellectual property to the UCAR Foundation to facilitate the commercialization of technology. UCAR and the UCAR Foundation have entered into a Master Technology License Agreement that governs the flow of technology between them. Pursuant to this Master Technology License Agreement and this Policy, the UCAR Foundation is obligated to ensure that royalties from such licenses flow back to UCAR. If UCAR decides to use another entity for commercialization activities, the specific royalty-sharing arrangements between UCAR and that entity will be set forth in an amendment to the Master Technology Licensing Agreement.

Identification of Contribution of Patented Technology to Total Product/ Solution. When patented technology is transferred by UCAR to the UCAR Foundation for commercialization, the laboratory or program director is asked to specify the relative contribution of the patented technology to the overall commercialization effort. Inventors of the patented technology will receive the designated proportion of revenue. For instance, if the director determines that the patented technology contributes 50% to the overall technology commercialized, then, on the first $10,000 in royalty revenue, the inventor would receive $5,000 (10,000 x 50%).

Nomination of a Significant Contributor. Directors of units that participated in technology commercialization during the fiscal year may nominate any Significant Contributor(s) to the technologies that generated revenue from commercialization activities during the past fiscal year to receive a monetary award. The nominations must be submitted to the President's Council by December 1 of each year for consideration by the President's Council at its December meeting. The President's Council may seek additional input from the Directors and the President of the UCAR Foundation in making its final awards decision, if any. The total awards to a Significant Contributor for any one year should normally not exceed 10% of the revenue generated from the specific technology commercialization activities in that year, but in no case may the award exceed 20% of that revenue. The costs of such awards will be distributed evenly to the laboratory or program, entity (NCAR or UCP), UCAR and the UCAR Foundation.

Royalty Distribution. An accounting of the royalties and a determination of the inventor's share, as well as the division, program, entity, UCAR and UCAR Foundation shares will be undertaken on an annual basis after the end of each fiscal year (September 30). The UCAR Foundation shall distribute any royalties no later than January 31 of the following year to eligible inventors who are UCAR employees as of December 1. All revenues from commercialization activities, including license fees, royalties and equity will be distributed as set forth in the revenue distribution chart set forth below.

All revenue distributions are cumulative, and the term revenue means “gross revenue.”  The revenue distributions are outlined as follows:

$10,000 or less
Distribution
Inventor
100%
Laboratory or program
0
Entity (NCAR/UCP/EO)
0
UCAR
0
UCAR Foundation
0

 

$10,000 or more
Distribution
Inventor
10%
Laboratory or program
22.5%
Entity (NCAR/UCP/EO)
22.5%
UCAR
22.5%
UCAR Foundation
22.5%

For all revenue distributions where there is no named inventor, the inventor's share will be distributed evenly to the Laboratory or Program, entity, UCAR and the UCAR Foundation.  In the event a Laboratory or Program ceases to exist, the President of UCAR determines the disposition of that share of the revenue.

Equity. Where the UCAR Foundation accepts equity in private or publicly held for-profit businesses in addition to and/or in lieu of licensing payments, the equity revenue will be distributed using the distributions and percentages set forth in the distribution table or as determined by the President's Council and President of the UCAR Foundation, in the case of significant contributors.  The value of the equity involved in any technology commercialization endeavor will be determined at the earliest possible time that the equity can be liquidated, regardless of whether or not it is actually liquidated.

Reverter of UCAR Intellectual Property to Employees. UCAR may, at its option, engage in technology transfer, pursue intellectual property protection, or dedicate the intellectual property to the public domain. If UCAR does not pursue any of these options, the federal sponsor may elect to exercise its rights to the intellectual property. If UCAR, or the federal sponsor, do not exercise any of these rights, the employee creator or inventor may be permitted, at UCAR's sole discretion, to claim rights to such intellectual property, otherwise known as a "reverter."

To claim these rights, the employee shall submit a written request describing the employee's intent with regard to the handling, dissemination, and disposition of such intellectual property. UCAR will review the request to determine if the employee's intent is consistent with UCAR's philosophy and technology transfer requirements, including any obligations stated in any relevant agreements related to the technology. If the intent, in UCAR's sole opinion, is consistent, such intellectual property will revert back to the employee pursuant to a specific agreement. UCAR and the federal government, or any other sponsor with predetermined rights, shall retain the right to use the reverted intellectual property, in any manner, for their own purposes. Additionally, the employee will have the discretion to determine his or her own proprietary interest in such intellectual property, and will bear all costs, fees, and expenses associated with the securing of any intellectual property protection. The employee will also be required to indemnify UCAR and any sponsors for his/her commercialization of the reverted intellectual property.

Contact The Office of General Counsel for the interpretation of this policy.