86-5 Patent Administration and Procedures
1.1 It is the purpose of this executive order to outline the administrative systems and procedures which will be used to implement the Wayne State University Patent Policy Statute as required in Section 6.5 of that statute. The allocation of decision-making authority upon which this executive order is based follows existing statutes and actions of the Board of Governors.
2.0 Administrative Organization
2.1 Delegation of Authority
The President hereby delegates to the Provost, or his/her designee, the authority to implement all aspects of University policy relating to inventions, patents and licensing.
The President also delegates to the Provost the authority to commit funds from the University Research Stimulation Fund or funds otherwise included in his/her budget for invention stimulation and patent development.
The President delegates to the General Counsel the authority to commit funds from his/her budget for legal costs and fees incurred in connection with patenting and licensing activity.
2.2 Administrative Responsibility
The Provost, or his/her designee, is responsible for the design, implementation, and daily administration of an aggressive invention stimulation, patenting and licensing program for Wayne State University. The Provost will designate an Intellectual Property Manager to provide leadership and oversee the University's patent and licensing program.
The Provost, or his/her designee, will ensure that all University employees are aware of the Patent Policy Statute and its implementing executive order.
The Provost, or his/her designee, will prepare an annual report detailing and evaluating patent and licensing activity at Wayne State University. This report will be submitted to the President on November 1 for the preceding fiscal year.
2.3 Patent Committee
A Patent Committee will be formed to advise the administration in matters pertaining to patenting and licensing at Wayne State University. The Committee shall be chaired by the Provost, or his/her designee. At least one-half of the Committee members shall be members of the academic faculty of the University selected by the President, or his/her designee, from a list of names submitted by the University Council. The list of names submitted by the University Council shall include twice as many names as the total number of academic faculty members that are to be included on the Committee. Committee members will serve two-year staggered terms.
The duties of the Patent Committee shall include:
a. Providing advice to the administration in cases of dispute regarding ownership of inventions;
b. Investigating disputes pertaining to licensing of University-owned patents; and
c. Investigating disputes regarding waiver of University patent rights to external organizations.
In those matters of dispute that are referred to the Patent Committee, the Committee shall make a careful investigation of all aspects of the subject dispute and transmit its findings and recommendation to the President for final action. The Patent Committee may draw upon other members of the University and professional communities as required to perform any of its duties described in the Patent Statute.
3.0 Report of Inventions
Full- and fractional-time University employees must promptly report in writing to the Provost, or his/her designee, any new inventions and discoveries which may be patentable. The Invention Report must be reviewed and approved by the inventor's chairperson and dean prior to submission of the report to the Provost, or his/her designee. Invention Report forms will be made readily available to all University employees. The Office of the Provost, or the office of his/her designee, will acknowledge receipt of the Report Form to the inventor(s) within ten (10) working days.
4.0 Determination of Ownership
When the inventor declares that a reported invention is not the property of the University, the Provost, or his/her designee, will evaluate the Invention Report and determine whether University support was used to develop the invention. If it is determined that University support was not used, the University will acknowledge the inventor's ownership rights to the inventor within twenty (20) working days following receipt of the Invention Report. The Patent Committee will advise the Provost in cases of dispute regarding rights to inventions which have been developed under conditions described in Section 2.1 of the Patent Policy Statute. The Patent Committee shall review all pertinent claims and circumstances and issue a statement setting forth its proposed disposition of the dispute. The Committee's Statement shall be directed to the President for consideration in his/her final determination.
5.0 Waiver of University Patent Rights
The Provost, or his/her designee, will develop administrative procedures for review and approval of all requests for waiver of University patent rights.
5.1 Waiver of Patent Rights to External Research Sponsors
The Provost, or his/her designee, will review all grants and contracts which require waiver of University patent rights to an external organization. Such review shall ensure that contractual terms and conditions are fully consistent with provisions of the University Patent Statute. The Provost, or his/her designee, shall have the authority to approve grant or contract agreements with private sector research sponsors which require a reasonable delay in the public dissemination of knowledge (as defined in the Patent Statute).
5.2 Consulting Reports and Requests for Waiver during Consulting
University faculty are required to report to the Provost, or his/her designee, prior to entering into a consulting relationship which requires assignment or waiver of University patent rights to an external consulting sponsor. If a potential conflict of interest exists (as considered in Sections 6.2 and 6.3 of the Patent Statute), the faculty member must seek prior approval for assignment or waiver of University patent rights before entering into such consulting relationships. A request for waiver is not necessary in instances in which the entirety of the research that may result in a patentable invention is conducted during a period in which the faculty member or other university employee is not formally compensated by the University (i.e., during unpaid summer leave, uncompensated sabbatical leave, uncompensated leave of absence) and when no university facilities, equipment, expense, or services (including secretarial and computer) are involved, except as this provision may be altered by subsequent statute and/or executive order pertinent to faculty consulting.
The Provost, or his/her designee, shall review consulting reports and patent assignment or waiver requests for compliance with University patent and consulting statutes, and shall issue an appropriate written response to the faculty member within ten (10) working days. Administrative review shall ensure that the consulting relationship does not involve a conflict of interest situation as described in Sections 6.2 and 6.3 of the Patent Policy Statute.
6.0 Patent Evaluation and Application Process
Upon receipt of a report of an invention which has been assigned to the University by an inventor, the Provost, or his/her designee, will conduct a preliminary evaluation of the technological feasibility and commercial potential of the subject invention. Based upon the results of this preliminary evaluation, the Provost, or his/her designee, will determine whether the University should initiate patent application procedures. The Provost, or his/her designee, will then respond in writing to the inventor regarding the University's intention to pursue development of the invention in question.
If the University elects to initiate the patent application process, the Provost, or his/her designee, will inform the Office of the General Counsel to proceed with patent application procedures, including identification of patent counsel. Patent application procedures may be initiated only by the Office of the General counsel following such notification by the Provost, or his/her designee. Patent application procedures and expenditure of funds for counsel may be initiated only after the inventor(s) has signed a Memorandum of Understanding, prepared by the Office of the General Counsel, which shall specify the patent related rights and obligations of the inventor and the University. Charges incurred by the University that are associated with patent application processing will be a prior charge against future royalty income on the subject patent. As described in Section 3.2 of the Patent Policy Statute, the University administration will have the authority to retain royalty-free license rights for use of University-owned patents by the University.
If the University does not elect to pursue development of the invention, rights to the proposed invention will revert to the inventor. In cases where the University waives its right to ownership, and the inventor elects to pursue a patent independently, the University will retain royalty-free license rights to utilize the invention for its own purposes. Any decision by the University either to acquire or waive patent rights under this subsection must be rendered within four calendar months following receipt of the Report of an invention, together with any additional information needed to render the Report complete.
7.0 Preliminary Patent Evaluation Support
A faculty member may consult with an external patent attorney for the purpose of preliminary invention evaluation. If the University is to defray the cost of these consultations, the faculty member first must secure the approval of his/her Dean. The faculty member then shall contact the Office of the General Counsel. The Office of the General Counsel may authorize external counsel to provide consultation services and a patent search, if appropriate, and will so inform the Provost, or his/her designee. Any such preliminary work shall not take the place of the Invention Report and/or related procedures, which are required prior to the filing of a patent application.
8.0 Reports to the Board of Governors
The Provost, or his/her designee, in consultation with the Office of the General Counsel, will promptly report the following transactions to the Board of Governors:
a. Assignment of patent rights to individual inventors;
b. Acquisition or assignment of patent rights to the University; and
c. Waiver of University patent rights to external organizations, and contracts which include provisions for such waivers.
The President will transmit to the Board of Governors the annual report provided for in Section 2.2 of this executive order.
9.1 This executive order is revocable by the president at any time and without notice.
10.0 Effective Date
10.1 This executive order is effective upon issuance.
Signed by President David Adamany June 6, 1986.