A-02 Operations A-02-08 Patents, Copyrights, Intellectual Property Policy DATE EFFECTIVE August 1, 2000 LAST UPDATED September 24, 2014 INTRODUCTION: This statement sets forth the policy of the Oklahoma Medical Research Foundation ( OMRF ) with respect to the disclosure, ownership and exploitation of intellectual property created or discovered by employees of OMRF and other participants in OMRF research, including, but not limited to, inventions, discoveries, designs, works or authorship, trade secrets, computer programs, data bases, know-how, compositions of matter, and processes. As a basic research institution, OMRF s primary purpose is the advancement of human knowledge for the betterment of mankind. Generally, this purpose is served best by widespread disclosure of research results within OMRF and the rest of the scientific community and to the public. In certain cases, however, limited restrictions on disclosure may be appropriate to allow for the protection of intellectual property that may have significant commercial potential. OMRF has adopted this policy to encourage the identification of potentially useful intellectual property and to facilitate its development and utilization in such a manner that minimizes interference with the open communication of scientific results. OMRF has also adopted this policy to provide a readily accessible statement of the rights and obligations with respect to intellectual property of OMRF, OMRF researchers and organizations that under an agreement with OMRF have sponsored or financed work resulting in the creation of intellectual property (a Sponsors ). Sponsors, including government Sponsors, generally have certain rights in the results of research that they fund, and possession of those rights sometimes precludes OMRF or its employees from financially benefiting from such research beyond the funding provided by Sponsors. In certain other situations, OMRF and the individuals whose efforts contributed to the creation of valuable intellectual property can and should share in any financial benefits that result from the commercialization of such property. This can provide tangible rewards for the creativity of the individuals involved and add to OMRF s financial resources, thus furthering its research activities. This policy will be periodically reviewed to determine whether or not it is functioning as intended to meet its objectives. Changes may be made by the Executive Committee of the Board of Directors from time to time as considered necessary. OMRF employees and others associated with OMRF are encouraged to transmit suggestions relating to this policy to the President. POLICY A. Administration This policy will be administered by the President of OMRF, subject to the review of the Executive Committee of the Board of Directors. The President may delegate duties under this policy to such other officers or employees of OMRF as the President may find appropriate. This policy may be amended by the Executive Committee of the Board of Directors from time to time in its sole discretion.
1. Employees and Researchers Covered: This policy applies to all employees of OMRF and all undergraduate students, graduate students, postdoctoral fellows, visiting professors, and others involved in activities in whole or part sponsored or funded by OMRF or by a Sponsor. All such persons are referred to in this policy as OMRF Employees. 2. Covered Property This policy applies to all intellectual property, including, but not limited to, inventions, discoveries, designs, works or authorship, trade secrets, computer programs, data bases, know-how, compositions of matter, and processes whether patentable or copyrightable or not, conceived, reduced to practice, authored or otherwise created by: a. every employee of OMRF during the course of, arising out of or relating to employment activities, and b. every other student and other person involved in research or other activities in whole or part sponsored or funded by OMRF or by a Sponsor during the course of such sponsored or funded activity. Questions as to whether or not an item of intellectual property falls within the scope of this Section A2 will be resolved by the President (or in the case of intellectual property created by the President, by such person as the Chairman of the Board may designate). Examples of specific subject matter that falls within the scope of this Section A2 include data generated while conducting research; research materials such as cell lines, modified organisms, antibodies, tissue samples, sera, and new strains of organisms or research animals; research subject files; laboratory notebooks; and new analytical methods and techniques. 3. Ownership and Other Rights: The ownership and other rights of OMRF, OMRF Employees and Sponsors in Covered Property are set forth in Sections B through G below. Section H sets forth certain policies relating to consulting activities and consulting agreements, which may, in certain cases and in accordance with Section H, provide for ownership of rights in certain covered property other than as set forth in Sections B through G. OMRF Employees may also agree with OMRF that other intellectual property made or created by such employees will be subject to this policy. B. Inventions and Discoveries and Patents 1. Disclosure To allow OMRF to make determinations about the potential availability of patent protection for inventions or discoveries made by OMRF Employees and the desirability of seeking such protection, every OMRF Employee who makes, conceives or reduces to practice an invention or discovery that the Employee believes is or may be patentable or might have commercial value must promptly notify the Technology Ventures Office and describe the invention or discovery in writing, preferably utilizing the OMRF Report of Invention form. (A-02-08-Form1.pdf)
2. Ownership a. Inventions and discoveries described in Section A2 shall be the property of OMRF unless made, conceived or reduced to practice during the course of work pursuant to an agreement securing ownership rights to a Sponsor. b. The ownership of inventions and discoveries described in Section A2 and made, conceived or reduced during the course of work pursuant to an agreement securing ownership rights to a Sponsor shall be determined by the applicable agreements and laws, rules and regulations relating to government Sponsors. c. Inventions or discoveries not described in Section A2 shall be the property of the inventor or discoverer, subject, however, to any agreement between the inventor or discoverer and any third parties. d. In the case of joint inventions where one or more of the joint inventors is not an OMRF Employee, Paragraphs (a), (b), and (c) above shall apply to determine the relative rights of OMRF and the joint inventor or inventors who are OMRF Employees. The rights of joint inventors who are not OMRF Employees shall be determined by agreement, or in the absence of agreement by applicable law. 3. Patenting a. OMRF, through its Technology Ventures Office, will decide whether to seek patent protection for an invention or discovery of which it is notified pursuant to Paragraph B1 taking into consideration the objectives set forth above, the Technology Ventures Office s assessment of the likely protectability, scientific and commercial value of the invention, and any other information the Technology Ventures Office may in its sole discretion consider important, including the substantial cost of patenting efforts. b. If OMRF decides to seek patent protection for an invention or discovery, each inventor will be notified of the decision. Each inventor shall provide necessary assistance in the preparation and prosecution of all patent applications and execute any related documents. c. If OMRF decides not to seek a patent on the invention or discovery, it will, within thirty (30) days of making of such decision, decide in its sole discretion whether to place the invention or discovery in the public domain and will notify each inventor promptly thereafter of that decision. The inventor(s) may then request OMRF in writing to release its ownership rights in the invention or discovery. OMRF may release its ownership rights worldwide or on a country-by-country basis, with such conditions as may be appropriate. Upon receiving such release, the
inventor(s) shall be free, at the inventor s own expense, to attempt to patent, license or otherwise arrange commercial exploitation of the invention or discovery in the countries in which OMRF has released its ownership rights, subject to any rights Sponsors may have and subject also to retention by OMRF of a royalty-free, irrevocable, non-exclusive license for research, educational and other non-commercial purposes. Any agreement for the licensing or commercial exploitation of the invention or discovery shall be submitted to the President for review prior to execution. d. If the inventor(s) fail to file a patent application, or grant a license or otherwise initiate commercial development of the invention within one (1) year of OMRF s release to the inventor(s), then ownership of the invention or discovery shall automatically revert to OMRF, and the inventor(s) will execute any and all documents that OMRF deems necessary to evidence such ownership. C. Computer Software Any computer program, or any portion of a computer program, or any data base, or any improvement to any computer program or data base (all of the foregoing being referred to as ( Computer Software ), whether embodied in tangible form or not, described in Section A2 shall, subject to the terms of any applicable funding agreement, be the property of OMRF, and OMRF shall own all right, title and interest in and to such Computer Software, including all patent rights and copyrights. All computer software not covered by Section A2 shall be the property of the creator, subject to any agreements he or she may have made with third parties. D. Works Subject to Copyright 1. All original works or authorship subject to copyright under federal copyright laws ( Works ), whether or not published, authored or otherwise created by OMRF Employees during the course of employment or participation in research funded by OMRF or a Sponsor shall be owned by OMRF unless an applicable funding agreement provides otherwise. All other Works described in Section A2 shall be the property of the author or authors, subject, however, to the grant by author or authors to OMRF of a royalty-free license to copy and use the Work for research and educational purposes. 2. Notwithstanding Paragraph 1 above, articles and other Works submitted to journals, conference proceedings and other professional publications may be copyrighted in the name of the publisher of such publications and may otherwise be dealt with as the authors and such publisher see fit, subject only to Section G of this policy and to the rights of any Sponsors. E. Exceptions 1. Outside Activities In cases where intellectual property is created pursuant to a consulting agreement reported to the President as provided for in Section
H, a waiver will be given if the President is satisfied that the intellectual property is not a result of work supported by OMRF funds or made using OMRF personnel, equipment, space or facilities. 2. In addition to cases covered by B3(c) and Paragraph E1 above, OMRF may in its sole discretion waive its rights in intellectual property described in Section A2 where there is no significant use of OMRF funds, personnel, equipment, space or facilities, subject to the terms of any applicable funding or other agreements. Any such waiver may be subject to such conditions as OMRF may determine, including the grant of a royalty-free license to OMRF for research and educational uses. 3. In addition to the circumstances referred to above, OMRF may, in its sole discretion and subject to the terms of any funding or other agreement, waive its rights in intellectual property in other circumstances upon determination by the President that such a waiver is consistent with the purposes of this policy. Such waivers may be subject to such conditions as the President may determine, including the grant of royalty-free licenses to OMRF for research and educational purposes. A waiver in any particular case shall not be construed as establishing any precedent for or as a waiver in any other case, whether similar or not. F. Licensing and Royalties 1. OMRF shall be free to license or otherwise exploit or not exploit, in its sole discretion, any intellectual property it owns, and the terms of any such license or other form of exploitation shall, as between OMRF and an OMRF Employee, be determined solely by OMRF. OMRF may grant licenses on a royalty-free basis or otherwise dedicate any intellectual property to the public. 2. Royalty-Free Licenses for Research To foster the progress of research, OMRF intends, where appropriate and where permitted by applicable agreements with Sponsors, to grant royalty-free licenses under the patents and other intellectual property owned by it for the purposes of research and education, it being understood that such licenses generally will not include any rights to engage in commercial activities. 3. Revenue Sharing (see Section I for distribution details) a. Subject to the terms of any applicable agreement with any Sponsor providing for a different allocation of royalties or revenues, OMRF normally will share with the creator or creators of particular intellectual property 33.3% (1/3) of the net revenues received by OMRF from the licensing, sale or other exploitation of that intellectual property. b. Net revenue as used here means gross royalties or other revenue received by OMRF from the sale, license or other exploitation of the
G. Publication intellectual property, less any costs and expenses incurred by OMRF for preparing and prosecuting patent and copyright applications, conducting or defending interference and infringement proceedings, establishing and implementing licensing arrangements, and other costs and expenses directly attributable to the property in question, not including the costs of the research from which the intellectual property arose. The President shall resolve any question as to what costs and expenses are properly deductible under the preceding sentence and the amount of such costs and expenses. Where there are or may be more than one inventor or creator of any intellectual property the allocation and distribution of revenues would be based on expenses are properly deductible under the preceding sentence and the amount of such costs and expenses. Where there are or may be more than one inventor or creator of any intellectual property the allocation and distribution of revenues would be based on the guidelines as stated in Section I, provided however that the President may determine in the President s sole discretion those persons entitled to share in royalties and the proportion of the amounts provided above that will be paid to each coinventor or co-creator. 1. OMRF believes that scientific inquiry can proceed most efficiently in an atmosphere of free and frank disclosure of research results and developments. As a result, it is the policy of OMRF to facilitate publication of research results, subject only to the following procedure designed to protect rights in certain intellectual property to allow the utilization of such intellectual property for the benefit of the general public and OMRF. 2. Where an OMRF Employee believes that a proposed publication may contain information concerning an invention, discovery, or other intellectual property that may be patentable or that should be otherwise protected because of possible commercial value or may disclose computer software, such individual should submit a copy of the manuscript or a description of the intellectual property to the President as early as possible prior to, and no later than at the time of submission of the manuscript for publication or prior to disclosure orally (at a conference or otherwise) or in private communication. OMRF will notify the individual in writing of its decision on whether or not to file a patent application or otherwise protect such intellectual property and on whether or not publication or disclosure may occur. 3. For manuscripts submitted for publication, it is anticipated that OMRF will make such decision during the period that the manuscript is being considered for publication. The OMRF Employee submitting the manuscript shall be free to have it published as submitted to the President on the earlier of (i) the 90th day after submission to the President or (ii) the date on which the President advises that he or she is free to do so.
4. For proposed oral disclosures or disclosures in a private communication, the President will endeavor to notify the OMRF Employee as promptly as possible and in any event within fifteen (15) days. The individual submitting the descriptions shall be free to make the oral disclosure or private communication on the earlier of (i) the 15th day after submission of the description to the President, or (ii) the date the President advises that he or she is free to do so. H. Intellectual Property Revenue Distribution This section sets forth guidelines for determining the equitable distribution of Net Revenue associated with the transfer of intellectual property in accordance with Paragraph F3(a). Prior to distributing revenues, OMRF shall recover the costs and expenses incurred by OMRF for preparing and prosecuting patent and copyright applications, conducting or defending interference and infringement proceedings, establishing and implementing licensing arrangements, and other costs and expenses directly attributable to the property in question (the Expenses ). The following guidelines shall apply to the distribution of revenue received pursuant to an Intellectual Property Agreement, subject to the discretion of the President. 1. Intellectual Property Agreement in this section shall mean an agreement granting rights under OMRF s ownership of intellectual property, patented or otherwise, and any and all associated agreements without which the Intellectual Property Agreement could not effectively be exercised. 2. Inventor Contribution. Each inventor s contribution to a patent or patent application shall be weighted equally. 3. Patent Contribution. Each patent subject to an Intellectual Property Agreement shall be weighted equally. 4. Single Intellectual Property. In the event that a single item of intellectual property (i.e., a patent or patent application) is subject to a particular Intellectual Property Agreement, any revenue received pursuant to such an agreement shall first be applied to Expenses. Any amounts remaining shall then be distributed in accordance with Paragraph F3(a). 5. Multiple Intellectual Properties. In the event multiple items of intellectual property are subject to a particular Intellectual Property Agreement, any revenue received pursuant to such an agreement shall be divided by the total number of items or units of intellectual property subject to the Intellectual Property Agreement at the time the revenue is received by OMRF accounting office. Each equal portion of revenue shall first be applied to Expenses for the associated item of intellectual property. Any amounts remaining shall then be distributed in accordance with Paragraph F3(a) for the associated item of intellectual property. 6. Revenue for Research. Revenue from an Intellectual Property Agreement that is specifically indicated in such agreement to be research funding is not
subject to Paragraph F3(a) and shall be distributed to the appropriate laboratory in accordance with OMRF standard accounting procedures. 7. Revenue from Sale of Research Materials. Revenue from a sale of research materials for cost plus overhead is not subject to Paragraph F3(a) and shall be distributed to the appropriate laboratory in accordance with OMRF standard accounting procedures, provided, however that any such sale of research materials that is made in conjunction with any related Intellectual Property Agreement a. shall be deemed to be part of any such related Intellectual Property Agreement; and b. 16.7% (1/6) of gross revenue received by OMRF from such sale of research materials shall be distributed to the appropriate laboratory in accordance with OMRF standard accounting procedures. This money will remain with the foundation if the researcher leaves; and c. the remaining 83.3% of gross revenue shall be subject to reimbursement of Expenses and the guidelines set forth in this distribution Section I. 8. Equity. Revenue received in the form of equity shall be distributed in the same manner as single or multiple intellectual properties above at such time as it is reasonable possible for OMRF to either distribute shares of equity or revenue derived from the sale of equity. 9. Revenue Sharing with Third Party Institutions. Revenue from an Intellectual Property Agreement that is subject to an agreement between OMRF and a third party shall first be distributed in accordance with the third party agreement and then in accordance with the guidelines in this distribution Section I. For example, an inter-institutional agreement between OMRF and a third party may require OMRF to distribute a percentage of Net Revenue to said third party, which percentage is not subject to Paragraph F3(a). Example 1: One Patent subject to a license agreement. The patent application has two inventors (Inventors A and B) and Expenses
Example 2: Two patents subject to a license agreement. Patent A has one inventor (A) and no expenses. Patent B has two inventors (Inventors A and B) and Expenses Example 3: A License Agreement with a related Sales Agreement
Example 4: Revenue Sharing with Third Party Institutions After Expenses (as determined by third party agreement) Example 5: Revenue Sharing with Third Party Institutions Before Expenses (as determined by third party agreement)
I. Continuing Obligations. 1. OMRF Employees that leave employment by OMRF or discontinue participation in OMRF research ( Departing OMRF Employees ) have continuing obligations relating to intellectual property and other materials created while an employee of OMRF or while participating in OMRF research. Therefore, unless agreed to in advance and in writing, Departing OMRF Employees may not take any such intellectual property or other materials with them when they leave OMRF. For example, Departing OMRF Employees may not take data generated while conducting research; research materials such as cell lines, modified organisms, antibodies, tissue samples, sera, and new strains of organisms or research animals; research subject files; laboratory notebooks; and new analytical methods and techniques with them when they leave OMRF without obtaining written permission. 2. The President or his or her designee may permit Departing OMRF Employees to take intellectual property or other materials when they leave OMRF, generally only for research, educational and other non-commercial purposes. Departing OMRF Employees that wish to take any intellectual property or other materials with them when they leave OMRF must submit a written request to the President, their immediate supervisor, or their department head fully describing what is to be taken and how it will be utilized. No such intellectual property or other materials may be used commercially without a specific written agreement detailing the contractual provisions relating to such commercial use. Permission to take intellectual property that is to be used for research, educational and other non-commercial purposes and that OMRF has no plans to use commercially shall not be unreasonably withheld. J. Interpretation and Assistance Any OMRF Employee having questions regarding the interpretation or application of this policy may contact the President of OMRF, or such other person as the President may designate K. Intellectual Property Agreement All new employees will be given a copy of this policy. A signed copy of the Intellectual Property Agreement must be returned to the Human Resources Office.