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R-12, UH Systemwide Administrative Procedures AP 5.500, Procedures for Invention Identification, Disclosure, and Reports Under State Funding

March 1985

1. Purpose.

The University Patent and Copyright Policy contains clauses relating to the respective rights of the University with respect to inventions developed under research projects funded by the State. It is essential that the Principal Investigator be thoroughly familiar there with, and comply promptly with the procedural requirements relating to invention identification, timely disclosure and reporting.

2. Objective.

The general procedures outlined below should be followed to assure uniformity and responsiveness in the handling of such inventions.

3. Applicability.

These procedures apply to all inventions conceived and/or developed under State funding.

4. Procedure.

The Principal Investigator (P.I.) shall maintain laboratory notebooks or equipment records as are reasonably necessary to document the conception and/or the first actual reduction to practice of inventions, and to show that the procedures for identifying and disclosing inventions are followed. These records shall be available upon request of the University and its duly appointed representatives.

(1) The P. I. shall furnish the Office of Research Administration with an invention disclosure. The disclosure shall be submitted in writing at the earliest opportunity to the departmental head or immediate supervisor and shall include a written statement certifying whether the potentially patentable invention or discovery was the result of private research done independently of any contractual obligations to the University and without using University equipment, facilities or funds, or whether it was the product of research done with the benefit of such assistance or with the aid of any outside research sponsor.

(2) The departmental head or immediate supervisor to whom the disclosure is submitted shall review it and shall forward it to the PCC within THIRTY (30) days after receipt, together with a written opinion regarding the accuracy of the originator’s statement submitted pursuant to Paragraph (1) and the reasons for such opinion.

(3) The Chairman of the PCC may at his discretion authorize the originator to submit the disclosure and required statement directly to the PCC without referring it to the departmental head or supervisor if he is satisfied that good grounds exist for dispensing with such reference.

(4) The Chairman and members of the PCC shall take adequate steps to assure and preserve the confidentiality of all invention disclosure documents.

(5) The originator shall be notified of meetings of the PCC and may attend the meetings at which his disclosure will be considered.

(6) The PCC shall within NINETY (90) days of the submission of the disclosure and required statement notify the President of the University, or his designated agent, the originator and the departmental head or immediate supervisor of its decision with respect to the disposition of the matter and the respective rights or equities of any interested parties.

(7) The President or his designated agent may overrule in writing the decision of the PCC, but failing such action within THIRTY (30) days of submission of the decision to the President or such agent the decision of the PCC shall be binding on all parties, unless appealed within that time.

(8) The originator shall be notified in writing of the final decision of the University.

(9) In cases where the University or an outside sponsor has an interest or equity in an invention or discovery, the inventor shall execute all such declarations, assignments or other documents as may be necessary in the course of invention evaluation, patent prosecution, or protection of patent rights in order to assure the title of the University or the RCUH or the University’s ability to meet its overriding patent obligations arising from grants, contracts or other agreements of any kind with outside organizations, as the case may be.

5. A guide to faculty on Inventions and Patents is available in the Office of Research Administration.