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Invention and Patent

Board of Trustees Policy: 5.10

Date: June 2006

Supersedes: n/a

Purpose

Montgomery County Community College (the “College”) is committed first and foremost to teaching. Additionally the College supports research and the pursuit and expansion of knowledge. The College recognizes that, during the course of teaching and research, potentially patentable devices, methods, products, processes, improvements or other discoveries (collectively, “Inventions”) may be conceived and developed. The College desires, with this Invention and Patent Policy (“Patent Policy”), to ensure that any Inventions resulting from the research and scholarship pursued at the College are developed, disseminated, marketed and commercialized for the mutual benefit of the inventor, the College and the public.

The College has developed this Patent Policy in order to:

  • Foster an environment of teaching, research and learning among the College’s faculty and students;
  • Facilitate the development and use of research and scholarship in ways that are consistent with and in support of the mission of the College;
  • Serve the public interest by providing a process by which Inventions may be made readily available to the public; and
  • Ensure that the rights, interests, and responsibilities of both the College and the inventor are fairly and uniformly determined.

This Policy is not intended to preclude faculty, staff or students from submitting inventions owned by such individuals (as determined pursuant to Article III hereof) to the College for possible patenting and commercial exploitation and management under terms mutually agreeable between such individual and the College.

For purposes of this Patent Policy, “College Employees” will include (a) all faculty, staff and other persons receiving compensation from the College for services rendered, whether full time or part time, and (b) students, and student workers, whether compensated or not.

Policy


Disclosure

College Employees shall cooperate with the College by promptly furnishing to the chairperson of the Montgomery County Community College Committee for Patent Policy (the “Committee”) a written report of any and all Inventions, promptly after they are conceived or first actually reduced to practice, whichever is earlier (“Disclosure”). Disclosures shall be in writing and shall be signed by each individual or entity that participated in the development, creation or discovery of the Invention. Disclosures are required regardless of whether the Invention was developed, created or discovered in connection with College matters.

Ownership of Inventions

  1. Subject to Article III, Sections 3 and 4 below, College Employees shall be entitled to own all right, title and interest in and to any Inventions which are developed (a) entirely on their own time, (b) outside the scope of their employment with the College (or otherwise having nothing to do with College matters in the case of students, and assistants), and (c) which involve only incidental use of College resources. “Incidental use” of College resources means normal use of resources that are generally available to all faculty, such as provision of office or library facilities, and computers.

    If ownership of an Invention is claimed by a College Employee, the College Employee shall so claim in his or her Disclosure to the Committee. If any dispute should arise over the ownership of an Invention, the College Employee shall be responsible for demonstrating to the Committee that the Invention meets all of the elements set forth above.

    When right, title and interest in and to an Invention are claimed by a College Employee and acknowledged and agreed upon by the College, or the College waives its ownership of such Invention, the College shall not assume any responsibility for any costs, expenses or liabilities relating to patent prosecution, maintenance, enforcement or licensing with respect to the Invention.

    Any College Employee who is entitled to all or any part of the ownership interest in an Invention may petition the Committee to accept, on behalf of the College, the assignment of that ownership interest and the responsibilities associated with that ownership interest. The Committee is under no obligation to accept any such assignment, but shall evaluate the College Employee’s petition in view of the objectives of this policy and the College.

  2. Subject to Article III, Sections 3 and 4 below, the College shall be entitled to own all right, title and interest in and to any and all Inventions that do not meet all of the elements set forth in Article III, Section 1. above. College Employees shall, upon request, assign to the College all of their right, title and interest in and to any such Inventions and shall make known and available to the College all documentation and other materials related to the same, but failure of the College Employees to make such assignments shall not limit the College’s rights in such Inventions.

    The College shall assume all responsibility for all costs, expenses and liabilities relating to patent prosecution, maintenance, enforcement and licensing with respect to such Inventions. As provided in Article IV, Sections 2 and 3 of this Patent Policy, the College may elect to waive its ownership interest and transfer it to the College Employee. Where such a waiver occurs, the College shall incur no further costs or expenses and shall assume no liabilities relating to such Invention.

  3. The ownership of Inventions arising from research financed by the United States government and its commissions, agencies and other administrative, legislative and judicial bodies (“Government Inventions”) will be governed by the terms of the applicable grant or contract. Within thirty (30) days of the Disclosure to the College of a Government Invention, the College shall report the Government Invention to the appropriate government agency for definition of the government’s rights and interests. In cases where the government claims no patent or other ownership rights in a Government Invention, or waives such rights, the College’s Patent Policy will govern the ownership of such Government Invention, subject to such limitations as the government may impose by contract, law, rule, regulation or otherwise.
  4. Inventions resulting from research or other work sponsored by non-governmental agencies shall be governed by the terms of the research agreement entered into in connection therewith, and if there is no such agreement, by the College’s Patent Policy.
  5. All disputes relating to the ownership of an Invention shall be resolved by the Committee.

Montgomery County Community College Patent Policy Committee

  1. The Ad Hoc Committee shall be responsible for all aspects of this Patent Policy to the extent set forth herein. The Ad Hoc Committee shall consist of the following individuals.
      • Vice President of Information Technology
      • Vice President for Academic Affairs and Provost
      •  One Faculty member from each Division
      • Vice President for Administration and Finance
  2. A Patent Policy Chair will be elected by the members of the Committee in accordance with procedures to be established by the Committee.
  3. The Committee will meet on an ad hoc basis when it is determined by the Patent Policy Chair or by a majority of the members of the Committee that there are matters that require deliberation.
  4. Upon the Committee’s receipt of a Disclosure from or on behalf of a College Employee, the Patent Policy Chair shall promptly disseminate a copy of such Disclosure to all members of the Committee and convene a meeting of the Committee. The Committee will conduct a thorough evaluation of the Invention disclosed by the College Employee, either through an internal review or by referral to an external party, in the sole discretion of the Committee. Following the completion of the evaluation process and the acceptance of the resulting report by the Committee, the Committee shall notify the College Employee in writing whether or not the College intends to claim ownership of the Invention in the name of the College. Absent extenuating circumstances, the Committee will complete its evaluation process within three (3) months of the Committee's receipt of the Disclosure (four (4) months in the event the Disclosure is made during the summer months). In the event that the Committee does not complete the evaluation process within such three (3) or four (4) month period, as the case may be, and such failure continues for thirty (30) days from notice of such failure by the person delivering the Disclosure, then the Committee shall be deemed to have waived the College’s right to claim ownership.
  5. If the Committee elects to claim ownership of the Invention in the name of the College, the College may, at such time and in its sole discretion, prepare, file and prosecute a patent application with respect to such Invention or take such other action as it deems necessary or desirable in connection therewith. In the event the College elects not to file and prosecute a patent for any reason whatsoever or fails to begin such process within three (3) months of making its determination of ownership pursuant to Section 2 of this Article IV, then the College shall have been deemed to have waived its ownership of such Invention and shall, upon request, assign its rights in such Invention to such College Employee.
  6. If the Committee determines, in its sole discretion, that the College should not or is not entitled to claim ownership of the Invention, the College Employee shall then be free to dispose of the Invention in his or her discretion. At the College Employee's request, the College shall assign to such College Employee all of its right, title and interest in and to any such Invention.
  7. If the Committee determines that the College is entitled to claim ownership of an Invention, the Committee shall seek to maximize the public utility of such Invention. To this end, the Committee, for and on behalf of the College, may enter into one or more exclusive or non-exclusive license, sale or other agreements, in its sole discretion.
  8. College Employees may appeal any decision of the Committee to the President of the College.
  9. Not withstanding anything to the contrary, if the Committee desires to file a patent application or otherwise take any action in connection with an Invention which involves anything other than an incidental expense to the College, such action shall require approval in writing of the President of the College upon recommendation from the Committee.

Income Distribution

  1. All income derived from Inventions determined to be owned by the College Employee pursuant to Article IV shall belong to the College Employee.
  2. All income derived from Inventions determined to be owned by the College pursuant to Article IV shall be distributed in accordance with the following procedure.
    • The College shall first deduct any costs and expenses incurred by it or on its behalf in connection with the patenting, licensing and marketing of the Invention. Any such costs or expenses incurred by the College Employee with the prior written approval of the College will also be deducted and paid to the College Employee. The resulting income following these deductions shall be referred to as “Net Income”.
    • From the Net Income, the Committee shall deduct and withdraw 20% of the funds for future operations and unrecovered marketing costs (the “Patent Fund Charge”).
    • The sum remaining after the removal of the Patent Fund Charge shall be referred to as the “Divisible Income”. The Divisible Income shall be divided in the following manner: (a) the College Employee will receive 50% of the first $100,000 of Divisible Income and 25% of the excess Divisible Income over $100,000, and (b) the remainder of the Divisible Income shall be distributed by the College in accordance with the following schedule.
      • 10% to the College Employee’s program, if any;
      • 30% to the College Employee’s Department/Division at the College;
      • 30% to the College’s Office of Academic Affairs; and
      • 30% to the general fund of the College.