PSU will provide a proactive waiver of ownership for non-work related inventions, but these must first be disclosed to IIP and go through the waiver process.
The IMD states that the university’s rights in an invention can be waived if it is determined that the invention is not related to work or an assigned project and that the development of the invention used no or minimal use of institutional funds or facilities (IMD 6.215). In order for the preceding to apply, no external or internal funding through the university can have been used. If this is the case, a statement can be issued which waives any institution or Board claim on the invention.
In order for this statement to be issued, however, the institution must first know about the invention and go through a waiver process to document the determination. Therefore, even if an employee has an invention that was made outside of work responsibilities and with no or minimal use of institution resources (and NO university funding, internal or external), PSU requires that the employee disclose that invention to IIP so the waiver of the board’s rights can be determined and documented. Despite the hassle, this is actually a benefit to the employee inventor, as it can proactively clear up the questions of ownership of an invention.
PSU may waive work-related inventions, but these must first be disclosed to IIP and go through the waiver process.
If PSU determines that a disclosed invention is incidental to the employee inventor’s work assignment, or that PSU has no interest in an invention, and decides to forego patenting of an invention, then PSU may at its discretion complete a waiver process to waive its rights to such an invention (IMD 6.215, 6.235). In this case, if the invention was funded by a federal funding agency, PSU would waive the rights back to the funding agency and the employee inventor would need to petition the agency to have the rights returned to them.
Waiver of PSU Patent Ownership Back To Inventors
According to policy and PSU guidelines, PSU employees must disclose to IIP all inventions created by them while employed by PSU, and PSU employees (and in some cases students) will be required to assign ownership of most of their inventions to the State of Oregon. Most if not all, however, and there are instances where after disclosure of an invention PSU can proactively waive the state’s rights to that invention back to the inventor.
There are two general cases where this might be true. First, when an inventor feels that the invention was made outside of and unrelated to their work assignment and without the use of institutional resources, and second, when PSU decides not to pursue a patent on an invention that it would otherwise own, and the inventors wish to pursue it on their own.
The waiver process, in either case, is as much for the inventors’ protection as to follow state policy. A lack of clarity about the ownership chain of a patent can severely derail its later value to an outside business or faculty start-up, and having a clear waiver of states rights can prevent this pitfall.
Waiver to inventions not owned by the state
To request a finding that any particular invention does not belong to the state, the inventor should submit a request to IIP prior to filing any intellectual property protection, or signing any documents provided by third parties. The request should include:
- Description of the invention in sufficient detail that it can be identified later if filed by the inventor or a third party, and be identified as distinct from other intellectual property.
- Description of how the invention was developed.
- An explanation of why the invention should not be owned by the state under policy.
Answers to the following questions will be important in evaluating any request:
- Where was the intellectual property developed?
- What funding was used?
- When was the intellectual property developed – beginning, middle & end?
- What is the current stage of development of intellectual property?
After a complete request is received by IIP, it and any relevant information are forwarded to the appropriate Chair(s) and Dean(s) for review. After discussion with these and any other applicable university officials, the request is reviewed by the Vice President for Research and Strategic Partnerships. A letter will finally be sent to the requestor(s) with either a waiver and relevant conditions, or a denial and its reasons.
The waiver will only be for the exact invention described in the invention disclosure and/or request for a waiver, and not for any improvements or new inventions to be included in follow-on patent applications. Each new invention must be waived as they are made and before they are filed.
Waiver to inventions not pursued by the state
After an invention disclosure is made to IIP, we sometimes decide not to pursue patent protection on it. Occasionally we will cease pursuing patent protection on an idea for which we had already started the patent process. The decision is usually based on the maturity of the technology, industry feedback, resources at hand to further develop the technology, and of course the overall likelihood that a patent will be a good tool for increasing the impact and promoting the use of the underlying innovation. In most cases, we reach this decision with the consensus of the inventors, faculty, or research group. However, situations may arise when inventors wish to continue to pursue patent protection even after PSU has made the decision not to pursue it.
In these cases, at the inventors’ request, PSU can waive the state’s ownership. If the invention was made with federal funding, PSU’s waiving ownership will first cause ownership to revert to the funding agency. The inventors will then need to request that the funding agency waive ownership back to them.
When the inventors have gained ownership, they are free to pursue patent protection at their own expense. Unfortunately, the state policy still says that when the patent is licensed or otherwise exploited after the inventors recoup their own costs and retain the first $10,000 of royalties, the remainder of the net royalty income is split equally with the State.