Patents and Copyrights

[The following was approved on July 10, 1992, with amendments on September 18, 2002, in accordance with provisions set forth in SIU Board of Trustees 2 Policies C.3.h.]

Southern Illinois University Carbondale encourages its faculty and staff to undertake research and other scholarly and creative endeavors and assumes responsibility for promoting a research program. Basic policies of the university support freedom of research and unrestricted dissemination of information. Research and other scholarly activities that produce and disseminate new knowledge are an important part of the work of a comprehensive senior and graduate-level institution. It is the philosophy of SIUC that these activities always reflect their intrinsic relationship to the mission of the institution.

The university is responsible to itself and to the public for the kinds of research it sponsors and for obtaining the greatest public benefit from such research. The university policy regarding patents and other developments from research encourages maximum public benefit and encourages faculty members to promote the patentable, marketable, and copyrightable results of their research. All faculty and staff members are required by the conditions of their employment to abide by the university policy on patents and copyrights.

A University Patent and Copyright Committee, appointed by the Provost and Vice Chancellor, and a School of Medicine (Springfield and Carbondale) Patent and Copyright Committee, appointed by the Dean and Provost of the School of Medicine, exist to review and make recommendations for the disposition of patents and copyrights. The locus of faculty and staff primary appointment is the basis for determining which committee has authority.

The Policy on Patents and Copyrights concerning patentable inventions and discoveries and copyrightable materials that accrue from research and other scholarly and creative activities conducted by faculty and staff members is as follows:

  1. If it meets the criteria detailed in sections 2 and 3 below, any patentable invention, product, process, or discovery or any copyrightable material developed by an employee of the university belongs jointly to the university and the inventor(s)/author(s), but shall be used and controlled in the sound discretion of the university in ways that will produce the greatest benefit to the university and to the public. All employees are required to report any such invention, discovery, etc., and the university will determine the disposition thereof, in the manner set forth below.
  2. The criteria for patentable inventions, products, processes, or discoveries include anything a) developed within the scope of an employee's duties at this university; b) developed in whole or in part by the use of university facilities or resources; c) developed as the result of efforts carried on by, or under the direction of, any employee, student, or other user of university facilities; or d) developed in part or in full from university funds or from funds under the control of or administered by the university.
  3. The university shall not place any claim or restriction on any copyright resulting from scholarly activity, with the exception of material produced under specific written contract with the university. Material produced under specific written contract means any material which a faculty or staff member is specifically assigned or directed to produce as part of his or her employment responsibilities with the university. These copyrightable materials may include but are not limited to a) textbooks, workbooks, articles, and other forms of literary matter; b) dramatic works and materials; c) educational television/radio programs and works in such other media as films, videotapes, and recordings; d) musical compositions and visual art; e) tests and other measurement devices; and f) computer software.
  4. If an invention, product, process, discovery, or copyrightable material is otherwise developed by an employee of the university, it belongs to the employee. This would allow the inventor/author to pursue an individual patent or copyright or to pursue a joint patent or copyright with the university. In either case, detailed documentation should be kept by the inventor/author about when, where, and by whom the development occurred. Such documentation may be needed to establish the rights of the inventor/author to the invention, discovery, etc., as well as to pursue a patent or copyright.
  5. Inventions, products, processes, discoveries, and copyrightable materials covered by this policy must be reported by the inventor(s)/author(s) in writing either to the University Patent and Copyright Committee through the office of Research Development and Administration (ORDA), or to the School of Medicine (Springfield and Carbondale) Patent and Copyright Committee if the inventor/author is based in a Springfield or Carbondale department of the School of Medicine. The disclosure is made using the Patent and Copyright Disclosure form available from ORDA or from the School of Medicine Office of the Associate Dean for Research (OADR). The next higher university authority (usually the department chair) must be informed in writing by the inventor(s)/author(s) at the time the disclosure is submitted. Upon receiving the disclosure, the relevant committee shall review the related data based on the scientific, technical, and economic merit, commercial possibilities, and potential importance of the discovery, and the likelihood and desirability of seeking a patent or copyright. The committee shall make a recommendation on the disposition of the activity which will be forwarded to the Provost and Vice Chancellor or the Dean and Provost of the School of Medicine for final disposition.
  6. The Provost and Vice Chancellor or the Dean and Provost of the School of Medicine will determine the disposition of the discovery, invention, or material. Such disposition may include, but is not limited to, the following options: a) release to the inventor/author, b) retention by the university for development, licensing, etc., or c) release to the individual or agency sponsoring the project in the course of which the invention, discovery, or material was made. Any decision to retain the invention, discovery, or material may be reconsidered by the Patent and Copyright Committee based on further developments following the above delineated procedures. The inventor(s)/author(s) should be notified within 6 months of the university's decision. Should the university fail to notify the inventor(s)/author(s) within the six-month period, the university shall relinquish all claims.
  7. Grants/contracts between the university and any other agency shall, whenever feasible, state clearly the obligations and rights of the university and of the cooperating agency, and the procedure to be followed should the activity result in patentable discoveries or copyrightable materials. It should be noted that grants from various agencies frequently require the agency's prior approval of the terms and conditions of patent and copyright agreements dealing with the development and dissemination of products resulting from activities performed under the grant/contract. In such cases, the university shall negotiate with the sponsoring agency about future patent rights, copyrights, and licensing agreements. Situations not specified in the agreement with the sponsoring agency will be subject to the university policy.
  8. If income is received by the university from any patent or copyright, all costs of procuring, developing, and administering such patent or copyright shall first be paid from such income. All income in excess of such expenses shall be shared equally by the inventor/author and the university, unless otherwise agreed in writing. If the university uses a marketing or management firm or other intermediary in procuring a patent, copyright, or license, the distribution of income/royalties shall be established by an agreement between the university and the intermediary firm. After all expenses have been paid, including those paid to any marketing or management firm or other intermediary, the income will be evenly divided between the university and the inventor/author. Multiple inventors/authors sharing in income shall decide among themselves how their share is to be divided, with the stipulation that the inventors/authors shall divide one share and the university will receive one share.
  9. If the university elects to retain ownership in an invention, product, process, discovery, or material, then the university or its designated agent shall assume primary responsibility for protecting and/or promoting property rights to inventions/materials covered by the policy, with the consultation of the inventor(s)/author(s).
  10. If the university elects to retain ownership, the inventor(s)/author(s) shall supply on a timely basis all information and execute all papers necessary for preparing and/or presenting patent and copyright applications or licensing agreements on inventions/materials covered under this policy and to assign interests therein to the university.
  11. Any controversy or claim arising out of this statement of policy, or an agreement between the inventor(s)/author(s) and the university delineating individual and university rights, claims, and responsibilities, or the breach thereof, shall follow the internal grievance procedures of the university. If no agreement results from internal grievance procedures, arbitration shall be sought in accordance with the rules of the American Arbitration Association.