PATENT AND COPYRIGHT POLICIES
OF THE
MEDICAL COLLEGE OF WISCONSIN
2.12 B. Patent Policy
Introduction
In a research oriented, educational institution such as the Medical College of Wisconsin, new knowledge is generated continuously and new technologies such as products, devices, processes and chemical compositions are often developed. The Medical College of Wisconsin is committed to the migration of this knowledge into the clinical arena, often through protection of intellectual property and commercialization of technologies developed at MCW. With these objectives in mind, MCW personnel, including faculty, administrative officers, employees, and students should understand their rights, opportunities and responsibilities concerning the generation of new knowledge and development of new technologies. Students referred to in this policy statement shall be only those medical and graduate students and postdoctoral fellows who are pursuing a scientific endeavor under the direction of MCW personnel.
The Medical College of Wisconsin encourages and facilitates the protection and commercialization of technologies and inventions (hereinafter technologies and inventions are termed Discoveries) made by its personnel during the course of their employment or association with the College. For this purpose, it is MCW policy that all such Discoveries shall be assigned to the MCW Research Foundation, Inc., except as permitted under a signed consultants agreement or other agreement approved by MCW. The MCW Research Foundation is a not-for-profit Wisconsin corporation organized for educational and charitable purposes. Its functions are to manage MCW intellectual property, transfer technologies from research and educational programs to the commercial sector, and use this commercialization pathway to promote and assist scientific investigations by MCW personnel.
MCW personnel shall report their Discoveries to the MCW Research Foundation on the Discovery Record and Report Form. Individuals who are not MCW personnel may assign their discoveries to the MCW Research Foundation by using the form Assignment of Invention to MCW Research Foundation. It is the policy of the Medical College that personnel who make Discoveries participate with the MCW Research Foundation in any income obtained from the licensing or sale of such Discoveries. If the MCW Research Foundation elects not to pursue any Discovery, then the rights to that Discovery will be returned upon request to the discoverer to develop as he or she sees fit. When rights to a Discovery are returned, the MCW Research Foundation retains a royalty free, irrevocable, world-wide license to use the Discovery and any patent which may be issued relating to or incorporating the Discovery in the research, educational and clinical programs of the Medical College of Wisconsin. To preserve patent rights it is important that the MCW Research Foundation be informed well before the first publication or public disclosure or use of the Discovery. No foreign patents are obtainable on Discoveries that have been publicly disclosed, and no United States patents are obtainable on Discoveries that have been publicly disclosed for a period of more than one year.
Prior Right of Sponsors
Discoveries made by MCW personnel may be subject to the prior rights of extramural sponsors such as Federal agencies, health and medical foundations, and private industry. Some sponsors require all rights to Discoveries developed under sponsored projects be assigned to them, while others require a royalty-free license. In every case in which the Medical College is a party to a grant or contract, MCW and all MCW personnel involved in the research relating to the grant or contract have a responsibility to comply with the terms of the grant or contract.
The Medical College must be fully informed regarding any Discoveries so that it can ensure that all obligations under any contract or grant are met. Every Discovery made by MCW personnel, regardless of the source of support, should be reported at the earliest opportunity to the MCW Research Foundation. The Foundation will review the financing and any contractual obligations related to the Discovery. If an obligation to a sponsor is found, the compensation which the discoverer receives for assigning intellectual property or granting a license will generally be determined solely by the terms of the contract with the extramural sponsor. In instances in which there is conflict between the policies of the Medical College and those of a sponsor, the MCW Research Foundation will negotiate with the sponsor in an effort to resolve the conflict.
Evaluation Procedure
The potential value of the Discovery shall be determined by the MCW Research Foundation, or in some instances by a technology advisory committee. The technology advisory committee will be convened and chaired by the Research Foundation Executive Vice President. The committee shall consist of members who are deemed knowledgeable in the technological or market area toward which the Discovery is directed.
When the technology advisory committee is convened, a description of the Discovery will be sent to the committee for evaluation. The committee may meet with the discoverer to discuss the Discovery and its suitability for patenting and sale or licensure, and the committee's recommendations will be acted on by the Executive Vice President and the Director of the MCW Research Foundation.
If the MCW Research Foundation fails to actively pursue the Discovery, the discoverer may make written request for return of the Discovery rights. In such case, all rights to the Discovery will revert to the discoverer and the MCW Research Foundation, upon request of the discoverer, shall execute a written release or reassignment to that effect. The return of rights to the discoverer may be subject, however, to the rights of the third parties, including extramural sponsors.
Once the rights to a discovery have been reverted to a discoverer, the MCW Research Foundation retains only the royalty free, irrevocable world-wide license to use the Discovery and any patents issued relating to or incorporating the Discovery in the research educational and clinical programs of the Medical College of Wisconsin. The MCW Research Foundation has no further obligation to prosecute patents with respect to the Discovery.
Assignment of Discovery
Commercialization of Discoveries developed at the MCW heightens the identity of the College and contributes to improved biomedical research and patient care. It also provides revenue to the MCW Research Foundation. This revenue is shared among the discoverer, the discoverer's department, and the MCW Research Foundation.
If the MCW Research Foundation elects to pursue an MCW Discovery, title to the Discovery will be assigned to the MCW Research Foundation. In exchange, the MCW Research Foundation will pursue or arrange for payment for appropriate legal protection for the Discovery, and will make a best effort to sell or license the Discovery to third parties. For an assigned discovery, the author retains the right to use the discovery for his or her academic research purposes.
Patent Expenses
With regard to all Discoveries assigned to the MCW Research Foundation:
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(A) |
The MCW Research Foundation will initiate and bear the expense of preparing patent applications and prosecuting them in the U.S. Patent Office. However, the MCW Research Foundation may, at its discretion and at any time, elect to abandon further efforts to obtain patent protection, and if the Discovery has not been licensed it may be reassigned to the discoverer. The discoverer is then free to exploit the Discovery and continue its prosecution in the U.S. Patent and Trademark Office. However, the Discovery will still be subject to the prior rights, if any, of the extramural sponsors and the royalty free irrevocable license of the MCW Research Foundation to use the Discovery.
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(B) |
If a patent application involves more than one discoverer, the discoverer(s) named in the application must furnish to the MCW Research Foundation a signed declaration and a jointly signed agreement setting forth the basis upon which any royalty income due the discoverer(s) will be distributed. In the event the co-discoverers cannot agree upon royalty distribution, such distribution will be in equal shares to each discoverer.
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(C) |
Upon receipt of income by the MCW Research Foundation on any Discovery, the Foundation's 15% overhead costs and legal expenses incurred in preparing, securing, maintaining, licensing and defending the proprietary rights in the Discovery, and, with the consent of the investigator(s), consulting fees, travel, or other out-of pocket Foundation costs associated with reviewing, protecting, and marketing the Discovery, shall be deducted before any income is distributed. Distribution of net income (total income less Foundation costs and legal expenses) will be made no less frequently than annually. The MCW Research Foundation will distribute the net income to the discoverer(s) as follows:
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(1) |
Fifty percent (50%) of the first $5,000 of net income received; |
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(2) |
Twenty-five percent (25%) of the royalty income in excess of $5,000.
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(D) |
The portion of any net income remaining after distribution under paragraph (C) shall be distributed as follows:
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(1) |
One-third (33 1/3%) shall be deposited in a research account of the Medical College department in which the discoverer(s) hold(s) a primary faculty appointment. Where a Discovery is the product of collaborative activity among personnel in two or more departments, the share of net income is distributed according to the agreement established under paragraph (B), and |
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(2) |
Two-thirds (66 2/3%) shall be assigned to the MCW Research Foundation to be used for its general operating expenses and for educational and research activities.
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(E) |
In the event of the death of a discoverer, net income accruing thereafter during the life of the patent shall be distributed to the heirs or assignees of the discoverer. |
Royalty Distribution
There may be circumstances in which a Discovery does not result in an issued patent or in which non-patentable trade secrets or copyrights have marketable value. Despite the lack of patent protection, such marketable innovations may still be sold or licensed to third parties.
The procedures applicable to patented Discoveries, as outlined in this Policy, shall so apply to such non-patented but marketable innovations. Similarly, the manner in which royalty income is distributed for patented Discoveries, as outlined in this Policy, shall also apply to such non-patented but marketable innovations.
Contracts with Third Parties
Unless the rights to a Discovery revert or are reassigned to the discoverer as described in this Policy, neither the discoverer nor any other MCW personnel may enter into any contract in which rights to Discoveries are assigned or licensed to another party except as permitted in this policy. After reversion or reassignment, the discoverer may assign, license or otherwise enter into any contract with any third party relating to the Discovery provided that any such assignment, license or contract shall remain subject to the royalty free, irrevocable license of the MCW Research Foundation to use the Discovery.
2.12 C. Copyright Policy
The Medical College of Wisconsin encourages its personnel (including faculty, administrative officers, administrative and classified staff and students) to author copyrightable works. Such works may include research papers, articles, books and other literary works, computer programs and related materials, audiovisual, sound, pictorial, graphic and sculptural works, and electronic instructional materials for on- and off-campus use. These works, which represent original forms of expression that have been reduced to tangible form, should be copyrighted to protect them from indiscriminate copying and use.
The MCW Research Foundation is responsible for implementing this copyright policy on behalf of the Medical College. Personnel should consult with the MCW Research Foundation regarding the application of this policy to any specific situation.
Copyrightable works created by MCW personnel will generally fall into one of the five following categories.
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(1) |
Employee Works |
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Works which are the direct product of an employee's work at MCW are the property of the MCW Research Foundation. Such work is to be copyrighted in the name of the MCW Research Foundation. In most circumstances scientific papers, reviews, presentations, books and treatises do not fall within this definition and shall be the property of the author.
Where circumstances warrant, due to practical financial considerations or other contractual responsibilities, the copyright assignment to the MCW Research Foundation may be waived by the MCW Research Foundation Executive Vice President upon petition.
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(2) |
Sponsored Works |
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Works which are created by an author with the support of outside sponsorship shall be governed by the terms of the contract with that sponsor. In the absence of such provisions, the works shall be construed to be the property of the MCW Research Foundation and shall be treated as an Employee Work as described above
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(3) |
Commissioned Works |
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A work initiated at the request of the Medical College of Wisconsin or initiated by an author and supported by MCW funding granted specifically for the purpose of generating such work, shall be considered to be a work for hire, and the copyright shall be in the name of the MCW Research Foundation. These works may, for example, include computer software, audiovisual works, graphic works, certain literary works and electronic course materials. The author has the right to use such works for his or her own pedagogical purposes at the Medical College of Wisconsin or at academic institutions where he or she may be subsequently employed.
Where circumstances warrant, due to practical financial considerations or other contractual responsibilities, the copyright assignment to the MCW Research Foundation may be waived by the MCW Research Foundation Executive Vice President. In most circumstances, such waiver shall be granted to an author who wishes to publish parts of a work in a scientific paper or book.
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(4) |
Contributed Works |
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Works which are created by an author as a product of creative professional effort, but which fall outside (1)-(3) above, may be copyrighted by the author or by a third party under contract with the author. Even though the copyright for a work may properly lie with an individual author, such author may elect to submit the work to the MCW Research Foundation. If the MCW Research Foundation accepts such a contributed work, the distribution of revenue from sales of the work shall follow that described for copyrightable works (see next section).
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(5) |
Personal Works |
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Works which are not considered for faculty promotion and/or tenure, or for the advancement or promotion of other staff shall be considered personal works. Copyright and sale of such works shall be the personal responsibility of the author.
An author of a potentially copyrightable work should complete the MCW Research Foundation Copyright Memorandum Agreement form and transmit it to the MCW Research Foundation (copy attached). This form should include the names of all individuals contributing to the work, including students. The MCW Research Foundation will make the initial determination into which of the above categories the particular work falls. In the event the author finds such determination unacceptable, the author may appeal to the President of the Medical College of Wisconsin who shall then decide the appropriate category for the work. The decision of the MCW President shall be final.
If the MCW Research Foundation agrees to accept responsibility for the copyrightable work, regardless of its origin or character, the MCW Research Foundation will make a best effort to sell or license that work to third parties. The MCW Research Foundation shall pay all expenses associated with copyright registration, licensing and enforcement of the copyright. However, the MCW Research Foundation may at any time elect to abandon further efforts regarding copyright protection or enforcement.
If a copyrightable work includes contributions from individual or organizations other than the Medical College of Wisconsin, the MCW Research Foundation should negotiate with these individuals or organizations to ensure that the interests of all concerned are fairly represented.
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Revenue Distribution for Copyrightable Works
With respect to any copyrightable works which the MCW Research Foundation sells or licenses in exchange for revenue, the following shall apply:
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(A) |
If a work involves more than one author, or if a single author or more than one author wishes to share revenue with non-author colleagues, the author(s) named in the work must furnish to the MCW Research Foundation a jointly signed document setting forth the basis upon which any revenue due to the author (s) will be distributed by the MCW Research Foundation. In the event the co-authors cannot agree upon revenue distribution, such distribution will be made in equal shares to each author.
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(B) |
Upon receipt of income by the MCW Research Foundation on any such work, administrative costs of the Foundation, and expenses incurred in preparing, securing, maintaining, enforcing and defending the proprietary rights in the work, shall be deducted before any income is distributed. Thereafter, the MCW Research Foundation will distribute the income to the author(s) as follows:
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(i) |
Fifty percent (50%) of the first $5,000 of revenue; |
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(ii) |
Twenty-five percent (25%) of the revenue in excess of $5,000.
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Income distribution will be made no less frequently than annually.
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(C) |
The portion of any revenue remaining after distribution under paragraph (B) shall be distributed as follows:
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(i) |
One-third (33 1/3%) shall be deposited in a research account of the Medical College department in which the author(s) held an appointment at the time the work was authored. Where a work is the product of collaborative activity among personnel in two or more departments, the share of revenue specified in this sub-section shall be apportioned among the departments involved on the same basis as the author's share of revenue is distributed under paragraph (A); and |
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(ii) |
Two-thirds (66 2/3%) shall be retained by the MCW Research Foundation to be used for its operating expenses and for educational and research activities.
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(D) |
In the event of the death of an author, the author's share of royalties accruing thereafter during the life of the registration shall be distributed to the heirs or assignees of the author. |
Contracts with Third Parties
Unless the rights to a Work revert or are reassigned to the author as described in this Policy, neither the author nor any other MCW personnel may enter into any contract in which rights to the Work are assigned or licensed to another party except as permitted in this policy. After reversion or reassignment, the author may assign, license or otherwise enter into any contract with any third party relating to the Work provided that any such assignment, license or contract shall remain subject to the royalty free, irrevocable license of the MCW Research Foundation to use the Work.
Overlap with Patent Protection
Certain computer-related materials such as computer and information management software, and electronic instructional materials may be suitable for either patent or copyright protection. In cases where the College's Patent Policy differs from the College's Copyright Policy, all patent and copyright ownership rights (and rights to distributed revenue) to computer-related materials shall be governed by this Copyright Policy, regardless of whether patent protection is obtained or sought on such works.
Copyright © 2001, Medical College of Wisconsin
All Rights Reserved.
Last Update: April 21, 2006