Intellectual Property: Inventions and Patents

Scope

This Policy applies to Intellectual Property created by Covered Individuals in the area(s) of activity for which the University employs, appoints, or contracts with them. This Policy will supersede and replace UA-05, Intellectual Property Policy at the effective date. This policy only applies to inventions and patents. The new royalty distribution rates and distribution will only apply to arrangements and contracts taking place after the effective date. A separate policy (UA-23, Intellectual Property: Copyrightable Works) applies to copyrightable intellectual property.

Covered Individuals are:

1. All full- and part-time employees of the University, including all faculty, all academic appointees, and staff.
2. All full- and part-time students including volunteer students, work-study students, and students that are University employees.
3. Individuals receiving an appointment within the University, whether or not they are considered University employees and whether or not their appointments involve compensation (for example, adjunct faculty and visiting faculty and scholars).
4. All other individuals who create Intellectual Property in whole or part in connection with (a) a contractual relationship with the University or (b) a contracted Sponsored Activity.

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Policy Statement

1. Through delegation by the President, the Vice President for Research (VPR) will administer this Policy through the Innovation and Commercialization Office (ICO).
2. The VPR will appoint a Patent Policy Council (“PPC”) composed of members representative of the entire University to review and advise on inventions and patents, Intellectual Property issues, and this Policy. The PPC members shall generally serve a three (3) year term that may be renewed.  The PPC shall advise the VPR and ICO on all matters relating to this Policy.   
   
   The Patent Policy Council shall consist of:
   1. Six faculty members, selected as follows:
      1. two faculty members appointed annually—one by the IU-Indianapolis Faculty Council Executive Committee and one by the Bloomington Faculty Council Executive Committee;
      2. one faculty member from a regional campus shall be appointed annually by the University Faculty Council Executive Committee;
      3. two at-large faculty members appointed by the University Faculty Council Executive Committee, in consultation with the Vice President for Research;
      4. a faculty chair appointed and designated by the Vice President for Research; and
   2. The associate deans for research or their designee from the School of Medicine, and three other schools/colleges.
   3. Two staff employees, designated by the Vice President for Research.
   4. Two students: one undergraduate student and one graduate student appointed and designated by the Vice President for Research.   
      
      To best meet the needs of the University, the VPR may use reasonable discretion to modify both the number of members and composition of the PPC.
      
      
3. The Innovation & Commercialization Office (“ICO”), designated by the VPR, is the office responsible for the protection and commercialization of Patentable Intellectual Property. ICO will establish operational guidelines and procedures, subject to the terms of this Policy and any related policy, for the administration of Patentable Intellectual Property. This will include, but is not limited to, presiding over the Patent Policy Council (PPC); receipt, investigation and analysis of Intellectual Property disclosures; determination of ownership, assignment, protection, release of rights, licensing, marketing, maintenance of records; oversight of revenue collection and distribution; maintaining an inventory of inventions and patents; and writing annual reports on activities.
4. Ownership of Intellectual Property.
   1. Ownership by University. All right, title and interest in and to any Patentable Intellectual Property (1) which is the result of research carried on by or under the direction of a Covered Individual and/or having the costs thereof paid from funds provided by, under the control of or administered by the University, or (2) which is made by a Covered Individual under the scope of their University responsibilities  or (3) which has been developed in whole or in part by a Covered Individual with the utilization of University Resources or facilities belonging to the University, is the sole property of the University (“University Intellectual Property”).
   2. Intellectual Property created by students while completing a course or other academic program in which they participate, whether for credit or not for credit, is not University Intellectual Property and is owned by the student unless the student is taking the course in connection with their work under an employment agreement, contract, or Sponsored Activity with the University, or is volunteering in a University activity or University-related activity that leads to the creation of Intellectual Property. 
   3. Assignment of Intellectual Property. As a condition of their employment or appointment, continued employment or appointment, enrollment with the University, or participation in a Sponsored Activity, each Covered Individual is bound by this Policy.  All Intellectual Property that meets the criteria of University Intellectual Property as set forth in this Policy is hereby assigned to the University. Covered Individuals are bound by this Policy and thereby automatically, presently, and irrevocably grant and assign to the University all rights, title, and interests that they may have in such Intellectual Property. Each Covered Individual shall promptly execute such assignments and any other documents required, as determined from time-to-time by the VPR or his/her designee. The University owns and shall have the sole right to determine the disposition of University Intellectual Property under this Policy.  Covered Individuals do not have the authority to assign rights in such Intellectual Property to third parties.
   4. University Assignment of Intellectual Property to Inventor(s). The University, after review, may fully assign to the inventor(s) Intellectual Property the University so chooses not to manage or pursue. 
   5. Conflicting Agreements. It is understood that many research contracts, grants, and consulting agreements from or with the United States Government or its agencies, for profit and not-for-profit entities, or individuals contain provisions regarding ownership of Intellectual Property that may be at variance with this Policy, but which, if agreed to, require compliance. Notwithstanding any other provision in this Policy to the contrary, nothing in this Policy will be construed to limit the University from entering into specific written agreements with any faculty, staff, or students or with any third party (including in connection with sponsored research or Sponsored Activities) that will specify different terms regarding the ownership, distribution, and commercialization of Intellectual Property. Such an agreement will supersede the terms of this Policy if:
      1. The Inventor(s) is a party to such an agreement; or
      2. The Inventor(s) explicitly or implicitly consented to the terms of such an agreement prior to the creation of the Intellectual Property. Without limiting the generality of the foregoing, a decision of an Inventor to develop Intellectual Property when the Inventor knows, or should know, that such Intellectual Property is subject to an agreement will be considered consent to that agreement. However, continued employment or affiliation with the University is not, by itself, sufficient to establish consent as required by this section.
5. This Policy, as amended from time to time, shall be deemed a condition of employment, both while employed and thereafter, of every employee of the University, including student employees. University Intellectual Property remains University Intellectual Property regardless of whether a Covered Individual leaves the University or ceases working under a contract or Sponsored Activity.  This Policy shall continue to apply while Covered Individuals are on sabbaticals and other leaves and while they are engaged in Outside Activities.
6. With the exception of specific written agreements to the contrary, and without limiting the general disclosure obligations, nothing in this Policy will be interpreted to prevent any faculty, staff, or students from sharing the results of their research and other academic activities with others, including by publishing those results. Covered Individuals should however be aware that under certain circumstances disclosure can jeopardize the ability to secure a patent for an Invention and they are therefore advised to consult with ICO prior to any public disclosure.
7. Pursuant to this Policy, Covered Individuals shall promptly report to ICO, through an Invention Disclosure, any Intellectual Property which such Covered Individual has conceived, discovered, developed and/or reduced to practice by them or under their direction as Covered Individual, at any time following their initial appointment by or employment by the University. The VPR, through ICO, is authorized to further assign any Intellectual Property the University is deemed to own pursuant to this Policy, which said assignment shall be conditioned on full compliance with this Policy, regulations promulgated hereunder by the Board of Trustees or by the VPR and appropriate state and federal law.
8. The VPR, through ICO, shall have the sole right to evaluate any and all Intellectual Property owned by the University, and determine if and how best to develop, commercialize and protect the Intellectual Property as deemed appropriate, including, but not limited to, applying for Intellectual Property protection, requesting further development of the Intellectual Property, and/or determining the disposition of the Intellectual Property.  In making this determination, the benefits that might accrue to both the University and the Inventor(s) shall be considered.
9. In consideration of the automatic assignment of ownership set forth in this Policy, the VPR, through ICO, is authorized to distribute all Net Revenues from the transfer or commercialization of University Intellectual Property as follows, except as otherwise required by law or written agreement:  
   
   

   Percentage of Net Revenues	Entity Receiving the Net Revenue Distribution
   50%	To named Inventor(s) (or heirs, successors, or assigns) – to be split equally among multiple named Inventors unless they agree in writing to a different split.  If a named Inventor designates someone else to receive their portion, the named Inventor is responsible for complying with all tax laws and rules relating to that designation.
   35%	To University.  The University share shall be used by the VPR and IU Research to cover expenses of managing, and support further creation of University Intellectual Property.
   15%	To Campus unit(s) supporting the development of the University Intellectual Property.  This is normally the unit where the named Inventor(s) have their primary appointment(s).  Campus units should be disclosed on the Invention Disclosure.  In the case of disagreements, the VPR will be the deciding official.

10. ICO may negotiate equity interests or other non-monetary consideration in lieu of or in addition to revenue as part of an agreement with an external entity involving University Intellectual Property.  In such cases, the University shall own such equity interests or non-monetary consideration and no Covered Individual shall have an interest or legal right in them.  If the University, in its sole judgment, sells such interests or consideration, the University shall distribute the proceeds from the sale (net of the costs of the sale) as provided in this Policy.  The University does not act as a fiduciary for any Covered Individual regarding such interests or consideration.
11. Occasionally it may best serve the University’s mission to enter into agreements that involve exceptions to the terms of this Policy. Any such exceptions shall require the written consent of the VPR, after consultation with the Principal Administrators of directly affected units and schools and the named Inventor(s).
12. The terms of this Policy will apply in the event of a conflict or ambiguity relating to patentable inventions and other campus or department-specific policies.
13. The ICO may recommend that rights to certain University Intellectual Property be assigned or licensed to named Inventor(s) when the terms of an agreement do not prevent this and doing so is consistent with public interest.  Any such assignment or license must be approved by the academic/administrative units of the named Inventor(s) and must reserve appropriate rights for the University.  VPR will have final approval on such matters.
14. The ICO shall report all disclosures to the VPR and shall provide to unit Principal Administrators annual lists of disclosures relevant to their units.  The ICO shall assess all disclosures submitted to it in a timely fashion to determine next steps including whether the University should seek patent protection. The ICO shall promptly notify the named Inventor(s) of the results of its assessment.
15. Uncertainty or disagreement about whether any disclosed or undisclosed Inventions are University Intellectual Property shall be decided by the VPR in consultation with the general counsel’s office. These decisions are final and not appealable.  However, any Covered Individual may appeal any other matter, actions or decisions of the ICO or other administrators under this Policy to the VPR, who shall make a decision on the appeal within thirty (30) days.
16. This Policy shall comply with IC 21-36-5 effective July 1, 2024, to prohibit the transfer, licensing, or sublicensing of intellectual property created with Indiana University resources to ‘prohibited persons’ as that term is defined by IC 21-36-1-2.3.

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Definitions

Inventor: 35 U.S.C. 115 requires that a patent application filed under 35 U.S.C. 111(a) shall include the name of the inventor or inventors. 35 U.S.C. 100(f) defines the term “inventor” as the individual or, if a joint Invention, the individuals collectively who invented or discovered the subject matter of the Invention.

University Intellectual Property: All Intellectual Property owned by Indiana University as set forth in this Policy. 

University Resources: Funds, facilities, equipment, technology, personnel, and other support made available through the University to individuals covered by this Policy, other than incidental or insignificant use of office space and communication technologies.

Intellectual Property: Intellectual Property means property deriving from the work of the mind or intellect, including but not limited to:  all Invention Disclosures, Patentable Intellectual Property, Research Data, Tangible Research Property or other property produced in the course of research, and/or plant variety protection certificates.

Patentable Intellectual Property: Inventions, discoveries, and manufacturing designs, including software, that have been conceived or first actually reduced to practice, and are novel, useful, and non-obvious, including any associated patent applications or patents. 

Tangible Research Property: Items produced in the course of research, such as compositions, biological materials, drawings, devices and equipment.

Research Data: The recorded factual material commonly accepted in the research and scholarly communities as necessary to validate research findings, but not any of the following: preliminary analyses, drafts of scholarly manuscripts, plans for future research, peer reviews or related communications.

Inventions: Any Invention or discovery that is or may be patentable or otherwise protected under Title 35 of the United States Code.

Invention Disclosure: A formal disclosure by Covered Individuals to the University on forms provided by the University that includes relevant information relating to the Invention including, but not limited to the following:  date of the Invention, description of the Invention, any prior or planned public disclosures or publication dates, any sponsors of the research, names of collaborators and their university affiliations, names of all Inventors and their affiliations, and where the work was conducted, and supporting campus units.  

Net Revenue: The gross cash receipts from the transfer or commercialization of University Intellectual Property (whether by license or sale) less legal fees and any other out-of-pocket expenses incurred by the University in connection with the legal protection and transfer or commercialization of the University Intellectual Property. Revenue includes royalties, fees, milestone payments, or other financial returns received by the University from such Intellectual Property. Net Revenue does not include those revenues the University receives for non-commercial uses of University Copyrightable Intellectual Property.

Sponsored Activity: Research and other activities that are supported by resources received by the University from an external entity. 

Principal Administrator: The dean of a college or school or the dean’s designee, , the director of an academic or non-academic program or division, or other administrator with primary responsibility for the campus unit’s curriculum or activities.

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History

On May 9, 1997, the Board of Trustees adopted the Intellectual Property Policy (UA-05, Intellectual Property Policy) to implement the Statement of Principles on Intellectual Property (March 31, 1994) and to replace the patent policy in effect at that time. Updates to the policy became effective July 1, 2008, following approval by the Board of Trustees on May 2, 2008.

An update to UA-05 was approved by the University Faculty Council on March 26, 2013 and became effective April 11, 2013 upon approval by the Board of Trustees.

UA-05 was revised by the UFC and Board of Trustees in 2014.

This new Policy was drafted in 2024 along with UA-23, Intellectual Property: Copyrightable Works, to replace UA-05, Intellectual Property Policy. The Policy will become effective upon approval by the Board of Trustees in June 2024.

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