Patents and Scholarly Work

Policy Summary

The George Washington University ("GW" or "university") seeks to serve the needs of society in the course of pursuing the traditional principles of education and research, as well as patient care. It has dedicated itself and all its resources to the pursuit and dissemination of knowledge. It does not pursue knowledge for primarily commercial purposes. However, the university recognizes that the interest of the inventor(s) and that of the university are better served when inventions and discoveries made by university faculty, postdocs, staff, or students are developed to the point of practical application. The university's Policy on Patents and Scholarly Works is intended to facilitate that objective. 

Patents confer certain exclusive rights to inventions and discoveries while simultaneously making those inventions and discoveries known to the public. Many inventions and discoveries are of more beneficial use when protected by the exclusive rights granted in a patent. Consistent with the public interest, the university will take steps to promote the development and use of inventions and discoveries made by members of its community. When the university receives royalties from patents, it will use those royalties in support of its mission of education and research and to provide appropriate incentives for inventorship.

The purpose of this policy is to adopt an inventor-friendly process in dealing with patents and scholarly works. 
 

Who is Governed by this Policy

• Faculty
• Postdocs
• Staff
• Students

Policy

University Organization

1. Technology Commercialization Office

The Executive Director of the Technology Commercialization Office ("Executive Director") and the Vice Provost for Faculty Affairs, in collaboration with the Vice Provost for Research, are the university officials responsible for patent matters, including negotiation of agreements with sponsors of research and with licensees of university-owned patents. These officials administer the Policy on Patents and Scholarly Works and ensure compliance with agreements with sponsors. 

The Technology Commercialization Office is available to advise faculty, postdocs, staff, and students on patent questions, particularly as they relate to specific disclosures.

2. Patent and Scholarly Works Review Panel: Policy and Procedure with regard to Patents and Scholarly Works

Responsibility for this policy and for establishing procedures to implement the Policy on Patents and Scholarly Works resides with the Vice Provost for Faculty Affairs and the Executive Director. The Executive Research Oversight Committee (EROC), chaired by the Vice Provost for Research, serves as the consultative body on these matters and must approve policy changes. A subcommittee of the Advisory Council on Research (ACR, chaired by the Vice Provost for Research) will be appointed for each calendar year by the Vice Provost for Faculty Affairs in consultation with the Executive Director. This subcommittee will be called the Patent and Scholarly Works Review Panel. The Panel, chaired by the Vice Provost for Faculty Affairs, shall have membership composed of one representative from each school or college at the university along with the Executive Director, and the Vice Provost for Research. In addition, one member from the Faculty Senate Committee on Research and one member from the School of Medicine and Health Sciences Committee on Research shall be appointed to the Panel. When necessary, for consultative purposes and to obtain expert advice, the Panel may convene an ad hoc subpanel, composed of members internal or external to the university who are not members of the Panel.

Relations with Sponsors of Research

Through the Office of Sponsored Projects, the university enters into agreements with third parties to sponsor research conducted by university faculty, postdocs, staff, and students. Such agreements for sponsored research may contain provisions allocating the parties' rights in any Inventions or Discoveries made under the agreement. The university will not enter into such an agreement if its provisions differ in any way from university policy unless the deviating provisions are deemed acceptable in writing by the faculty member or staff member who will be the principal investigator for the project. 

Sponsored research agreements impose many requirements, not just ones related to patents, and university faculty, postdocs, staff, and students should familiarize themselves with any of these requirements that relate to their work. Before work begins on a project covered by a sponsored research agreement, the principal investigator must advise their colleagues working on the project of their rights and duties under the agreement. Usually, this is best done by providing each individual involved with copies of the applicable sections of the document.
Sponsored research agreements are entered into only after it is determined that they meet certain basic criteria. It is expected that the following criteria will be applied unless there is a documented reason for an exception that is approved by the Vice Provost for Research, an Associate Dean for Research, or the Vice Provost for Faculty Affairs:

1. The sponsored research is consistent with and supportive of the university's purposes of education and research, as well as patient care, and the university's overriding aim of pursuing and disseminating new knowledge.
2. The sponsored research does not involve the commitment of so many personnel or other resources that it creates an inappropriate balance of activities within the relevant university school, department, or laboratory. These determinations are to be made by the appropriate signatories, e.g., Department Chair, Dean, Vice Provost for Research, Vice Provost for Faculty Affairs, Provost and Executive Vice President for Academic Affairs, or Associate Dean for Research, on the standard routing sheets for approval of sponsored research proposal within the university. 
3. Faculty, postdocs, staff, and students are permitted to publish the results of their research in a timely manner. The university normally will agree to maintain confidentiality of confidential information provided by the sponsor and to withhold publication for up to 60 days after disclosure to the sponsor in order to accommodate the filing of a domestic or foreign patent application covering the subject matter of the publication. 
4. The U.S. Government

Many university faculty, postdocs, staff, and students receive financial support for their research from the U.S. Government. The ownership of Inventions, Discoveries, Technologies, or Innovations made by university faculty, postdocs, staff, or students with Government financial support is determined by Federal law, including the Bayh-Dole Act (35 U.S.C. §§ 200-212) and the Rights to Inventions Made By Nonprofit Organizations and Small Business Firms Under Government Grants, Contracts, and Cooperative Agreements (37 C.F.R. Pt. 401). 

The university has a duty promptly to disclose to the Government all Inventions, Discoveries, Technologies, or Innovations made in the performance of a Government funding agreement, where a funding agreement means prime awards from the Federal government and Federal pass-throughs, i.e., subcontracts at all tiers. Accordingly, as provided in the Rights in Inventions, Discovery, Technology, and Innovations section in this policy, faculty, postdocs, staff, and students associated with Government-sponsored projects promptly shall notify the Technology Commercialization Office whenever any Invention, Discovery, Technology, or Innovation is conceived or actually reduced to practice in the course of the project. When permitted, if the university decides to seek patent protection for such an Invention, Discovery, Technology, or Innovation in accordance with this policy, the university will elect to retain title to the Invention, Discovery, Technology, or Innovation and make efforts to achieve practical application of the Invention, Discovery, Technology, or Innovation.

2. Sponsors Other than the U.S. Government 

Faculty, postdocs, staff, and students also conduct research sponsored by corporations, non-profit organizations, and others. Such agreements for research sponsorship are entered into through the same procedures used for U.S. Government projects, i.e., through the Office of Sponsored Projects. The university normally will not enter into such a sponsored agreement unless: 

1. It is explicitly stated what the rights of the sponsors and of the university will be in Inventions, Discoveries, Technologies, or Innovations that result from the sponsored work. It is expected that the university will retain title to all such Inventions, Discoveries, Technologies, and Innovations, and to any resulting patents. The university normally will grant the sponsor an option to obtain an exclusive or nonexclusive license to such Inventions, Discoveries, Technologies, Innovations, and patents, in exchange for appropriate consideration which may include the payment of patent expenses and royalties, provided that the university is entitled to practice the patent and to permit other nonprofit organizations to practice the patent for research purposes.
2. The sponsor agrees that its rights in any Inventions, Discoveries, Technologies, or Innovations are subject to any rights the U.S. Government might have by virtue of its sponsorship of related research

Disclosure of Inventions to the University

In order to provide maximum benefit to the university community and to assure the university's compliance with obligations to sponsors of research, all faculty, postdocs, staff, and students have the responsibility for promptly disclosing fully and openly to the Executive Director all Inventions, Discoveries, Technologies, and Innovations as required by research agreements or where there is prospect for commercialization in which the university has an interest. Principal Investigators of research projects, as well as department chairs and deans, have a responsibility to ensure that all such Inventions, Discoveries, Technologies, and Innovations of which they become aware are disclosed to the appropriate individual named above.

The university will make no claim to Inventions, Discoveries, Technologies, and Innovations unrelated to the individual's scope of duties with the university. Inventions, Discoveries, Technologies, and Innovations made by university faculty, postdocs, staff, or students which occur under the scope of their duties with the university, i.e., the area or areas of expertise in which an individual is considered qualified to teach or do research by their Department, and includes the application of this expertise in any field within or outside the individual's discipline, accomplished on university time, with direct university funding, and/or the use of university facilities, are subject to this policy. Faculty, postdocs, staff, and students have the responsibility to disclose all Inventions, Discoveries, Technologies, and Innovations, as required by research agreements or where there is prospect for commercialization in which the university has an interest, that are made within the scope of their duties to the Executive Director. When required, the Patent and Scholarly Works Review Panel shall assist the Vice Provost for Faculty Affairs in determining whether the disclosure falls within the individual's scope of duties.  

Failure to disclose an Invention, Discovery, Technology, or Innovation may result in the forfeiture of the individual's rights under this policy. Such cases will be reviewed by the Patent and Scholarly Works Review Panel, and additional sanctions consistent with other faculty, postdoc, staff, or student policies may be recommended to the Vice Provost for Faculty Affairs.

Evaluation of Inventions

After preliminary evaluation of a disclosure to the Executive Director, and determination that the subject matter is in an Invention, Discovery, Technology, or Innovation subject to this policy the university must initiate one of the following actions within 30 days:  

1. Submit the Invention, Discovery, Technology, or Innovation to an external technology transfer agent for evaluation and possible commercialization.  
2. Bring the disclosure before the Patent and Scholarly Works Review Panel for further evaluation as to a recommendation for a possible patent application, both domestic and/or foreign, being undertaken by the university.  
3. If rights in the Invention, Discovery, Technology, or Innovation are subject to the terms of an agreement with a sponsor, comply with the terms of the agreement.  
4. Assign title to the Invention, Discovery, Technology, or Innovation to the faculty, postdoc, staff, or student.  

Rights in Inventions, Discoveries, Technologies, and Innovations

1. Scholarly Works

All rights in scholarly books, articles or other publications, artistic creations, literary manuscripts, visual and auditory creations, and musical works, irrespective of their medium of storage or presentation, are granted to the faculty, postdocs, librarians, staff, and students who are the authors, except for "Works Made for Hire" and works made with "Substantial Use" of university resources (as such terms are defined in the university's  Copyright Policy). The former items are meant to include computer programs, computer software, and databases that are accessory to or part of a scholarly text. Computer programs that are written for the primary purpose of educational learning and testing are excluded from classification as Inventions, Discoveries, Technologies, and Innovations

2. Inventions, Discoveries, Technologies, and Innovations

Once the university has evaluated an Invention, Discovery, Technology, or Innovation, in order to carry out a decision made in accordance with the Patenting of Inventions, Discoveries, Technologies, and Innovations section of this policy, the university may require a faculty, postdoc, staff, or student to assign to the university or to a third party all rights, title, and interest in the Invention, Discovery, Technology, or Innovation.  

Faculty, postdocs, staff, and students are required to execute all contracts, assignments, waivers, patent applications, and other documents necessary to carry out the provisions of this policy in a timely manner.  

If the university permits faculty, postdocs, staff, or students to retain title to an Invention, Discovery, Technology, or Innovation, the university shall receive a nonexclusive, irrevocable, paid-up license to practice the Invention, Discovery, Technology, or Innovation, or to have it practiced for the university's own non-income producing purposes, and to permit other nonprofit organizations to practice the Invention, Discovery, Technology, or Innovation for research purposes.  

3. Employee Inventions

This policy does not apply to Inventions, Discoveries, Technologies, or Innovations that are created as a specific requirement of university employment or as an assigned university duty outside sponsored projects or related activities. All rights in these works are owned by the university with no right or interest vesting in the inventor.  

Patenting of Inventions, Discoveries, Technologies, and Innovations

If the university determines to seek patent protection for an Invention, Discovery, Technology, or Innovation in one or more countries, the faculty, postdocs, staff, or students making the Invention, Discovery, Technology, or Innovation shall assist the university in preparing and prosecuting patent applications. The university will give due regard to its faculty, postdocs, staff, and student inventors in making decisions with respect to patents on their inventions and keep its faculty, postdocs, staff, and student inventors informed of the decisions the university makes. The university will provide appropriate support as necessary.

If the university decides to abandon a patent application, it first shall offer to assign the Invention, Discovery, Technology, or Innovation back to the faculty, postdocs, staff, or student inventor, subject to the provisions outlined in the Distribution of Royalties section of this policy and to any rights of the sponsor of the research leading to the Invention, Discovery, Technology, or Innovation.  

Distribution of Royalties

When an Invention, Discovery, Technology, or Innovation is submitted to an external technology transfer agent, the university shall distribute to the inventor (or the inventors collectively) any proceeds received in connection with that entity accepting the Invention, Discovery, Technology, or Innovation for filing of patent applications.  

When income is received by the university either from an external technology transfer agent, through commercialization of an assigned Invention, Discovery, Technology, or Innovation, or from a university-owned Invention, Discovery, Technology, or Innovation, all expenses directly attributable to patenting, marketing, licensing, protecting, or administering the Invention, Discovery, Technology, or Innovation shall first be deducted from such income. The income remaining after these deductions constitutes "net income." Net income shall be allocated as follows:  

*Vice Provost for Faculty Affairs or Executive Director -- to be used for the purpose of promoting research in the university.

When the Invention, Discovery, Technology, or Innovation is the result of the joint efforts of two or more university faculty, postdocs, staff, or students, they shall use good faith efforts to agree upon the allocation between them of the royalties that would be payable to a single inventor pursuant to this policy. In the event that an agreement cannot be reached between the inventors, the Vice Provost for Faculty Affairs or the Executive Director shall determine an equitable distribution of the royalties, based on a recommendation formulated by the Patent and Scholarly Works Review Panel.

Invention Rights under Consulting Agreements

Members of the faculty and staff may agree to assign to third parties for whom they consult the rights in Inventions, Discoveries, Technologies, or Innovations made in the performance of consulting services, provided that such an agreement is consistent with previous obligations under an agreement for sponsored research, the rights of the university as described in this policy or any other rights or obligations described herein. Prior to entering into any such agreements, members of the faculty shall notify, in writing, the Vice Provost for Faculty Affairs for review and approval of the provisions concerning the assignment of inventions and also of provisions concerning inventions assigned to third parties pursuant to such agreements.  

Absent such an agreement, rights in inventions made in the performance of consulting services will belong to the faculty member, unless an invention made in the performance of consulting services also constitutes an Invention, Discovery, Technology, or Innovation subject to this policy. Should guidance be required in this determination, the Vice Provost for Faculty Affairs shall be the deciding official in consultation with and review by the Patent and Scholarly Works Review Panel and/or outside experts in intellectual property management.  

Other Inventions

Faculty, postdocs, staff, and students may assign Inventions, Discoveries, Technologies, or Innovations made on their own time, with their own facilities and materials, and unrelated to their scope of duties, to the university for administration on behalf of the university. If a faculty member, staff member, or student does so, the university will evaluate the invention pursuant to the Patenting of Inventions, Discoveries, Technologies, and Innovations section of this policy and then take whatever steps the university deems appropriate. There can be no assurance that the university will seek patent protection for an Invention, Discovery, Technology, or Innovation so assigned. In the event the university does seek patent protection, the sharing of costs and revenues shall be established on an ad hoc basis in negotiation between the inventor and the university prior to seeking the patent. Such cases shall be guided by recommendations from the Patent and Scholarly Works Review Panel to the Vice Provost for Faculty Affairs or the Executive Director.  

Persons who are not faculty, postdocs, staff, or students at the university may approach the university with Inventions, Discoveries, Technologies, or Innovations needing further development before their advantages can be fully realized. Where such inventions fit into the research program of the university and where university personnel, with administrative approval, choose to pursue such further development, they may be assigned to the university pursuant to an agreement to be negotiated between the university and the inventor.  

Supplemental Patent Agreements

All faculty, postdocs, staff, and students who may be expected to conduct research of any kind are bound by the terms of this policy. Those faculty, postdocs, staff, and students who conduct sponsored research of any kind shall be required, as a condition of employment or association with the university, to acknowledge that they are bound by the terms of this policy by signing a university supplemental patent agreement in a form determined by the university's Vice Provost for Faculty Affairs.  

Any individual with emeritus faculty standing is considered to be subject to the conditions of this patent policy as long as that individual is actively associated with the university through a sponsored research project or is extensively using university facilities. Emeritus faculty working on their own or with limited resources from the university, will not be subject to this policy unless they so choose to be covered. Should there be a question as to the amount of resources being used, a determination shall be made by the Vice Provost for Faculty Affairs or the Executive Director after consultation with and review by the Patent and Scholarly Works Review Panel. 

Any individual, whose Invention, Discovery, Technology, or Invention is granted a patent through GW, and who subsequently leaves the university, is still subject to the conditions of this policy with respect to said patent. 

Disputes

Disputes on patent matters, including the interpretation of this policy, shall be referred to the Patent and Scholarly Works Review Panel for review and recommendation. Based on the Panel's recommendation, the Vice Provost for Faculty Affairs or the Executive Director shall make a ruling on the dispute. Any appeal of a ruling by either official will be heard by the Provost and Executive Vice President for Academic Affairs, who will make a recommendation to the President for final ruling.  

Periodic Review

At least once every four years, the Patent and Scholarly Works Review Panel shall review the provisions of this policy and propose to the Advisory Council on Executive Research Oversight Committee changes that will maintain a Policy on Patents and Scholarly Works that serves the best interests of the university, faculty, staff, and students.  

Changes

The university administration and the Faculty Senate shall review this policy at least once every four years and following such review, shall jointly determine whether modifications to the policy are necessary or desirable to best serve the interests of the university and its faculty and librarians, staff, and students. 

Implementation

The Technology Commercialization Office is responsible for the implementation of policy. It is expected that this Office will undertake to promote the development and use of inventions and discoveries by holding periodic information sessions for faculty and staff on the patent process. In addition to these sessions, it is expected that materials will be distributed university-wide that keep the faculty fully informed as to the number of patents sought and obtained along with other technology transfer successes. Generally, the Technology Commercialization Office is responsible for creating a proactively supportive environment for faculty interested in the invention and discovery process.  

Definitions

Inventions, Discoveries, Technologies, and Innovations: Terms that cover tangible or intangible inventions, including any process, machine, manufacture, composition of matter, or improvement thereof, which is or may be patentable, whether or not reduced to practice. These terms are also meant to cover tangible research and development results whether or not patentable. Such results include, for example, computer programs, circuit designs of all types, databases, technical and design drawings, biogenic materials, novel varieties of plants, chemically synthesized molecular systems, and other creations. Such tangible results may also be subject to the university's Copyright Policy, and to the extent of any overlap, the intent is to treat such items first under this policy, and then if not patentable, to treat them under the Copyright Policy.

Related Information

• Copyright Policy

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