The full text of the University Patent Policy can be found in the Faculty Handbook, Section 3.7.5. Excerpts from this Policy have been included in the FAQs below.
For the purposes of this Policy, an “inventor” is defined as any full- or part-time University faculty, staff, students, postdoctoral fellows and others who use University funds, facilities or other resources, or participate in University-administered research, and who contribute to the conception of an invention using any University resources.
The three types of inventions defined in this Policy are as follows:
1) An incidental invention means an invention that is conceived or reduced to practice in whole or in part making an incidental use of space, facilities, materials or other 89 resources provided by or through the University. Use of an office, the library, and desktop computer is considered to be the incidental use of space, facilities, materials or other resources.
2) A supported invention is an invention conceived or reduced to practice in whole or in part
• with use of direct or indirect financial support from the University, including support or funding from an external sponsor awarded to or administered by the University; or
• with use (other than incidental use) of space, facilities, materials or other resources provided by or through the University.
3) An assigned invention is an invention conceived or reduced to practice in whole or in part as a result of activities related to the inventor’s assigned employment responsibilities.
Upon review of the disclosure, the Office of Research will determine whether the invention shall be classified as an incidental, supported, or assigned invention. Ownership will be determined as follows:
Ownership of an incidental invention shall remain with its inventor, subject to any rights owned by the University as required by this policy or voluntarily assigned by the inventor to the University.
The University owns supported inventions and assigned inventions. In addition, each inventor agrees to confirm in writing the inventor's assignment to the University of all of his or her right, title, and interest in each supported or assigned invention.
Supported inventions that involve an external sponsor are owned by the University unless otherwise agreed by the University in a separate written third party agreement between the University and a sponsor. Such a separate agreement may provide some or all rights in the supported invention to the third party.
Where royalties are generated as a consequence of licensing an invention owned by the University, net royalties received by the University will be determined as net of direct 91 and indirect expenses incurred in securing and managing the patent. Of these net royalties, the University will pay 50 percent to the inventors and the remaining 50 percent will be allocated to a separate University fund to support research and related activities unless otherwise agreed to in writing. An agreement with a sponsor that allocates royalties between the sponsor and the University may be entered into with the approval of the Office of Research.
First, review the Faculty Handbook Section 3.7.5, and then complete the Invention and Technology Disclosure Form. The completed form should be emailed to: patents@scu.edu
The Associate Provost for Research will consult with representatives from TreMonti (a consulting firm focused on technology transfer) and Lumen Patent Firm (a firm that evaluates disclosures and manages patent procedures). Title, fees, and royalties will be handled as detailed in the Policy.
In addition to the Invention and Technology Disclosure Form, you may need the following:
Intellectual Property and Confidentiality Agreement for Sponsored Projects
Sponsored Research Agreement Standard IP
Sponsored Research Agreement with Joint IP
Please reach out directly to the Sponsored Projects Office for questions regarding the use of these forms.
The Associate Provost for Research is responsible for enforcement of the policy. Examples of noncompliance with this policy include, but are not limited to, failure to submit a disclosure form, intentionally filing an incomplete, erroneous, or misleading disclosure form, or failing to provide any additional information requested by the Associate Provost for Research. Failure to comply with this policy will result in the notification of the sponsor as appropriate. In addition, noncompliance may result in disciplinary action consistent with and subject to sections of the Staff Policy Manual and the Faculty Handbook that are applicable to the employment of the faculty or staff member. In particular, noncompliance is subject to the Policy on Misconduct in Research (Faculty Handbook, Appendix H).
All questions should be submitted to the Associate Provost for Research, Eric Tillman (408-551-3078, etillman@scu.edu).