1.0 Policy Purpose
Brown University’s Patent and Invention Policy is intended to further the University’s central missions of education and the production, preservation, and dissemination of knowledge. The Policy is designed to maintain the University’s general philosophy regarding the open dissemination of research results and the encouragement of research and scholarship without regard to potential financial gain, while recognizing that commercialization of intellectual property related to certain research is a means to achieve the maximum benefit to society. The Policy aims to assure faculty, students, and staff of fair treatment and appropriate sharing in financial return related to intellectual property.
2.0 To Whom the Policy Applies
This Policy applies to discoveries or inventions created or made by Covered Individuals, whether paid or not, which discoveries or inventions
- were conceived during or developed from research conducted as a part of University Duties; or
- had costs that were paid, in part or in whole, from University funds or from funds administered by the University; or
- have been developed in whole or in part through the more than Incidental Use of University resources.
This Policy applies to undergraduate students who are receiving sponsored research funding and/or working collaboratively with Covered Individuals.
Notwithstanding the above, Brown will have no rights to undergraduate student intellectual property when
- all Brown-affiliated inventors are undergraduate students;
- no aspect of the discovery or invention was made by any Covered Individual;
- the discovery or invention was not made with funding provided by Brown and did not require more than Incidental Use of University facilities or resources (funding in this context does not include small amounts of funding provided by Brown in support of undergraduate classes or entrepreneurship workshops); and
- the discovery or invention does not utilize or improve upon intellectual property already made and owned by Brown.
Certain University courses that engage industry partners or collaborators may involve intellectual property obligations that require undergraduate students to assign rights to Brown or to the industry partner or collaborator (e.g., capstone projects). Student participants will be informed in advance of these circumstances, and students will be required to sign assignment agreements prior to participation in the course. Forms for this purpose can be obtained from the office of Brown Technology Innovations (BTI).
If more than one organization claims rights to a Covered Invention, Brown will consult with such organization to arrive at a mutually satisfactory division of rights and responsibilities.
The University understands that research and intellectual endeavors of Covered Individuals are not static, but are dynamic and subject to change and evolution. If there is a question about whether an invention or discovery is covered by this Policy, BTI will undertake an examination of the facts and circumstances surrounding the development of the invention or discovery and make an appropriate determination. Appeals of the BTI determination shall be made in accordance with Section 3.8.1.
3.0 Policy Statement
3.1 Ownership
Covered Individuals assign any and all rights in any Covered Invention to Brown University. The University shall own, on a worldwide basis, all rights in any Covered Invention. The University may not assert ownership rights in any discovery or invention that is not a Covered Invention.
3.2 Consulting
Please refer to Section 7.5 of the Handbook of Academic Administration for the University’s policy on consulting arrangements.
An invention that is not a Covered Invention that is made by a Covered Individual in the course of a written consulting agreement with an outside third party arising from work not performed at Brown may be assigned to the outside third party, so long as (1) doing so is consistent with the University’s policies on Conflict of Interest and Conflict of Commitment, (2) the invention was not made or conceived under circumstances involving more than Incidental Use of University facilities or resources, and (3) the invention does not compromise Brown University’s intellectual property rights. If the consulting relationship involves the use of Brown intellectual property, the Covered Individual must disclose that relationship to BTI. BTI will provide assistance regarding licensing or the use of Brown intellectual property in the consulting relationship.
3.3 Disclosure
All Covered Inventions that might be patentable must be disclosed in writing to BTI as soon as practicable and prior to disclosure to any third party or non-Brown University entity.
3.4 Invention Evaluation
The University, through BTI, shall evaluate disclosures expeditiously and will determine if Brown will apply for patent protection.
If the University determines that (i) the University has no legal obligation to participate in the licensing or patenting of a Covered Invention and (ii) the University does not desire to participate in the licensing or patenting of a Covered Invention, the University will release to the inventor(s) the University’s interest in the Covered Invention to the extent permitted by law. This release will be confirmed in writing. If there is more than one inventor, the University will release its rights to all inventors collectively.
3.4.1 Inventive Contribution Apportionment
Inventorship for the purposes of distribution of Royalties (see Section 3.4.2 below) shall be equally apportioned among the named inventors to each patent. Any agreements regarding non-equal inventorship apportionment must be made in writing by all named inventors. If any named inventor makes a written request for a non-equal inventorship apportionment and all named inventors cannot agree in writing on non-equal apportionment, an Ad Hoc Appeals Committee will review and made a recommendation on apportionment in accordance with Section 3.8.1.
3.4.2 Inventorship Evaluation
Inventorship is a legal determination that shall be made by University patent counsel, taking into consideration the positions of potential inventors and/or patent counsel retained by such inventor(s). In the event that an agreement cannot be reached, inventorship will be decided by a patent attorney acceptable to and agreed upon by Brown and the inventor(s). Inventorship may change based on the subject matter ultimately issuing as a patent. Changes in inventorship shall be determined in the same manner as the initial determination of inventorship.
3.5 Licensing of Inventions
If the University decides to participate in the licensing of an invention, the University, through BTI, will seek to enter into appropriate business arrangements to commercialize the invention, taking into consideration the comments and concerns of the inventors. Exclusive licenses may be granted if it appears to the University that an exclusive license is the most effective way to ensure the invention is developed for the benefit of the public. Any exclusive license agreement will be drafted in a manner that protects against the licensee’s failure to carry out effective development and marketing within a specified time frame.
3.6 Division of Royalties
For instances when there may be uncertainty or dispute as to what component of Brown University is the relevant Principal Investigator (PI) Department or PI Dean, the matter will be decided in the first instance by BTI. The determination made by BTI may be appealed to an Ad Hoc Appeals Committee in accordance with Section 3.8.1.
3.6.1 Recovery of Expenses and Support of Licensing Efforts
Royalties shall be used first to offset costs directly attributable to the protection and licensing of rights to the intellectual property. These costs may include fees paid or attributable to legal services, consulting services, licensing organizations, and out-of-pocket costs incurred by the University. The University may also retain reasonable Royalties as a reserve for anticipated future costs directly associated with the invention (e.g., patent costs, attorneys fees).
3.6.2 Distribution of Net Royalties
After recovery of the expenses in Section 3.6.1, the remaining revenue (Net Revenue) shall be divided by apportioning (a) 35% to the inventors; (b) 35% to the PI research account, the PI Department, and the PI Dean; and (c) 30% to the Office of the Provost. The Net Revenue distributions are set forth below.
3.6.2.1 35% to Inventors
All inventors will share 35% of Net Revenue in accordance with Section 3.4.1 above.
3.6.2.2 35% to PI Research Account and PI Department/PI Dean
35% of Net Revenue will be distributed among the PI’s Brown University-based research account and the PI Department and PI Dean as further described below. If a PI is no longer employed at Brown, the PI research account share shall be distributed to the PI’s former PI Department and PI Dean in accordance with this section.
- The distribution of this 35% share shall be 50% to the PI research account, 25% to the PI Department, and 25% to the PI Dean. The PI research account is capped annually at a cumulative income of $500,000 per fiscal year per license. If the PI research account has reached or reaches this maximum, the PI Department and PI Dean then equally split this 35% share, or what remains of it after the PI research account receives its maximum apportionment, until the PI Department and PI Dean reach a per-fiscal-year cumulative cap of $1,000,000 per license each. Thereafter, this 35% share, or the remainder thereof, will be distributed to the Office of the Provost.
- In the case of multiple PIs, the PI research account shares and related PI Department/PI Dean share will be distributed proportionally in accordance with each PI’s inventorship apportionment as described under Section 3.4.1.
3.6.2.3 30% to University
30% of Net Revenue will be distributed to the University. This share shall be distributed as follows:
- For all cases except those involving funds as described below, 100% of the University’s share of Net Revenue shall be distributed to the Office of the Provost to support the University’s research enterprise and other University priorities.
- For cases where a license includes intellectual property that, in whole or in part, was made, improved, or further developed through financial support from Brown Biomedical Innovations to Impact (BBII) or other University-managed accelerator (Accelerator) funds, the following distribution will be applied:
- BBII or the Accelerator will receive 100% of the Net Revenue until two (2) times the amount of the BIII or Accelerator award is recovered by BBII or the Accelerator.
- After BBII or the Accelerator has recovered two (2) times the amount of the relevant award, the next $1 million in Net Revenue will be apportioned as follows: 70% to BBII or the Accelerator, 30% to the Office of the Provost.
- The next $1 million to $5 million in Net Revenue will be apportioned as follows: 50% to BBII or the Accelerator, 50% to the Office of the Provost.
- Any Net Revenue above $5 million will be apportioned as follows: 0% to BBII or the Accelerator, 100% to the Office of the Provost.
Appeals or disputes of or issues regarding the distribution or allocation of Net Revenues must be made in accordance with Section 3.8.1.
3.7 Equity
Brown University may at times accept equity as part of a licensing agreement in the form of shares of stock or other securities issued by the licensee. Net Royalties from equity will be shared in accordance with Section 3.6.2. Any equity the University receives under a license agreement will be held and managed by BTI, which will promptly distribute funds related to the shares when permitted under applicable securities laws and when not otherwise prohibited by contract.
3.8 The Office of the Vice President for Research
The Office of the Vice President for Research (OVPR) or its designee will periodically review and update the Patent and Invention Policy. When conducting this review, OVPR may consider the policies of peer institutions and changes in law and regulation. OVPR or its designee will make recommendations regarding the Patent and Invention Policy to the Vice President for Research and the Provost. Recommendations may include suggested modifications to the levels at which Royalty distributions are made and capped to take into account University priorities, the impact of inflation, and changes in relevant law and regulation.
3.8.1 The Ad Hoc Appeals Committee (AHAC)
When an appeal or matter requiring AHAC review or consideration arises, the Provost, with input from the Vice President for Research, shall appoint an AHAC. Each AHAC will be comprised of three members of the faculty who do not have any apparent or actual conflicts of interest with respect to the matter or inventors at issue. Concerns regarding the composition of the AHAC shall be brought directly to the Provost.
An AHAC shall be appointed to review a single matter, and may be reconvened at the Provost’s discretion to review any matters related to the initial matter for which it was created. All AHAC determinations and recommendations must be made in writing and submitted to the Provost and the Vice President for Research. The Provost and the Vice President for Research shall review the AHAC determinations or recommendations, and issue a written decision. Decisions of the Provost and the Vice President are final and not appealable.
4.0 Definitions
For the purpose of this Policy, the terms below have the following definitions:
- Covered Individuals:
-
Brown University faculty (including faculty on sabbatical), postdoctoral associates and fellows, graduate students, employees, visitors, and consultants. Undergraduate students receiving sponsored research funding and/or working collaboratively with Covered Individuals are also considered “Covered Individuals” as that term is used in this Policy.
- Covered Inventions:
-
Discoveries or inventions created or made by Covered Individuals, whether paid or not, which discoveries or inventions
- were conceived during or developed from research conducted as a part of University Duties; or
- had costs that were paid, in part or in whole, from University funds or from funds administered by the University; or
- have been developed in whole or in part through the more than Incidental Use of University resources.
- Incidental Use:
-
For purposes of this Policy, Incidental Use does not include undergraduate student use of University classrooms, internet, dormitories, libraries, or the facilities and resources of the Jonathan M. Nelson Center for Entrepreneurship.
- PI Dean:
-
The Brown University-based office of the dean that manages or oversees the PI Department.
- PI Department:
-
The Brown University-based academic unit with faculty lines to which the PI is appointed, as managed by a chair.
- Royalties:
-
For purposes of this Policy, “Royalties” shall include running royalties, advances against running royalties, license fees, milestone payments, shares of stock or other securities issued by the licensee, and any other payments received by the University under a license agreement in consideration for licensing an invention. Royalties shall not include funds directed to additional research or governmental grants.
- University Duties:
-
A Covered Individual’s University Duties are those that are customarily performed by those holding the position held by the Covered Individual as well as additional duties that may be assigned by the University. University Duties include, but are not limited to, teaching, mentoring students, conducting research, and serving on University committees. Research activities that are not conducted through or funded by the University are not University Duties for purposes of this Patent and Invention Policy only.
5.0 Responsibilities
All individuals to whom this Policy applies are responsible for becoming familiar with and following this Policy. University supervisors are responsible for promoting the understanding of this Policy and for taking appropriate steps to help ensure compliance with it.
6.0 Consequences for Violating this Policy
Failure to comply with this and related policies is subject to disciplinary action, up to and including suspension without pay, or termination of employment or association with the University, in accordance with applicable (e.g., staff, faculty, student) disciplinary procedures or for non-employees may result in the suspension or revocation of the user’s relationship with Brown University.
7.0 Related Information
Brown University is a community in which employees are encouraged to share workplace concerns with University leadership. Additionally, Brown’s Ethics and Compliance Reporting System allows anonymous and confidential reporting on matters of concern online or by phone (877-318-9184).
The following information complements and supplements this document. The information is intended to help explain this Policy and is not an all-inclusive list of policies, procedures, laws and requirements.
7.1 Related Policies:
7.2 Related Procedures:
N/A
7.3 Related Forms:
- In fulfillment of the Brown University Patent Policy, the “Patent and Invention Agreement under External Contracts, Grants and Other Sponsored Agreements” form must be completed by any individual who is involved in externally funded research and/or utilizes facilities funded in whole or in part by an external sponsor. Individuals working on award activity who have not previously submitted this agreement must complete, sign and return the form. The Patent and Invention Agreement is located here and should be sent to Brown Technology Innovations at tech-innovations@brown.edu.
7.4 Frequently Asked Questions (FAQs):
N/A
7.5 Other Related Information:
N/A
Policy Owner and Contact(s)
Policy Owner: Vice President for Research
Policy Approved by: Corporation
Contact Information:
Policy History
Policy Issue Date:
Policy Effective Date:
Policy Update/Review Summary:
The Corporation of Brown University approved and adopted the Brown University Patent and Invention Policy and Copyright Policy on May 27, 2005. The Corporation reserves the right to revoke or amend the policy. This policy and any amendment is effective upon its adoption and replaces all prior versions of the policy. On May 19, 2020 this policy number was changed from 01.20.03 to 01.60.01. On October 16, 2020 this policy number changed from 01.60.01 to 10.20.01 to facilitate policy website searches. On November 10, 2020 this policy was updated to include the new Brown Technology Innovations office title. On April 19, 2021 the definition of University Duties in section 4.0 was updated.
Website Updated October 25, 2022