Invention and Patent Policy
The College’s patent policy is designed to encourage inventions produced at Mount Holyoke to be used for the greatest possible public benefit, to protect the rights of individual inventors and to recognize the contributions of the institution.
This policy applies to any invention, discovery, apparatus, device, process, computer hardware, computer software, plant, organism, genetic material, work, and other tangible or intangible process or improvement (collectively “Invention”) that was conceived or reduced to practice by Mount Holyoke employees or students in the performance of research, work or study supported by externally sponsored funds administered by the College or involving the use of funds or facilities of the College. Works that are primarily literary or artistic in nature are not included.
1. The College is entitled to ownership of the Invention when it was made wholly or in part with funds or facilities provided or administered by the College. In such instances, the inventor(s) are required to execute an agreement assigning ownership of the Invention to the College. In certain instances, the College may, at its sole discretion, grant to the inventor(s) a license of rights granted by any Letters Patent that may issue on the Invention.
2. Individuals are expected to notify the College’s Sponsored Research Office on an Invention Disclosure form of any Invention that the individual has made using funds or facilities provided or administered, in whole or in part, by the College. The Dean of Faculty and the Vice President for Finance and Administration will review the form and determine whether the Invention is within the scope of this policy.
3. If the Invention is deemed to be outside the scope of this policy (that is, no funds or facilities provided or administered by the College have been used in its creation, development, or reduction to practice), the individual may elect to pursue patent protection for the Invention without the assistance of the College. In that event, the individual is entitled to all royalties or other income resulting from the discovery and the College disclaims both ownership and responsibility pertaining to any such Invention.
4. If the research that resulted in the Invention is subject to an agreement between an external sponsor, such as a granting agency, and Mount Holyoke College and that agreement contains restrictions as to the disposition of inventions or works, the terms of the agreement will take precedence over this policy. All participants in externally sponsored research are required to accept in writing the conditions in any agreement between the College and the sponsor before being permitted to participate in the sponsored research. In negotiation with sponsors, representatives of the College should strive to obtain the greatest latitude and rights for the individual inventor and the College consistent with the public interest and with this policy.
5. The Dean of Faculty, the Vice President for Finance and Administration, and others as necessary will determine whether the College will undertake the expense of applying for Letters Patent on the Invention and pursuing its commercial potential. If the College determines not to pursue the patent rights, the inventor may elect to do so; however, the College’s name, trademarks and service marks may not be used in marketing the Invention without the College’s express written permission in advance. The Sponsored Research Office will notify the inventor of the College’s decision whether it will apply for Letters patent as soon as possible after submission of the Invention Disclosure form. If the decision is affirmative, the College will initiate the patent application process within 30 days of that decision. If the decision is negative and the inventor elects to undertake the patent application process independently, the inventor will advise the College when any Letters Patent issue.
6. Income from inventions or works will be distributed on a quarterly basis as follows:
a. All income received in the preceding calendar quarter as a result of the commercial exploitation of the Invention will first be applied against any patent prosecution, issuance, maintenance, licensing, and/or marketing costs and/or expenses incurred by the College in that quarter. If the costs and/or expenses incurred in any quarter exceed the income received in that quarter, the remainder will be carried over to the next quarter and any income received in that next quarter will first be applied to reimbursing the College for those remainder costs and/or expenses and then to the current quarter costs and/or expenses, if any.
b. If the College finds it necessary to enforce or defend a patent, 75% of any income received in the preceding calendar quarter will first be applied to reimbursement of the College for any expenses or costs incurred by the College in that quarter in connection with these activities, with the remaining 25% distributed to the inventor, until these costs and expenses are recouped by the College. If the costs and/or expenses incurred in any quarter exceed the income received in that quarter, the remainder will be carried over to the next quarter and any income received in that next quarter will first be applied to reimbursing the College for those remainder costs and/or expenses and then to the current quarter costs and/or expenses, if any, all under the apportionment described above in this subsection 6.b.
c. Thereafter, 75% of any remaining income received in the preceding calendar quarter will be distributed to the inventor, with the remaining 25% to the College.
d. If there is more than one inventor, the royalty apportioned above to the inventor shall be apportioned to the joint inventors as a group for them to share equally, unless the inventors provide the College with an alternative royalty distribution agreed upon by them.
e. The College will provide an annual accounting.
7. When an inventor is uncertain about the application of this policy to an Invention, he or she is encouraged to disclose it promptly to the College, through the Invention Disclosure form, so that the application of the policy may be agreed to prior to any public disclosure of or attempt to commercialize the Invention. The College will accord such disclosures the confidentiality required to preserve the patent rights associated with the Invention. If there is disagreement concerning the applicability of this policy in a specific instance, the potential conflict will be covered by the College’s guidelines and procedures on the resolution of Grievances.