Pursuant to section 7.0 of the University of Rochester’s Intellectual Property Policy, the University will waive its rights to intellectual property in favor of the inventor(s) or author(s) only if the University determines that it has no general proprietary interest in the knowledge and that such a waiver: (i) would enhance the transfer of the knowledge into useful applications for the public benefit; (ii) does not raise a conflict of interest; and (iii) is consistent with the University’s obligations to third parties, particularly the sponsor(s) of the research.
For any invention or patent that URVentures agrees to waive, URVentures must release and assign the rights, and the assignee must accept those rights. An agreement for Release of Invention Rights and Assignment of Rights to Royalties is always required. Depending upon the funding source (if any), forms may be required by the sponsor.
Note about inventions with external sponsorship:
Federal research agreements generally require that universities take title to resulting inventions and discoveries, subject to certain obligations concerning exploitation in the public interest. Decisions by Federal sponsors to permit individual inventors to acquire ownership are generally made on a case-by-case basis, with the Federal government retaining for itself those rights previously disclosed (see section 1.7). The inventor(s) or author(s) should petition the Federal agency directly for the appropriate release of rights. URVentures will assist inventors with agency-required documentation; for non-Federal sponsors, the University will seek approval of the sponsor prior to releasing its ownership rights in favor of the inventor(s) or author(s).
Responsibility for Patent Expenses and Reporting
If ownership rights are transferred to the inventor, the inventor is responsible for reimbursement of incurred expenses, ongoing patenting and/or maintenance costs, as well as all reporting requirements. In the case of government sponsored inventions, the inventor assumes responsibility for all conditions imposed by the funding agency. If you have any questions or would like more information about this process, please contact the Intellectual Property team.