Dean of the Faculty: Faculty Handbook

Patent Policy

The aim of Amherst College's Policy on patents is to make available College technology for the public benefit, while providing recognition of individual inventors and encouraging the prompt and open dissemination of research results (see Faculty Handbook Sec. D (15) , for statement on Classified Research). This policy is designed to enable the College to fulfill its responsibilities under the law or contractually to the Federal Government and other entities that provide funds to the College for sponsored research.

I. Application

This policy applies to inventions which were conceived or first reduced to practice by Amherst faculty, students, staff, and any others, including visitors, in the performance of research, work, or study supported by externally sponsored funds administered by the College, or involving the material use of funds or facilities of the College. 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 so that application of this policy might be agreed upon in advance of any attempts to commercialize it. All such disclosures should be made to the Comptroller. The College will accord such disclosures the confidentiality required to preserve the patent rights associated with them and will promptly inform the inventor(s) of any claims it might make to any such rights.

II. Federally Funded Research

The disposition of patent rights to inventions conceived or first reduced to practice in the performance of work under a funding agreement between Amherst College and an agency of the Federal Government is provided in detail by federal law and the funding agreement to do so as well, including disclosure to the College and the Federal Agency of any such inventions, the assignment of any patent rights to the College, the sharing of any royalties with the inventor(s) should the College pursue the commercial licensing of those rights (see the royalty sharing provisions below), the assignment of such patent rights to the Federal Government in the event the College elects not to pursue their commercialization, and the right of the inventor(s) to request from the Federal Government the retention of such patent rights. To the extent they are not inconsistent with federal law and funding agreements, the College will follow the policies outlined below in Section V. The Comptroller, in consultation with the Dean of the Faculty, is the person responsible for administering the College's patent matters, and must be notified of each such invention promptly after its discovery.

III. Research not funded by federal contract and not making material use of funds or facilities of the College

This policy does not apply to inventions discovered in the course of work which does not involve the material use of College facilities or funds (whether reimbursed or not). The College disclaims both ownership and liability pertaining to any such inventions.

IV. Research making material use of funds or facilities of the College and funded by others than the Federal Government

The patent rights provisions of funding agreements between Amherst College and funding sources other than the Federal Government involving the material use of College facilities or funds, will be flexibly negotiated on an ad hoc basis, with due regard to the rights and interests of the College and, in particular, the provisions of the Faculty Handbook regarding Classified Research, Sec. D (15) . As a general rule, the College will seek to incorporate the provisions of Section V. below in any such agreement, but recognizes that any or all of such provisions may need to be amended to satisfy the funding source. The College will not enter into any such agreements with patent rights provisions unacceptable to the principal investigator.

V. Patent rights for inventions arising out of work not funded by outside sources but involving the material use of College resources or funding

Unless explicit arrangements are made to the contrary, the following principles generally prevailing at research institutions of higher education will apply to inventions conceived or reduced to practice in the performance of work not funded by outside sources and making material use of funds or facilities of the College.

1. Patent rights to such inventions are owned by Amherst College.

2. The Comptroller, in consultation with the Dean of the Faculty, is the person responsible for administering the College's patent matters, and must be notified of each such invention confidentially and promptly after its discovery in order to determine whether the College will undertake the expense of pursuing its commercial potential.

3. The College will promptly evaluate that commercial potential, confidentially and without jeopardizing the patent rights, in consultation with the inventor(s) and utilizing outside evaluation services such as Research Corporation Technologies where appropriate.

4. If the College determines not to pursue its patent rights, it will promptly assign the same to the inventor(s), without reservation, except that the inventor(s) will not be permitted to utilize the College's name in connection with the marketing of such invention or any derivative products.

5. If the College determines to pursue the commercialization of its patent rights, it will do so promptly and diligently, and, except as otherwise negotiated with the inventor(s), it will undertake all of the expenses of the same. Without the agreement of the inventor(s), the College will not enter into any commercialization agreements which prohibit the free use of the invention by the inventor(s) for research or educational purposes.

VI. Royalties

Under all of the circumstances outlined above where it elects to pursue the commercialization of inventions subject to this policy, the College will remit to the inventor(s) 50% of all royalties it receives, after deduction of expenses directly related to such commercialization (e.g. patent filing fees and attorneys fees). Where special arrangements are made with the inventor(s) for the sharing of such expenses, or where the inventor's use of College facilities or funds is insignificant, other distribution percentages may be negotiated which will reflect the relative contributions of the College and the inventor(s).

(Approved May 20, 2000)