Procedure 3.26.1 Patent Inquiry Procedures

System Procedures
Chapter 3 - Educational Policies

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for Board Policy 3.26


Part 1. Purpose. This procedure implements Board Policy 3.26 Intellectual Property and provides a consistent process for system colleges, universities and the system office to have inventions evaluated for potential patents.

Part 2. Applicability. This procedure applies to potential patents in which a college, university or the system office may have an ownership interest.

Part 3. Definitions.

Subpart A. Invention. An invention or discovery is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

Subpart B. Intellectual Property Coordinator. The Intellectual Property Coordinator is the person appointed at each college, university and the system office who administers Board Policies 3.26 Intellectual Property, 3.27 Copyrights and any related procedures.

Subpart C. Inventor. An inventor refers to the creator of an invention that may be patentable.

Subpart D. Patent. A patent is a grant made by a government that confers upon the creator of an invention the sole right to make, use, and sell that invention for a set period of time in exchange for disclosure of the invention.

Subpart E. Patent Inquiry. A patent inquiry is the process used by an inventor within the system to determine if an invention is patentable and if the college or university is interested in pursuing potential patents.

Part 4. Procedure. System colleges and universities shall complete and submit an invention disclosure form and supporting documents to the system office when requesting a review of an invention for potential patents.

Step 1. The Inventor informs the Intellectual Property Coordinator about the invention and completes and submits an Invention Disclosure form to the Intellectual Property Coordinator.

Step 2. The College/University Intellectual Property Coordinator assists the inventor with the Invention Disclosure form as needed and submits completed form to System Director for Intellectual Property.

Step 3. The System Director for Intellectual Property:

a. Reviews Invention Disclosure Form and supporting documents for possible intellectual property issues, discusses invention with inventor, and creates report;

b. Submits report, Invention Disclosure form and supporting documents to system Legal Counsel with recommendation on whether further review is warranted. A copy of the report is sent to the Intellectual Property Coordinator and Inventor;

c. Provides timely updates to stakeholders during the patent inquiry process.

Step 4. System Legal Counsel reviews report and supporting documents and determines if further review is warranted by a patent attorney. Private patent counsel may only be retained through the Minnesota Attorney General's Office when system colleges and universities are pursuing patents.

Step 5. The College or University:

a. In consultation with the system Legal Counsel, makes final decision as to whether or not to pursue patent(s), based on patent attorney's recommendation, monetary considerations, and other factors;

b. Communicates decision to pursue or not pursue potential patents to System Director of Intellectual Property. If potential patents are pursued then patent attorney is retained to prosecute patent application.

Step 6. The System Director for Intellectual Property shall communicate the college's or university's final decision to stakeholders.

Part 5. Individual's Pursuit of Potential Patents. If a college, university or the system is not interested in pursuing potential patents now or in the future (e.g. filing would be premature at this time) in jointly owned inventions, joint owners shall be informed of this decision. If the inventor decides to pursue potential patents at his or her own expense, he or she shall notify the college or university president.

Related Documents:


Procedure History:

Date of Adoption: 07/12/10,
Date of Implementation: 07/12/10,

Date & Subject of Revisions:

1/25/12 - The Chancellor amends all current system procedures effective February 15, 2012, to change the term "Office of the Chancellor" to "system office" or similar term reflecting the grammatical context of the sentence.

There is no additional HISTORY for Procedure 3.26.1.

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