Repository: UIHistories Project: Board of Trustees Minutes - 1986 [PAGE 436]

EXTRACTED TEXT FROM PAGE:

1985]

UNIVERSITY OF ILLINOIS

425

should be noted that under the current copyright policy contained in Section 9 ( b ) of the General Rules Concerning University Organization and Procedure, the University would not now acquire ownership.) Professor Michalski has requested that the University assign its ownership interest to him so that he may produce derivative works and otherwise commercially exploit this software, subject to the retention of a license by the University for use in the University's internally administered programs of teaching, research, and public service. The Federal government is licensed to use these works for government purposes under the terms of the original research grants and contracts. The software programs to be assigned are of little value without further modification and work. Such work cannot realistically be undertaken except by the original investigator. Release of University ownership rights in these programs will improve the prospects for their distribution and use. The vice chancellor for research and dean of the Graduate College at Urbana and the University Committee on Copyrightable Works have recommended approval of this request. I concur.

On motion of Mr. Forsyth, this recommendation was approved.

Recommendation of the University Patent Committee

(13) The University Patent Committee has recommended the following action concerning an invention made at the University of Illinois. Background information concerning this case has been sent to the trustees. Laser Machining By Localized Melting — Jyotirmoy Mazumder, associate professor of mechanical engineering and Jijun Li, visiting scholar, Department of Mechanical and Industrial Engineering, Urbana, inventors. University Patents, Inc., reported that it does not elect to subject this invention to its servicing agreement with the University. The invention is thought to be of little commercial interest to industrial concerns because currently-employed methods of laser machining are less costly. The University Patent Committee has recommended that the University release its rights in this invention to the inventors, subject to the retention of shop rights in the invention by the University. I concur.

On motion of Mr. Forsyth, this recommendation was approved.

Agreement with University Patents, Inc.

(14) For the past five years, University Patents, Inc. ( U P I ) , of Westport, Connecticut, under contract with the University, has performed a number of duties related to the University's patent development efforts. The contract expired on October 4, 1985, and it is now proposed that the Board of Trustees enter into a similar contract with U P I . Under its terms, U P I would receive a right of first refusal to act as the University's licensing agent with respect to certain inventions and, if that right is exercised, the exclusive authority to license those inventions. Ownership in issued patents would remain with the University. Excluded from the scope of the proposed contract are inventions that may arise from nongovernmental research grants, or contracts that contain terms controlling the disposition of such inventions owned by the University, unless the University chooses to have U P I service the invention. Also excluded are inventions that the University may decide not to develop. U P I would assist the University by evaluating invention disclosures for patentability and commercial utility; file and prosecute patent applications; maintain issued patents as the University's agent; seek prospective licenses for inventions; receive royalties; and service executed license agreements as the University's agent. U P I would pay the costs of obtaining U.S. patents. The costs associated with