Repository: UIHistories Project: Board of Trustees Minutes - 1986 [PAGE 471]

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BOARD OF TRUSTEES

[ J a n u a r y 16

exception be approved. T h e University Patent Committee recommends approval. The vice president for academic affairs concurs. I recommend approval. O n m o t i o n of M r . M a d d e n , this r e c o m m e n d a t i o n w a s a p p r o v e d .

Increase in Inventors' Royalty Share (Exception to the General Rules)

(13) On October 16, 1980, the Board of Trustees released the University's rights in an invention, U I 1683, entitled "Detection of Polyclonal Lymphocyte Activator in Patient Serum," to the sponsor of the research leading to the invention, the National Institutes of Health ( N I H ) . Subsequently, the inventors, Marius Teodorescu, John L. Soskey, and Jin-Lai Chang, of the College of Medicine at Chicago, petitioned N I H for release of the rights to the inventors. After gaining the rights, the inventors sought and received U.S. Patent No. 4,402,934 on September 6, 1983, with the revised name "Diagnostic Technique for Rheumatoid Arthritis." Recently, the University entered into an agreement with Baxter-Travenol Laboratories to develop and commercialize this invention, and two others owned by the University: U I 1818 "Diagnosing Autoimmune Rheumatoid Arthritis by Measuring Proteolytic Activity of a Z-Macroglobulin," U.S. Patent No. 4,499,186, issued February 12, 1985; and U I 1862 "Bacteriophages as Recognition and Identification Agents," U . S . Patent Application No. 591,136 filed March 19, 1984. T h e terms of the agreement with Travenol require University ownership of all three inventions. In order to comply, the inventors of U I 1683 formally assigned their ownership to the University. As a condition of this assignment, the inventors have requested that they receive 80 percent of the net income attributable to any subsequent licensing of U I 1683 rights by the University instead of the usual share as detailed in Article I I , Section 8 ( c ) of the General Rules Concerning University Organization and Procedure. This constitutes an exception to the General Rules. The requested exception will not affect usual royalty sharing among the University and the inventors of U I 1818 and U I 1862, will provide 20 percent of the net income from U I 1683 to help defray the University's administrative costs, and is believed to be appropriate considering the University's original decision not to pursue the development of U I 1683. The University Patent Committee considers this a reasonable request and recommends its approval as an exception. T h e vice president for academic affairs concurs. I recommend approval.

On motion of Mr. Madden, this recommendation was approved. Recommendations of the University Patent Committee

(14) T h e University Patent Committee has recommended the following actions concerning inventions made at the University of Illinois. Background information has been sent to the Board of Trustees. 1. Stereoregular Poly MM A Blends for Medical and Dental Applications— Samuel I. Stupp, associate professor, Department of Ceramic Engineering, and HweiLing Yau, technical assistant, Department of Mining and Metallurgy, Urbana. University Patents, Inc. ( U P I ) reported that it does not elect to subject this invention to its servicing agreement with the University. It was determined that prospective licensees would not be interested in the compound because of the prohibitive cost to manufacture it on a commercial scale. U P I also determined that this finding does not justify a patenting effort. T h e University Patent Committee accepts these findings and recommends 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.