Repository: UIHistories Project: Board of Trustees Minutes - 1986 [PAGE 577]

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566

BOARD OF TRUSTEES

[May 8

sion, the University shall determine the division. I n cases where several inventions are licensed under a single licensing agreement, the University shall determine and designate the share of net income to be assigned to each invention. (g) Relations with inventors. (1) T h e University will inform inventors as to its decisions regarding inventions which they have disclosed. Should the University decide to abandon development of a University-owned invention, ownership will be assigned to the inventor (s), subject to the rights of sponsors and to the retention of a nonexclusive, royalty-free license to practice the invention for University purposes. (2) The University may require inventors to execute an assignment and related documents necessary to further the patenting and development of an invention and to cooperate with the University in such activities. The inventor's obligation to assign rights to the University is subject to the provisions of the Illinois Employee Patent Act, which provides in part: "A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time unless: (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development; or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of the State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection." (3) Employees engaged in external consulting work or business are responsible for ensuring that agreements emanating from such work are not in conflict with University policy or with the University's contractual commitments. Such employees should make their University obligations known to others with whom they make such agreements and should provide other parties to such agreements with a statement of University policies on inventions and discoveries. SEC. 8. A D M I N I S T R A T I O N O F I N V E N T I O N S AND D I S C O V E R I E S (a) Administrative responsibility. The President shall designate the University officers and offices responsible for the administration and disposition of inventions and discoveries, with primary responsibility delegated to campus officers particularly for such matters as the disposition of inventions (Sections 7[b], 7[d]), preferential terms for research sponsors (Section 7[e]), and resolving disputes among co-inventors (Section 7[f]). Licenses and options for licenses may be granted in the name of the Board of Trustees of the University of Illinois when approved by the President or his designee and executed as are other University contracts. (b) Administrative guidelines and procedures. General guidelines and procedures for the administration of inventions and discoveries shall be established by the President in consultation with the University Intellectual Property Committee and the campuses. Detailed operational guidelines and procedures for the administration of campus-based responsibilities shall be established by each campus. (c) University Intellectual Property Committee. The University Intellectual Property Committee shall be appointed annually by the President. The Committee shall consist of a faculty representative from each campus appointed by the Chancellor with the advice of the Research Board and Graduate College Executive Committee on that campus and, unless otherwise designated by the President, of