Repository: UIHistories Project: Board of Trustees Minutes - 1986 [PAGE 581]

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570

BOARD OF TRUSTEES

[May 8

University on their own time and responsibility, it should be clearly understood by the agency requesting such tests that the tests are not to be considered as cooperative research investigations and that the University, as an institution, assumes no responsibility for the results obtained. Ownership rights in data and results from such commercial testing, including resulting inventions or discoveries, shall be specified in writing as part of the agreement covering the proposed work. Absent such specification, ownership rights shall belong to the University. The name of the University of Illinois shall not be used in publicity concerning the products tests, without its permission.

Return of Rights in Invention (Report for Information)

(16) On July 18, 1985, the Board of Trustees approved the recommendation of the Patent Committee that the University release its rights in the invention, Hybrid Cell Immunotherapy of Malignant Disease (Cohen), to the sponsor of the work leading to the invention, the National Institutes of Health. I t had been determined that the invention was not licensable in the near future because it required extensive development. T h e committee recommended release so that the inventor, Dr. Edward Cohen, professor of microbiology and immunology, Chicago campus, could continue development by obtaining rights from N I H . However, N I H declined to grant Dr. Cohen's petition for release, initiating filing for a patent in its own name instead. N I H agreed to return rights to the University and to permit the University to license the invention to Dr. Cohen for continued development. A patent application has now been filed on behalf of the University. A conflict of interest exception has been approved by the president to permit the University to grant a license to a company controlled by Dr. Cohen, Hybrid Cell Research and Technology, Inc. Rights in the invention were returned from N I H to the University, thus reversing the July 18, 1985, action of the board. Negotiations now are underway for the University to grant a license to Dr. Cohen's company to develop and commercialize the invention.

This report was received for record.

Recommendation of the University Patent Committee

(17) The University Patent Committee recommends that the action described below be taken with regard to an invention made at the University of Illinois. Background information concerning this case has been sent to the members of the Board of Trustees. Unicollet — Josef Schreckeis, instrument maker, and Gerard P. Murphy, mechanical engineer, Department of Physics, Chicago, inventors. University Patents, Inc., has agreed to release its rights to the University so that ownership of the invention could be assigned to the inventors. Extensive licensing and marketing efforts were undertaken prior to this release and have been unsuccessful. The inventors, their department head, the Graduate College at the Chicago campus, and the Patent Committee concur in the findings and recommend that the University release its rights in this invention to the inventors, with retention of shop rights and a provision that should the inventors subsequently license or sell the invention, they would return an amount to the University sufficient to reimburse U P I for its documented, out-of-pocket costs incurred in filing for protection of the invention. I recommend approval.

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