When the University has rights of ownership to an invention or its related copyrightable materials, as set forth above, and if the University decides that it is not desirable for the University to pursue patent or copyright protection; or the University declines to do so, all rights to ownership of the invention or materials will be released to the Inventor, to the extent allowed by law or the terms of sponsor rights, agreements/contracts. Ownership of federally funded inventions and related copyrightable material revert to the federal agency. Upon request of the inventor, the University will make written recommendation to the federal agency that ownership rights be vested in the inventor. The inventor would then have the right to pursue a patent or copyright at their own expense. In exploiting or developing any released invention or materials the inventor shall not use University facilities and resources or the name of the University. Even when the University relinquishes its right to pursue a patent or copyright to the inventor, it will retain a non-exclusive, royalty-free license to practice the invention or use the materials for its own purposes. A release (or assignment back) to the inventor will require the inventor to, among other things:
· Accept an equal undivided interest and take responsibility for further assignment of rights to all inventors.
· Accept responsibility for future patent costs as they are incurred.
· Exclude “future” or “related inventions” which may arise out of the inventor’s research, or any “background rights” that may be needed to practice the invention.
· Grant a non-exclusive, royalty-free right to practice the invention and any resulting patents to the University for their own internal, non-commercial research purposes, including the right to sublicense to other research entities.