Yale University Patent Policy
Acknowledgement & Agreement (PPAA)
Brown Bag Series – July 29, 2009
Allison Goldsnider
Intellectual Property Associate
Office of Cooperative Research
allison.goldsnider@yale.edu
Phone: 436.8093
Fax: 436-8086
Kim Mickey
Research Compliance Officer
Office of Research Administration
Kim.mickey@yale.edu
Phone: 432-0751
Tina Muzzy
Intellectual Property Compliance
Associate
Office of Cooperative Research
tina.muzzy@yale.edu
Phone: 436-8097
Fax: 436-8086
Yale University’s Patent Policy
The entire Patent Policy can be found at:
http://www.yale.edu/ocr/pfg/policies/patents.html
• 1.Encouragement of Patents. In the course of teaching, research, and other
intellectual and administrative activity by faculty, staff, fellows, students, and other
individuals in the University community, discoveries or inventions both patentable
and practical occur. Encouragement of such inventions in appropriate ways is both
supportive of the public interest and consistent with the advancement of
knowledge for its own sake, the primary purpose of teaching and research in a
university
• 2. Purpose of Patent Policy. The purposes of this University Patent Policy are (1)
to help assure, in the public interest, that the patentability (or other means of
exploitation) and practicality of inventions will be evaluated by qualified persons,
and that the income from inventions will be used to support further research or
other desirable University activities; and (2) to define remuneration to the
inventor or inventors (hereinafter the "Inventor") and the University as long as the
invention is productive of royalties
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Yale University's Patent Policy
• 9. Governmental Rights in Certain Inventions. Current governmental
regulations permit educational institutions to retain rights and title to patentable
inventions which results from federally funded experimental, developmental and
research work. Retention of rights by University is contingent upon the fulfilling of
a number of obligations on the part of the University and of the Inventor(s) and
these obligations must be discharged in order to protect the interests of all parties.
Though the University may retain rights and title to such patentable inventions,
the federal government retains a royalty free license and places certain other
restrictions upon the ultimate disposition of the patents(s)…….Incumbent upon
members of the University community who apply for and receive federal funding
to support research or who use federal monies in the conduct of their research is
the requirement for written agreement that they will promptly disclose patentable
inventions to the University and will execute all instruments necessary to protect
the rights of the government and/or the University.
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Bayh-Dole Act 1980
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Bayh-Dole Act 1980
• The Bayh-Dole Act is the United States legislation way of dealing with
intellectual property arising from federal government-funded research
• Among other things, it gave US universities, small businesses and nonprofits intellectual property control of their inventions and other
intellectual property that resulted from such funding
• The most important change of Bayh-Dole is that it reversed the
presumption of title. Bayh-Dole permits a university, small business, or
non-profit institution to elect to pursue ownership of an invention in
preference to the government
• The government retains a non-exclusive license to practice the invention
throughout the world
• The government retains rights
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How does Bayh-Dole relate to Yale?
• Yale University is a non profit organization
• Yale University heavily relies on United States
government funding for its ongoing research
• Yale University & the United States Government
retain rights of the invention
• Yale University is required to report all government
funded inventions to the government within 60 days
of disclosure to Yale
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What does the Patent Policy Acknowledgment &
Agreement (PPAA) state?
I understand that Yale University has a Patent Policy that applies to inventions made
under University auspices. I also understand that Yale's funding agreements with
third parties, including the United States Government, impose certain obligations
with respect to rights in inventions. In order to facilitate compliance with the
terms of those agreements and applicable Federal regulations, I agree as follows:
– I will abide by the Yale University Patent Policy, including any amendments to it adopted from
time to time, and I will execute any assignments or other documents necessary to comply with
its terms.
– If in the course of research conducted under University auspices, as defined by the Patent
Policy, I make any invention (whether or not patentable), I will provide to the Yale Office of
Cooperative Research a written disclosure of the invention and I will cooperate with that
Office in the preparation of any patent applications.
– I do not have any consulting or other agreement with any third person or organization which
grants rights that are in conflict with this agreement, nor will I knowingly enter into any such
agreement.
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Who has to sign the PPAA?
According to Yale University’s Patent Policy, “In the course of teaching,
research, and other intellectual and administrative activity by faculty, staff,
fellows, students, and other individuals in the University community,
discoveries or inventions both patentable and practical occur….” = entire
Yale community
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ORA’s Assessment of the PPAA
• Objective: Determine if the Patent Policy
Acknowledgement & Agreement (PPAA) form
was being signed in accordance with Yale
Policy and federal regulations
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Applicable Requirements
•
Yale University Patent Policy
– 1.Encouragement of Patents. In the course of teaching, research, and other intellectual
and administrative activity by faculty, staff, fellows, students, and other individuals in the
University community, discoveries or inventions both patentable and practical occur...
– 9. Governmental Rights in Certain Inventions …Incumbent upon members of the
University community who apply for and receive federal funding to support research or
who use federal monies in the conduct of their research is the requirement for written
agreement that they will promptly disclose patentable inventions to the University and
will execute all instruments necessary to protect the rights of the government and/or the
University .
•
•
Federal regulations (37 CFR Part 401): The contractor agrees to require, by written
agreement, its employees, other than clerical and nontechnical employees to
disclose promptly in writing to personnel identified as responsible for the
administration of patent matters and in a format suggested by the contractor
NIH Grants Policy Statement (NIHGPS): The PI (employee) must sign an agreement
to abide by the terms of the Bayh-Dole Act and the NIHGPS as they relate to
intellectual property rights.
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Applicable Requirements
• Faculty Handbook In conjunction with any application for
external funding support, a faculty member must submit a
written agreement confirming his or her acceptance of the
University Patent and Copyright Policies
• Proposal Summary and Certification form (Section X) signed
by PI: In accordance with Yale University’s Patent Policy, all
personnel on this project including postdocs, students and
visiting scientists will have signed the University’s Patent
Acknowledgment and Agreement prior to initiation of this
project
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SECTION X - CERTIFICATIONS
Principal Investigator/Co-Principal Investigator: We certify that the information contained on this Proposal
Summary & Certification Form is true, accurate and complete as of this date. Any false, fictitious or
fraudulent statements or claims may subject PI and/or Co-PI to criminal, civil, or administrative
penalties. We accept responsibility for the scientific and administrative conduct of the project and will
provide the required progress reports if a sponsored agreement is awarded as a result of the
application. We have completed all required Yale University faculty training, including Sponsored
Projects Financial Administration for Faculty (http://learn.yale.edu/ra)
* Conflict of Interest (COI): By signing below, I/we have determined that all individuals responsible for the
design, conduct or reporting of this research (listed in Section VII) have read and understand Yale's
policy on Conflict of Interest and Conflict of Commitment, have made all required disclosures, and have
disclosed any changes necessitated by this proposal. I/we further agree to comply with any conditions
or restrictions imposed by Yale to manage, reduce or eliminate conflicts of interest.
* Intellectual Property: In accordance with Yale University’s Patent Policy, all personnel on this
project including postdocs, students and visiting scientists, will have signed the University’s
Patent Acknowledgement Agreement prior to initiation of this project.
*Debarment: by signing below the Principal Investigator/Co-Principal Investigator certify that neither the PI
nor anyone proposed to work on this project are, to the best of my/our knowledge, excluded from
participation in the federally funded activities as a result of government-wide suspension or debarment.
* Health and Safety: I/we are aware of the potential environmental health and safety issues and hazards
identified in this proposal, will share this information with staff and students, and will obtain applicable
training, authorizations and equipment necessary to perform this work safely.
* Export Controls: I/we have read and understand Yale’s Guidelines on Export Controls and I/we will work
with the GCA to ensure this project complies with the United States export control laws and
regulations.
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Data Review/Analysis
•
•
•
•
Identified all active federal awards
1,845 active federal awards
65 were selected as the sample
Reviewed each award to determine if the
Proposal Summary and Certification form
(Pro-Sum) was signed by the PI
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Data Review/Analysis
• 112 individuals were selected for review.
• Visited OCR staff to determine if PPAA’s were
on file.
• Interviewed 10 departments to identify
departmental process for collection and
maintenance of PPAAs.
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Summary of Findings
• 1,366 PIs with active awards
• Data review identified that the Pro-Sum
certification was signed by the PI verifying
that the PPAA was signed, however less than
half of the PPAAs were found on file in OCR.
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Summary of Findings
• Not all business offices are fully aware of the
University’s Patent Policy or federal
requirements relating to PPAAs and do not
have a process for the collection or
maintenance of the signed documents.
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Streamlining the PPAA process
• Starting in July 2009:
– Using TMS to assign PPAA requirement to Yale
community
– Rollout to be done in two phases
– One time only requirement
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Streamlining the PPAA process
• Phase I: All individuals (excluding clerical and nontechnical) paid from a federally funded sponsored
award (including federally funded subawards) will be
rolled out in July/early August
• Phase II: All other members of the Yale community
will be required to agree to the PPAA at time of their
annual TMS assessment.
• Providing Phase I is completed effectively Phase II
should start in September.
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Streamlining the PPAA process
• Goal: All new hires will be required to
complete the PPAA requirement via TMS along
with any other required training based on
employment.
• YALE UNIVERSITY REMAINS COMPLIANT!
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