July 3, 2002
OWNERSHIP OF INVENTIONS
By: Mary M. Janicki, Assistant Director
You asked whether the state has a system to patent inventions or improvements that state employees or contractors develop in connection with their work. You want to know if the state has (1) ownership rights to such inventions, (2) an employee education program dealing with intellectual property rights, and (3) an intellectual property review committee.
A law enacted in 1959 gives the state the right, title, and interest to and in a state employee's invention or discovery conceived in the performance of the employee's duties or at state expense. An earlier law applied similar provisions to University of Connecticut employees (faculty and staff); then in 1979 to employees of the Connecticut State University system. University employees, however, are entitled to a share (at least 20%) of the net proceeds from their inventions or discoveries, after deducting the university's costs and expenses for the development.
No statewide employee education program deals with intellectual property rights and there is no intellectual property review committee, according to Linda Yelmini of the Office of Labor Relations. She notes, however, that separate state agencies may make individual employees in particular positions like engineers aware of these issues and any agency policies. Collective bargaining agreements do not address the issue of employee inventions, thus do not supersede the statutes.
The University of Connecticut's Center for Science and Technology Commercialization administers the licensing and commercialization of research conducted at the university by its employees. UConn reported disclosure of 72 inventions; 45 patent applications; and 21 U.S. patents issued for FY 2000, according to a survey conducted by the Association of University Technology Managers. The 13 licenses and options yielding license income that year generated $425,602 in adjusted gross license income.
Gail Garber of the Connecticut State University System's Office of Government Relations reports the Connecticut State University System received a total of $1,399.98 in FY 2001-02 from book royalties ($159 and $220 for Southern Connecticut State University and $1,020.98 for Central Connecticut State University). Other book royalty arrangements are in place that have not generated revenue. A university attorney is reviewing a patent application in connection with an article about to be published by a biology professor at Central. There are no other licenses, royalties, or patents except for athletic logos.
All State Employees
The law gives the state the entire right, title, and interest in and to any invention or discovery of a single state employee or a group of employees (1) when it is conceived in the course of the performance of his or their customary or assigned duties; (2) when the invention emerges from any state research, development, or other program; or (3) it is conceived or developed wholly or in part at state expense or with its equipment, facilities, or personnel. A state employee inventor must fully and promptly disclose his invention and assign the entire right, title and interest in and to the invention to the state. He must execute instruments of assignment to that effect. He must execute the proper patent applications on such an invention and help in procuring a patent.
For inventions that a state employee or employees develop with one or more other people, the law gives the state the rights to interest in them to the extent that the state employees have a disposable interest in them. For an invention or discovery made by a person who is not a state employee, the state has no interest except that which may be provided in a contract (CGS § 4-61a).
Separate laws apply to employees of the University of Connecticut (CGS §§ 10a-110 – 110f) and the Connecticut State University System (CGS §§ 10a-98 – 98f). In both cases, the law gives the universities the ownership of an invention conceived by one or more university faculty or staff members and places ownership in the custody of the respective university research foundation. Like the law that applies to other state employees, ownership of the right, title, and interest to and in an invention developed by university employees alone belongs to the university if it is developed in the course of the performance of employee duties or if it emerges from university research at university expense. When university employees work with others, their portion of the right, title, and interest to and in an invention goes to the university. The university has no ownership rights to an invention conceived by others unless otherwise provided in a contract, express or implied, between the university or the foundation and those who control the invention.
The law gives a university employee who conceived an invention a share of the net proceeds from the assignment, grant, license or other disposal of the invention, if he meets the obligations described above with respect to applying for patents. At least 20% of the net proceeds is awarded to the inventor (proportional shares go to employees who jointly conceived an invention) and the university's board of trustees can award more. The board first deducts from gross proceeds the university's costs and expenses that are allocated to the invention or discovery.
Disagreements as to the allocation of investment proceeds are resolved through arbitration or the courts. The university boards of trustees are authorized to adopt regulations regarding arbitration proceedings, but neither board has done so. The foundations hold the rights and benefits from patents, assignments, grants, licenses for inventions and discoveries for the uses of the University of Connecticut and the Connecticut State University system, respectively.