Assignment of Inventions to Columbia University

Columbia University in the City of New York           New York, N. Y. 10027

OFFICE OF THE PROVOST                                  Low Memorial Library
OF THE UNIVERSITY

                                                            October 1, 1995

To: Officers of Instruction, Officers of Research and Student Officers

Subject: Assignment of Inventions to Columbia University

You have recently been asked to sign a letter agreeing to assign to the University any patentable inventions which you conceive or reduce to practice at the University ("Agreement"). The purpose of this memorandum is to thank those of you who have returne d the signed Agreement expeditiously and to answer the questions that a number of officers have raised about the Agreement. A copy of the Agreement is enclosed.

With regard to those of you who have returned the signed Agreement, I do appreciate your cooperation in this additional administrative and, some might say, bureaucratic process. As for those who have not yet signed the Agreement, I hope this memorandum ad equately responds to any questions or concerns you may have. It addresses the reasons for the Agreement, what the Agreement covers, who must sign it, and implementation.

Why the University is Instituting this Requirement

The University is requiring officers to sign the Agreement in order to enable the University to be in compliance with Federal law and regulations and to implement compliance with the University's Statement on Proprietary Rights in the Intellectual Product s of Faculty Activity. Federal law requires the University to obtain written agreements from all personnel engaged in Federally-funded research to disclose inventions to the University and execute all papers necessary for the filing by the University of p atent applications on such inventions*. Most third party funding agreements require written assignment agre ements from those engaged in the funded research. Finally, the University's intellectual property policy calls for assignment to the University of all ''inventions and discoveries which are or may be patentable, as well as the technology associated with t hem."

___________________________
*The Federal Law, known as the Bayh-Dole Act, is codified at 37 U.S.C. §200 et seq. The implementing regulations in question, issued by the Department of Commerce, are codified at 37 CFR Ch. IV.

It is important to emphasize that the University is seeking to implement already existing requirements and that the Agreement does not cover a broader category of inventions than that already covered by Federal law and the University's intellectual proper ty policy. Moreover, no substantive changes may be made to the University's intellectual property policy without the review and approval of the University Senate and the University Trustees.

What the Agreement Covers

The agreement covers any patentable invention that is conceived or reduced to practice in the course of sponsored projects at Columbia. Sponsored projects are defined as research that is supported in whole or part by the Federal government or by any other internal or external funding source to the University, or is conducted in University facilities.

Individuals Who Must Sign the Agreement**

The categories of individuals who must sign the Agreement are as follows:

Full-time officers of instruction
Full time and part-time salaried officers of research
Part-time non-salaried officers of research employed by Howard Hughes Medical Institute
Full-time postdoctoral clinical and research fellows
Student officers of research
Graduate students who receive stipends from pre-doctoral training grants or from individual pre-doctoral fellowships (these ndividuals do not hold appointments as student officers).

________________________
**You should note that the categories of individuals who must sign the Agreement have been considerably narrowed from those listed in my March 29,1995 memorandum to Vice Presidents, Deans, Directors, and Department Chairs. For example, p art-time officers of instruction and student officers of instruction will not be required to sign the Agreement

Exceptions to the Above

For the time being, full-time officers of instruction at affiliated hospitals, other than Presbyterian Hospital or Harlem Hospital, will not be required to sign, nor will full-time officers paid by New York State be required to sign the Agreement. Officer s at Presbyterian Hospital or Harlem Hospital who are considered full-time are required to sign. For purposes of this memorandum, officers of instruction at Harlem Hospital are considered full-time and are therefore required to sign if they are working at 50% or more effort.

Implementation

Note: The signed forms should be RETURNED TO YOUR DEPARTMENTAL ADMINISTRATOR. Please do not send them to my office.

Effective November 1, 1995, grant proposals will not be processed on behalf of investigators who have not signed the Agreement. Similarly, the Columbia Innovation Enterprise office (formerly Office of Science and Technology Development) and the CPMC Office of Clinical Trials will not execute agreements if the participating investigators have not signed the Agreement.

New appointments in the above-listed categories will not be processed without a signed Agreement.

You should direct any questions you have about the mechanics or procedure for signing and filing of the Agreement to your Departmental Administrator. If you have questions about the University's intellectual property policy, please direct them to the Colu mbia Innovation Enterprise office (854-8444). If you have questions about the Federal requirements or if you have other legal questions, please direct them to Beryl Abrams in the General Counsel's office (854-4523).

Thank you again for your cooperation in this process.

                                       Jonathan R. Cole
                                       Provost & Dean of Faculties

enc.

Compliance with Gov't-Wide Rules | Assignment Agreement

OPG Main Menu