Patent Committee

The Patent Committee reviews and considers invention disclosures from the ECU community and makes recommendations to the Office of Licensing & Commercialization on the filing of patent applications. The committee also makes recommendations on the expenditure of funds related to patent and license activity.

• Patent Committee Charge
• Committee Purpose and Responsibilities
• ECU Patent Committee Procedures
• ECU Patent Committee Presentation Guidelines

Membership

A minimum group of three faculty members, including a member of Faculty Senate is required. Preferably, faculty committee members should have technical or scientific expertise that will contribute to the assessment of new inventions and technologies as it relates to the commercialization process. Knowledge of intellectual property matters and commercialization is desirable. Training is provided to all new members.

Additional membership comes from the Office of Licensing and Commercialization, the Small Business Technology Development Center (SBTDC), investors, and external partners. The Office of the University Attorney shall serve as legal advisor, when necessary.

Institutional Officer to Whom the Committee Reports

The committee reports to the Vice Chancellor for Research, Economic Development and Engagement.

Standard Meeting Time

Meetings are held the second Thursday of the month throughout the calendar year if timely subject matter review is required. Additional meetings may be called when necessary.

Term of Office

Members serve a 12-month appointment, renewable based on continued interest and ability to serve on the committee.

Attendance

Meeting attendance is noted in the minutes. Repeated absences will result in notification to the appropriate dean and dismissal from the committee.

Meeting Minutes

Minutes are recorded for every meeting and are retained according to policy.

The purpose and responsibilities of the committee include: reviewing and recommend to the chancellor or his delegate the procedures for the implementation of the University Patent Policy; resolving questions of invention ownership that may arise between the institution and its faculty, staff, students, volunteers or individuals; recommending to the chancellor the expenditure of the patent royalty fund; making such recommendations as are deemed appropriate to encourage disclosure and assure prompt and expeditious handling, evaluation and prosecution of patent opportunities; and protecting the interests of both the university and the public.

Jurisdiction

The Patent Committee has exclusive jurisdiction of all matters related to university patents.

Accordingly, the Patent Committee shall review and consider Reports of Invention for evaluation of new inventions for possible patent protection based on criteria established by patent law and available resources. The Patent Committee will also review and consider progress made in development of inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications.

Policy Review and Amendment

The Patent Committee will make written recommendations to the Institutional Officer regarding any aspect related to the Patent Policy PRR POL10.40.01, including without limitation distribution of revenues received as a result of licensing activities. Exceptions to the policy may be approved by the Institutional Officer if deemed to be in the university’s best interest and consistent with UNC policies and federal and state law.

Federal and State Law Compliance

On an annual basis, the Patent Committee shall review compliance reports prepared by the Office of Licensing & Commercialization in response to the Bayh-Dole Act.

Dispute Resolution

Instances in which questions of invention ownership arise between the university and its faculty, staff, students, volunteers or individuals shall be resolved by review of written requests made to the Chair of the Committee. A five-member Dispute Resolution Panel shall be appointed by the Chair to address the dispute with at least three panel members selected from membership of the Patent Committee and additional support provided by patent counsel or another patent expert. The panel shall elect a dispute resolution chair from its membership. In the event the dispute involves the Chair of the Patent Committee, then the Institutional Officer or their superior officer shall appoint the panel.

The Patent Committee may elect to conduct a hearing or may make a recommendation based on the written record, provided all the parties to the dispute are given an opportunity to present evidence and arguments in support of their respective positions. The hearing shall be conducted in accordance with the procedures adopted by the Chair of the Panel. A party may be accompanied at the hearing by a non-participating advisor.

Patent Committee Meetings

The Chair of the Patent Committee or their designee shall prepare the committee agenda and distribute the relevant review materials to the committee via secure server at least one full week prior to each meeting. Committee meetings shall consist of an open session to discuss matters of a non-confidential matter such as announcements and a closed session for discussion of confidential materials. Closed sessions must meet the criteria of NCGS143-318.11 and generally consider: review and approval of minutes; confidential announcements from the Office of Licensing & Commercialization; review of new inventions; review of progress made on existing inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications and maintaining issued patents. The Office of Innovation and New Ventures director shall serve as ex-officio member of the committee and the Office of Innovation and New Ventures shall administer and provide support for the committee.

Review of New Invention Disclosures

The inventor(s) will provide a brief overview of the invention which should address key elements important for assessing scientific, technical, market and patent relevance. Inventor presentations should be limited to 15 minutes, followed by 15 minutes of questions and answers with the committee. Ideally, committee review and assessment of the invention should be complete in no more than 45 minutes. The committee may utilize appropriate decision-making tools, such as check lists and software assessment applications, to facilitate the evaluation process. The committee’s recommendation shall be determined by majority vote of the representatives in attendance at the meeting, provided a quorum is present. Absent a quorum, a vote may be made by those members present and later validated online by the remaining committee members sufficient to meet a quorum. Following the meeting, Office of Licensing & Commercialization shall notify the inventor(s) of the committee’s recommendation. Committee recommendations may be in the form of one of the following options:

• Approval to file a provisional patent application
• Approval to file a U.S. non-provisional patent application
• Approval to file a PCT application
• Request for additional information
• Withhold approval
• Offer to return the invention to the inventor under the terms of ECU’s Invention Release Agreement
• Combination of two or more of the above
• Other

Review of Subsequent Patent Actions

The committee will also review and consider progress made in development of inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications. The inventor(s) will provide a brief overview of progress made with the invention, such as advancement of the science or key technical areas, recent grant support, relevant new publications, assessment of competitive products and a plan for future research and development. Inventor presentations should be limited to 15 minutes, followed by 15 minutes of questions and answers with the committee. Ideally, committee review and assessment of an invention should be complete in 45 minutes. The committee may utilize appropriate decision-making tools, such as check lists and software assessment applications, to facilitate the evaluation process. The recommendation shall be determined by majority vote of the committee in attendance at the meeting, provided a quorum is present. Absent a quorum, a vote may be made by those members present and later validated on-line by the remaining committee members sufficient to meet a quorum. Following the meeting, Innovations and New Ventures shall promptly notify the inventor(s) orally, followed in writing, of the committee’s recommendation. Committee recommendations may be in the form of one of the following options:

• Approval to refile provisional application with loss of original priority date
• Approval for conversation of the provisional application to a U.S. non-provisional application
• Approval to file a PCT application
• Approval to enter into National Phase filing with countries specified
• Request for additional information
• Withhold approval
• Offer to return the invention to the inventor under the terms of ECU’s Invention Release Agreement
• Combination of two or more of the above
• Other

Expedited Review

In circumstances when expedited review is necessary due to imminent public disclosure of an invention prior to the next scheduled meeting of the committee then, at the discretion of the chair, an expedited review of the invention may occur. Expedited reviews shall be performed by a subcommittee assembled by the Chair and consisting of a minimum of three voting members of the committee. One member of the subcommittee shall be a representative from Innovations and New Ventures. The subcommittee’s recommendation must be unanimous and be conveyed to the full committee at the next meeting of the committee. Expedited motions shall be in the form of one of the following options:

• Approval of a Provisional Patent Application
• Request for Additional Information
• Withhold Approval
• Offer to return the invention to the inventor under the terms of ECU’s Invention Release Agreement
• Combination of two or more of the above
• Other

Conflict of Interest

The committee shall query its members prior to the beginning of each meeting to determine whether any real or perceived conflicts of interest may exist between a committee member and an invention under review. At the committee’s discretion a member may remain for the review of the invention or be recused, depending on severity of the conflict of interest.

Each presenter will be given 15 minutes to present to the ECU Patent Committee. If you feel you cannot fit your presentation into a 15-minute time limit, we strongly encourage you to create a document with supplemental information that can be handed out to Patent Committee members. Additional slides may be prepared for the question and answer session that will follow the presentation.

During your presentation please make sure you address the following topics: invention overview, proof of concept, funding for the project, collaborators, research and development, future plans, target market and overview of current competition. Each topic should be presented to the committee in a clear and concise manner.

Remember that the majority of Patent Committee members will not be experts in your field. Therefore, your presentation should be presented in a way that the significance and complexity of your invention can be understood by a lay person. All slide sets should be submitted to the Office of Licensing & Commercialization at least two weeks in advance of the patent committee meeting date.

Below is a detailed guide on what your slide set should contain:

• Slide 1, Title Page: List the title of your presentation, lead inventor’s name, other inventors and purpose for visiting the committee. For purpose, please put that this is a new invention and you are asking to have a patent filed.
• Slide 2, Problem and Solution: Provide an overview of what the problem and solution is. The problem and solution should be quantified by the number of people impacted and what specific element will be improved. The summary should be written in such a way that is can be easily delivered to a lay audience without losing the significance and importance of the invention. Easy to understand images and diagrams are encouraged.
• Slide 3, Customer/End User: Define the person that will make the decision on whether to purchase and/or use your innovation. Be as detailed as possible as to the characteristics of this customer.
• Slide 4, Value Proposition: Provide a concise bullet point list of what your competitive advantage and value is to your customer. Basically, what specific pain point are you solving for your customer that is different then what is currently out there.
• Slide 5, Competition/Gold Standard/Prior Art: Please list how your invention or idea is different from existing prior art. You do not need to discuss all found prior art, just the items that are most relevant. Further, an analysis of competition should be provided that includes a list of advantages, disadvantages and description of each technology should be delivered in an easy to read table format.
• Slide 6-8, Technical Overview: Present data that highlights your proof of concept. You may add more data slides, but you must remain in the 15-minute time limit. You will be asked to stop presenting once the 15-minute time limit is up. Please list all research and development that is planned for the next year. Also provide any potential hurdles or obstacles that may occur as you move forward. Please list all future plans over the next year. Include planned experiments, publications, conferences, collaborations and other efforts that may help to move this technology into the commercialization phase. Put emphasis on barriers that may prevent commercialization.  In addition to a review of the next year, give the committee an idea of how long you expect it to take before a commercial-ready prototype will be available.
• Slide 9, Team: List all internal and external members that are assisting with the development of the innovation. External experts and mentors are encouraged to be added to the team. Also, please list technicians or students that are currently working on the project.
• Slide 10, Ask of Committee: Provide a concise statement as to what is being requested (i.e. New Patent Filing, Continued Support, Feedback, etc.)