System Procedure 3.26.1 Patent Inquiry Process

System Procedures
 Chapter 3 - Educational Policies

Access a PDF copy of this procedure

for Board Policy 3.26

Part 1. Purpose
To provide a consistent process for colleges, universities, and the system office to evaluate inventions for potential patents.

Part 2. Applicability
 This procedure applies to potential patents in which a college, university, or the system office may have an ownership interest.

Part 3. Definitions

Invention
An invention or discovery is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

Inventor
The creator of an invention that may be patentable.

Patent
A grant made by a government that confers upon the creator of an invention the sole right to make, use, and sell that invention for a set period of time in exchange for disclosure of the invention.

Patent Inquiry
The process used by an inventor within Minnesota State to determine if an invention is patentable and if the college or university is interested in pursuing potential patents.

System legal counsel
 The Minnesota Attorney General’s Office and the Minnesota State Office of General Counsel.

Part 4. Procedure
 Colleges and universities shall complete and submit an Invention Disclosure form and supporting documents to the Office of General Counsel when requesting a review of an invention for potential patents.

Step 1. The Inventor informs the college or university president about the invention and completes and submits an Invention Disclosure form to the Office of General Counsel. Additionally, the Inventor informs the college or university sponsored programs office, college or university business office, or other appropriate college or university office of the invention as required by the terms and conditions of any applicable federal research grant or subaward.

Step 2. Office of General Counsel reviews Invention Disclosure form and supporting documents for possible intellectual property issues, discusses invention with inventor and college or university president and submits report and supporting documents to system Legal Counsel with recommendation on whether further review is warranted.

Step 3. System Legal Counsel reviews report and supporting documents and determines if further review is warranted by a patent attorney. Private patent counsel may only be retained through the Minnesota Attorney General's Office when colleges and universities are pursuing patents.

Step 4. The College or University, in consultation with the system legal counsel, makes final decision as to whether or not to pursue patent(s), based on patent attorney's recommendation, monetary considerations, and other factors and communicates decision to pursue or not pursue potential patents to the inventor and interested parties.

Part 5. Individual's Pursuit of Potential Patents
 If a college, university, or the system offie is not interested in pursuing potential patents now or in the future (e.g. filing would be premature at this time) in jointly owned inventions, joint owners must be informed of this decision. If inventors decide to pursue potential patents at their own expense, they shall notify the college or university president.

Related Documents:

To view any of the following related statutes, go to the Revisor's Office website. You can conduct a search from this site by typing in the statute number.
  • Minnesota Statutes 16C.05 Contract Management; Validity and Review

System Procedure History:

Date of Adoption: 07/12/10
Date of Implementation: 07/12/10
Date of Last Review: 01/09/20

Date & Subject of Amendments:

01/09/20 – Replaced “procedure” with “process” in the title, updated definition of “system legal counsel”, replaced the “intellectual property coordinator” language with “Office of General Counsel”, and added the inventor notice requirement in Part 4, Step 1.

1/25/12 - The Chancellor amends all current system procedures effective February 15, 2012, to change the term "Office of the Chancellor" to "system office" or similar term reflecting the grammatical context of the sentence.

No additional HISTORY.

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