Intellectual Property in Student Developed Inventions FAQs

CR&R 100.020.C.2 states:

2. "Employee" as used herein shall be deemed to mean 1) any person receiving compensation from the University for services rendered, regardless of whether the Employee be full-time or part-time, 2) any person receiving compensation paid through the University from any funds placed in its hands for distribution, or 3) any person that has voluntarily elected to enter into a written agreement with the University in exchange for the University's agreement to treat such person as an Employee for purposes of this policy. For purposes of the definition of Employee and for the avoidance of doubt, student financial aid including, but not limited to, scholarships, grants, loans, tuition waivers and educational fee reductions, generally available to University students and unrelated to any provision of services by the student to the University shall not be interpreted as compensation. Also, for purposes of this policy, full-time students receiving compensation for services rendered to the University which services are unrelated to research or investigation and are unrelated to the creation of computer software shall not be considered to fit within the foregoing definition of Employee.

CR&R 100.020.D.6 states:

1. In general, students of the University of Missouri will be entitled to own any Invention or Plant Variety made during their enrollment as a student of the University and will generally not be required to assign his or her ownership to the University; provided, however, the foregoing general rule does not apply and the student will be required to assign his or her ownership interest to the University in any circumstance in which the student meets the definition of Employee, as defined in Section 100.020.C.2. hereof provided such Invention or Plant Variety was developed in the course of the student-Employee's service to the University.
2. Without limiting the language of the foregoing general rule or the language of the foregoing exceptions to the general rule, the following are examples of fact situations in which the University will not claim ownership of an Invention or Plant Variety made by a student of the University:
   (1) The Invention or Plant Variety was developed by a student as part of a University class project using no greater University resources than those generally available to all other students within the class or than those available to the student as part of his/her enrollment with the University.
   (2) The Invention or Plant Variety was developed by a student as part of a University approved student competition using no greater University resources than those generally available to all other students within the competition or than those available to the student as part of his/her enrollment with the University. The student shall be entitled to receive any monetary or other prize awarded to the student for his/her performance under such competition in accordance with the rules of the competition and such prize shall not be considered compensation under Section 100.020.C.2 hereof.
   (3) The Invention or Plant Variety was developed by a student as part of a University approved extracurricular activity, using no greater University resources than those generally available to all other students participating in the activity or than those available to the student as part of his/her enrollment with the University.
   (4) The Invention or Plant Variety was developed by a student on his/her own free time, outside of any University class or sponsored activity, and using no greater University resources than those generally available to all other students as part of their enrollment with the University.
3. The Patent Administrator shall implement reasonable procedures designed to make students aware of this Section 100.020, and to provide one or more avenues for students to receive information regarding to the University's interpretation of the student's rights and obligations with respect to Inventions and Plant Varieties in which they may be an inventor or co-inventor.

ANS: The student or faculty member should contact the campus technology transfer office.

• UMC: Office of Technology Advancement, 310 Jesse Hall, Columbia, MO 65211
  • Associate Vice Chancellor for Research: Michele Kennett, JD, MSN, LLM, PhD (kennettmr@missouri.edu)
• UMKC: Office of Technology Transfer, 4747 Troost Avenue, Room 120 Kansas City, MO 64110-2499
  • Director: Eric W. Anderson, JD, MBA (ericwa@umkc.edu)
• UMSL: Office of Technology Transfer and Economic Development, 341 Woods Hall, 1 University Blvd., St. Louis, MO 63121
  • Director: Tamara Wilgers (wilgerst@umsl.edu)
• S&T: Office of Technology Transfer and Economic Development, Technology Development Center @ Innovation Park, Suite 145, 900 Innovation Drive, Rolla, MO 65401
  • Interim Director: John E. Woodson (jwoodson@mst.edu)

ANS: Patent law generally defines an “inventor” of a patentable invention as someone who conceives of a material contribution to the subject matter of at least one claim of a patent. The scope of a patent is not determined until a patent is examined and issued by the Patent Office such that a definitive determination of inventorship cannot typically be made until that time. Moreover, inventorship can change during the patent application process as the scope of the claimed invention changes. Nonetheless, for purposes of these FAQs, an inventor must have conceived of a definite and permanent idea of the invention as it will be used in practice. The idea must be more than just a “bare idea”; it must be definite and permanent in the sense that it involves a specific approach to the particular problem at hand. This typically means that conception of an invention is complete when only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Moreover, the contribution to conception must be not insignificant in quality when that contribution is measured against the dimension of the full invention. This means that a person who supplies background data or general information, without more, does not become an inventor. Proof of conception requires corroborating evidence that is sufficient in scope and detail to enable one skilled in the art to make the invention.

Importantly, a person is not an inventor if he/she merely poses the problem to be solved or suggests a desired result. A person is also not an inventor if he/she merely carries out experiments planned wholly by another person or does not contribute to the inventive concepts. Thus, a person who actually made a physical embodiment of the invention may not be an inventor, no matter how difficult the reduction to practice was. This means that a student who merely carries out experiments designed by a University faculty member is not an inventor.

ANS: No. Authorship and inventorship are two different things. Not all authors of an academic manuscript, thesis, or dissertation describing an invention qualify as inventors.

ANS: The campus technology transfer office will typically make an initial, non-legal determination of those persons, including any students, who were involved in contributing to an invention. However, the final determination of inventorship will be made by a patent attorney applying the legal standards of inventorship under U.S. patent law. Sometimes, the attorney will examine notebook pages or other tangible proof of inventorship.

ANS: No. CR&R 100.020.D.6 does not distinguish between graduate and undergraduate students.

ANS: Yes, generally speaking, if a student is compensated by the University for the student’s work involving research or investigation or the creation of computer software, that leads to an invention, then the student is an “Employee” under the CR&R. The student-Employee’s rights in the invention are subject to other provisions of CR&R 100.020, which provide for University ownership of the invention.

ANS: If a student (graduate or undergraduate) receives a stipend in exchange for the student performing research or working in a laboratory, the student is an “Employee” under the CR&R. CR&R 100.020.C.2 states that “student financial aid including, but not limited to, scholarships, grants, loans, tuition waivers and educational fee reductions, generally available to University students and unrelated to any provision of services by the student to the University shall not be interpreted as compensation.” Importantly, a “stipend” awarded in exchange for a student performing research or investigation or the creation of computer software is treated as “compensation” such that the student is an” Employee” of the University for purposes of CR&R 100.020.

ANS: Absent other facts (such as those generally discussed in FAQ #10-11 or as otherwise agreed to in writing), under CR&R 100.020.D.6.b.1, if a student takes any course for-credit and develops an invention “as part of a class project using no greater University resources than those generally available to all other students within the class,” the intellectual property associated with that invention belongs to the student. The University will not require that the student assign the student’s rights in the invention to the University. This is the case no matter who paid for the course (e.g., if the student received a scholarship for the for-credit course).

ANS: Absent other facts (such as those generally discussed in FAQ #10-11 or as otherwise agreed to in writing), under CR&R 100.020.D.6.b.1, if a student takes any course for-credit and develops an invention “as part of a class project using no greater University resources than those generally available to all other students within the class,” the intellectual property associated with that invention belongs to the student. The University will not require that the student assign the student’s rights in the invention to the University. This is the case no matter who paid for the course (e.g., if the student received a scholarship for the for-credit course).

ANS: Absent other facts (such as a written agreement to the contrary), the invention is owned by the student under CR&R 100.020.D.6.b.1. In some courses, situations may occur where students are presented with the opportunity to participate in projects or activities funded by the University in which the University desires, at its discretion, to either (1) obtain an academic/research license from the student such that the University can use the student invention and the results thereof or (2) obtain an assignment from the student such that the University owns the student invention. Students are never obligated to participate in projects or activities that require the students to license or assign their intellectual property to the University. In these situations, each student will always be presented with two options: (1) to participate in projects or activities that do not require the student to license/assign his/her intellectual property to the University or (2) to participate in projects or activities that require the student to license/assign his/her intellectual property to the University. That is, each student will have a choice as to whether to participate in projects requiring the student to license/assign his/her rights. In other words, each student will have a “non-assignment” option or "non-license" option in every course.

The student’s grade and/or evaluation of performance in the course will not be affected by the student’s decision to participate or not to participate in projects or activities requiring the license/assignment of the student’s intellectual property to the University.

If the University wants to acquire an academic/research license to use the student’s intellectual property rights in the student invention, the University needs to have the students execute a student selection agreement, such as Student IP Form #1A (Student Selection Agreement) and an academic/research license agreement, such as Student IP Form #1B (Non-Exclusive License to University). Student IP Form #1A and Student IP Form #1B are available from the campus technology transfer office or the sponsored programs office (see FAQ #1).

If the University wants to acquire ownership of the student’s intellectual property rights in the student invention, the University needs to have the students execute a student selection agreement, such as Student IP Form #2A (Student Selection Agreement) and an assignment agreement, such as Student IP Form #2B (Assignment to University). Student IP Form #2A and Student IP Form #2B are available from the campus technology transfer office or the sponsored programs office (see FAQ #1).

ANS: Absent other facts (such as a written agreement to the contrary), the invention is owned by the student under CR&R 100.020.D.6.b.1. In some courses, situations may occur where students are presented with the opportunity to participate in projects or activities in which a Sponsor submits a problem to be solved by the students. The Sponsor may provide monetary funding to the University for the project/activity. The Sponsor may wish to share its confidential information with the students. In such cases, the Sponsor may require any resulting intellectual property be licensed to the Sponsor or owned by the Sponsor.

Students are never obligated to participate in projects or activities that require licensing or the assignment of the student’s intellectual property to the Sponsor. In these situations, each student will always be presented with two options: (1) to participate in projects or activities that do not require the student to assign/license his/her intellectual property to the Sponsor or (2) to participate in projects or activities that require the student to assign/license his/her intellectual property to the Sponsor. That is, each student will have a choice as to whether to participate in projects requiring the student to assign his/her rights. In other words, each student will have a "non-assignment" option or “non-license” option in every course.

The student’s grade and/or evaluation of performance in the course will not be affected by the student’s decision to participate or not to participate in projects or activities requiring the licensing/assignment of the student’s intellectual property to the Sponsor.

Sponsors of student course projects should work with the applicable faculty member to complete the non-binding Student IP Form #3 Worksheet (Student Classroom Project Worksheet), which may be downloaded here. The worksheet is used by the campus technology transfer office and/or the campus sponsored programs office to prepare a Student IP Form #3 (Student Classroom Project Agreement), along with any applicable exhibits, between the Sponsor and the University. The applicable exhibits may include one or more of the following:

• Student IP Form #3A: Student Selection Agreement – for use in for-credit courses in which the Sponsor requires an non-exclusive license of the student intellectual property to the Sponsor (use with Student IP Form #3B)
• Student IP Form #3B: Student Non-Exclusive License Agreement to Sponsor (use with Student IP Form #3A)
• Student IP Form #3C: Student Selection Agreement – for use in for-credit courses in which the Sponsor requires an assignment of the student intellectual property to the Sponsor (use with Student IP form #3C)
• Student IP Form #3D: Student Intellectual Property Assignment to Sponsor (use with Student IP form #3D)
• Student IP Form #3E: Faculty Acknowledgment for Student Classroom Project Agreement – Sponsor IP Ownership
• Student IP Form #3F: Student Classroom Project Competition Terms and Conditions

ANS: As discussed in FAQ #11, in some courses, situations may occur where students are presented with the opportunity to participate in projects or activities in which a Sponsor submits a problem to be solved by the students. The Sponsor may ask the student to not disclose or use confidential information provided by the Sponsor and/or the results of the project or activity. Student IP Form #3G (Non-Disclosure Agreement for Confidential Information in Student Classroom Projects) may be used under such circumstances.

The Sponsor may ask the student not to compete with the Sponsor for a period of time. Importantly, among other things, agreeing to such terms may restrict the student’s employment opportunities, including the extent to which the student may disclose or use information in the student’s future employment, and as such, students should carefully review such terms prior signing.

The University will not provide legal advice to its students in conjunction with the negotiation or execution of an NDA or non-compete with the Sponsor. In general, faculty members are encouraged, but are not obligated, to refrain from permitting a Sponsor to ask students to sign over-reaching NDAs and/or non-compete provisions and are encouraged to contact the campus technology transfer office for assistance.

The University will treat the student as set forth in FAQ #8-11. However, when the student is otherwise employed by a for-profit company or non-profit organization, the employer may assert ownership rights in any inventions that the student creates. As such, in general, (1) the student should not participate in any project requiring the student to license/assign intellectual property to the University as set forth in FAQ #10 or license/assign intellectual property to a Sponsor as set forth in FAQ #11 or (2) the student should obtain written documentation from his/her employer to make sure that the student can license/assign intellectual property to the University or Sponsor if the student wants to participate in the project requiring the student to license/assign intellectual property to the University or Sponsor.

ANS: Absent other facts (such as a written agreement to the contrary), the student owns the invention under CR&R 100.020.D.6.b.3. However, if the student is paid for the work involving research or investigation or the creation of computer software, the student is an “Employee” under CR&R 100.020, and the University may require the student to assign his/her rights in the invention to the University.

Undergraduate students may have the opportunity to observe or perform work in a faculty member’s laboratory, even though they are not paid and the work is outside of any for-credit course. The University considers any inventions developed by the student under such circumstances to be “part of a University approved extracurricular activity.”  Thus, if the invention is developed by the student using no greater University resources than those generally available to all other students participating in the activity or than those available to the student as part of his/her enrollment with the University, then the University will not claim ownership of the invention under CR&R 100.020.D.6.b.3

ANS: Faculty members should be aware that federal funding of research does not automatically vest to the University ownership of the resulting intellectual property associated with the research. As such for federally funded research, the faculty member should either (1) ensure that all students working on the research are paid such that the students are Employees under CR&R 100.020 and will be required to assign their rights to the University or (2) ensure that any unpaid students enter into a written agreement with the University to be treated as an “Employee,” such as the agreement provided in Student IP Form #4 (Assignment to University). Student IP Form #4 is available from the campus technology transfer office or the sponsored programs office (see FAQ #1).

ANS: Faculty members should be aware that if the University enters into a sponsored research agreement with an industry sponsor, the agreement typically requires the University to ensure that all individuals working on the project are obligated to assign their intellectual property rights to the University. The agreement also typically grants the industry sponsor an option for an exclusive license to the inventions arising from the research or grants the sponsor ownership of such inventions. Because the University would not likely own the entire right, title, and interest in an invention with an unpaid student inventor absent an agreement with the student, the University may not be able to fulfill its contractual obligations to the industry sponsor. Thus, unpaid students should not work on industry sponsored research without proper agreements in place.

For industry sponsored research, the faculty member should either (1) ensure that all students working on the research are paid such that the students are Employees under CR&R 100.020 and will be required to assign their rights to the University or (2) ensure that any unpaid students enter into a written agreement with the University to be treated as an “Employee”, such as the agreement provided in Student IP Form #4 (Assignment). Student IP Form #4 is available from the campus technology transfer office or the sponsored programs office (see FAQ #1).

ANS: Yes, if the University agrees to such an assignment. CR&R 100.020.C.2.3 defines an “Employee” as including “any person that has voluntarily elected to enter into a written agreement with the University in exchange for the University's agreement to treat such person as an Employee for purposes of this policy.” If the University and student agree to treat the student as an “Employee,” the student will be treated like other Employee-inventors. This means that the student will be obligated to assign his/her rights in the invention in accordance with CR&R 100.020.D.1.a and that the student will be entitled to share in revenues (if any) the University receives in accordance with CR&R 100.020.H. This latter subsection says that the inventors collectively receive one-third of the money the University receives through commercialization of the invention.

Unpaid students who wish to elect to be treated as an “Employee” may sign the Student IP Form #4 (Assignment to University). Student IP Form #4 is available from the campus technology transfer office or the sponsored programs office (see FAQ #1).

ANS: The University is not obligated to accept any assignment of an invention from a student to the University. The University will evaluate whether to agree to treat an unpaid student who develops an invention as an Employee on a case-by-case basis. Typically, the University will agree to treat the student as an Employee if there is government funding or industry funding of the research. See FAQ #14, 14a, 14b. In addition, the University will typically agree to treat the student as an Employee when there are one or more co-inventors who are also University Employees (e.g., a faculty member) such that the University already has an ownership interest in the invention via the University Employee (i.e., via the faculty member).

ANS: The agreement between the University and the student can be made at any time, but is preferably made prior to the performance of any work by the unpaid student on a research project. For example, a faculty member can request that the unpaid student agree to be treated as an “Employee” prior to the student’s performance of any research or participation in the faculty member’s laboratory. Alternatively, for example, the University and the unpaid student can agree that the student will be treated as an “Employee” after the unpaid student submits the invention to the campus technology transfer office and requests that the student be treated as an Employee.

ANS: The faculty member should either (1) ensure that all students working on the research are paid such that the students are Employees under CR&R 100.020 and will be required to assign their rights to the University or (2) ensure that any unpaid students enter into a written agreement with the University to be treated as an “Employee.” For option (2), the faculty member can request that the student execute Student IP Form #4 (Assignment to University). Student IP Form #4 is available from the campus technology transfer office (see FAQ #1). For more details on the agreement to treat the student as an “Employee,” see FAQs #14, #14a, and #14b.

Although the CR&R do not expressly state who decides whether the University will or will not assert ownership in intellectual property developed by a student, the University’s current practice is to vest this determination with the Vice President for Research and Economic Development for the University of Missouri System. Typically, the student-inventor will provide a complete written description of the invention and the circumstances of the invention’s creation to the campus technology transfer office. The director of the campus technology transfer office will review the request and make a preliminary determination about whether to assert or not assert ownership of the invention. If the student and the director are in agreement, the director will make a recommendation to the Vice President for Research and Economic Development. The applicable Department Chair, Dean, and/or Vice Chancellor/Provost for Research may also be involved in the recommendation. However, if the campus technology transfer office director and student are not in agreement, the matter will be referred to the Patent Administrator. If agreement cannot be reached between the student and the Patent Administrator, then the Patent Administrator will refer the matter to the Patent Committee. Based on the information presented to it, the Patent Committee will make a recommendation to the President who will make the final determination.

In order to have the University make an express determination that it will not assert ownership in an invention developed by a student, the student must provide the pertinent facts to the University. The student may fill out a request using Student IP Form #5 (University Non-Assertion of Student Rights in Intellectual Property Request and Agreement). Student IP Form #5 is available from the campus technology transfer office (see FAQ #1).

An assignment of a patent is the transfer to another of a party’s entire ownership interest or percentage of that party’s ownership interest in the patent.  In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent.

As compared to assignment of patent rights, a “license” transfers a bundle of rights which is less than the entire ownership interest.  For example, the rights may be limited as for a period of time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.

Licenses for intellectual property may be exclusive or non-exclusive.  In general, an exclusive license prevents the patent owner and third parties from commercially exploiting the patent for a specified length of time, by geographic region, and/or solely within the field of use set forth in the license agreement.  In contrast, a non-exclusive license grants the licensee the right to commercially exploit the patent, but the patent owner also remains free to commercially exploit the patent and to grant other third parties the right to do so as well.

Lisa Lorenzen, PhD, Assistant Vice Chancellor, Technology Advancement Office at MU, lisalorenzen@missouri.edu is the Patent Administrator of the University of Missouri System Patent & Copyright Committee.

Section 100.020 of the University of Missouri’s Collected Rules & Regulations provides for the appointment of a Patent Committee to review patent and plant variety matters referred to it and, as may be required by the Collected Rules & Regulations, to make recommendations to the President of the University.  The Patent Administrator has responsibility for referring to the Patent Committee:  (1) all matters concerning the Employee-inventor(s) participation in the financial return from the patents, (2) any conflicting claims to protectable findings, (3) Employee-inventor claims to ownership to patent and Plant Variety rights, and (4) such other matters as he/she deems necessary to protect the interests or rights of the Employee-inventor and the University.

The Patent Committee is comprised of eight faculty members (two from each campus) and the chief research officer from each campus.  Ex-officio members include the General Counsel or her/his delegate, the Patent Administrator, UM Executive Vice President for Academic Affairs, and each campus technology transfer office director.