18.2. Patent Agreement for Employees

As an employee of Michigan Technological University, I realize that it is or may be my duty or privilege to devote some or all of my time to research, and that the stimulation, facilities, and equipment of the University which are provided me may greatly aid me in prosecuting research and in conceiving and/or reducing to practice discoveries and patentable inventions.

1. In consideration of my employment by the University, and of the salary paid me by said University, and for the purpose of definitely settling any question or possible controversy which may arise as to the ownership of any patent which may be granted to me hereafter, I hereby agree that, in the event that I, either solely or jointly with others, shall conceive and/or reduce to practice any discovery or invention, in the course of my employment by - or through the use of the facilities and equipment of - the University, whether made during the usual working time or otherwise, the same shall be and become the property of the University. I further agree that:


1. I will promptly disclose any such discovery or invention freely and fully to the President or other proper officer of the University.
   
   
2. If the University shall at its sole discretion determine that the filing of a patent application is warranted, I will, at its request, but at the expense of the University except as provided for in par. 3.a. hereof, make proper application for United States and foreign patents of the same, and will assist in every way in preparing such application or applications, in proceedings toward obtaining such patents and in any controversy or legal proceedings relating to such discoveries, inventions, applications, or patents resulting therefrom.
   
   
3. Upon request of the University I will assign discoveries, inventions, applications, or any patents issued on such applications relating to my disclosure to the Board of Control of the University, with full and complete rights, powers and privileges of ownership. In this connection:
   
   
   1. The University shall pay to me, at least annually, fifteen percent of the net proceeds received by the University as a result of any license orsale of said discoveries, inventions, applications, or any patent issued on such applications. If such invention or discovery shall have been developed by me in collaboration with or with the assistance of any other person or persons who have entered into agreements with the University similar to this, and are entitled to participate in the net proceeds of such patent, the payments hereunder shall be made to me and such other persons in such proportionate shares as we may agree upon, it being understood and agreed that the aggregate of the payments to all persons shall not exceed fifteen percent of the net proceeds of any one patent.
      
      

      The term "net proceeds" as used in this agreement shall mean the sum of money remaining from any gross proceeds received by the University less all costs and expenses incurred or obligated in connection with obtaining, maintaining, defending, enforcing, selling, or licensing the patent, protecting it from infringement and any other proper charges paid by the University in connection with the patent, whether U.S. or foreign, during the year for which payment to me is being made.
      
      

   2. The University shall use the balance of such net proceeds after paying the fifteen percent hereinbefore mentioned for the furtherance of research at said University and for other purposes which its Board of Control may determine from time to time.


2. In the event that, during my employment by the University, I may be engaged in a sponsored research or other project under a contract between the University and an outside agency, Federal or State Government, or a company, I also agree that:
   
   
   1. If the terms of the contract conflict with the terms hereof, the terms of such project shall be controlling as to any such conflict.
      
      
   2. I shall abide by such contract as to any obligations imposed therein upon me beyond the terms of this agreement, and will execute any and all documents which the University, in its sole discretion, deems necessary in this regard.
      
      
   3. Any change in the terms of this agreement or additional obligations imposed upon me resulting from the application of this par. B. shall be effective only for the term of the contractual commitment governing said sponsored project.
   
   
3. I understand that par. B. in no way reduces or diminishes the necessity of my prompt and full disclosure to the University of any discovery or invention which I shall make in the course of my association with the University, regardless of the source of funds for financial support.