PA 10-96—sHB 5543

Judiciary Committee

Environment Committee

AN ACT CONCERNING PATENTS, TRADEMARKS OR LICENSING AGREEMENTS FOR INVENTIONS AND DISCOVERIES OF EMPLOYEES OF THE CONNECTICUT AGRICULTURAL EXPERIMENT STATION

SUMMARY: This act permits the Connecticut Agricultural Experiment Station's Control Board to seek and obtain patents, trademarks, and licensing agreements relating to inventions and discoveries by station employees. Under the act, the station is entitled to own the entire right, title, and interest in any employee's invention or discovery that (1) is conceived in the course of the employee's performing customary or assigned duties, (2) emerges from any research, development, or other station program; or (3) is conceived or developed wholly or partly at the station's expense, or with the aid of its equipment, facilities, or personnel.

The act requires employees to cooperate in getting their inventions or discoveries licensed or patented and in assigning them as the station director requests. Depending on the circumstances, inventors may share in the proceeds of their work. The act also establishes dispute resolution procedures.

EFFECTIVE DATE: October 1, 2010

EMPLOYEE RESPONSIBILITIES

Under the act, employee inventors or discoverers are deemed to be obligated by their employment to:

1. disclose their inventions fully and promptly to the station director;

2. assign to the station the entire right, title, and interest in each invention and discovery and execute instruments of assignment to that effect; and

3. execute a patent or license application or other instrument of assignment for their invention or discovery as the director requests, and give all reasonable aid in pursuit of the application or assignment and procurement of the patent, license, or assignment.

Unless the invention or discovery is subject to federal grant restrictions, the act gives the station the entire beneficial ownership of it, including all proceeds, property, and rights of any character, tangible and intangible. The proceeds must be deposited with the station and used in scientific inquiries and experiments under the complete control of the board.

EMPLOYEE SHARE

Under the act, an employee is entitled to at least a 20% share of the net proceeds of his or her sole invention or discovery, as long as he or she adequately carried out the responsibilities described above. The board can increase the amount of the employee share. Net proceeds must be computed reasonably promptly by the board or with the board's approval by deducting costs and expenses reasonably allocated to the invention or discovery, including those associated with seeking and obtaining any patent, trademark, or licensing agreement; maintenance or litigation costs; and the costs of evaluating the invention or discovery's commercial potential.

The act specifies that if two or more station employees jointly are responsible for the invention or discovery, each is entitled to a share of at least the 20% net proceeds that is proportionate to their roles as determined by the board.

DISPUTES

The act provides that disagreements about (1) how the invention or discovery is allocated, (2) parties' obligations or how they carried them out, or (3) whether any employee is entitled to a share of the net proceeds must be settled by:

1. voluntary arbitration, if the disputants agree to be bound by the arbitrator's decision;

2. compulsory arbitration, if provided in any contract between the disputants; or

3. a Connecticut court, if arbitration is rejected.

The act allows the board to establish and regulate, equitably and in the public interest, arbitration rules it deems appropriate. It may also make contracts for compulsory arbitration in the station's name.

REGULATIONS

The act permits the control board to adopt regulations using the Uniform Administrative Procedure Act to govern the handling of matters concerning the station's inventions and discoveries.

BACKGROUND

Connecticut Agricultural Experiment Station (CAES)

Through research for Connecticut and the nation, CAES:

1. develops, advances, and disseminates scientific knowledge;

2. improves agricultural productivity and environmental quality;

3. protects plants; and

4. enhances human health and well-being.

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