Policies and Procedures

Faculty and other employees desiring to perform consulting work for outside organizations are required to obtain the prior concurrence in accordance with current University policy.

Inventions and discoveries made or developed solely in the course of consulting work performed with prior concurrence in accordance with current University policy shall not be considered as having been made or developed in the course of University employment unless otherwise provided in the concurrence or unless a significant use of University facilities is involved, in which case the University will determine the University’s involvement by the following: In order to provide incentive and encouragement to faculty members, other employees and students of the University in pursuing their personal research interests outside the scope of their official duties and responsibilities and not programmed or substantially supported by the University although slight use may be made of University facilities, any resulting invention or development which may be patentable may be submitted to the University for acceptance or rejection, or may be disposed of and handled by the innovators as they desire. However, all personal discoveries or inventions will be reported to the University, regardless of submission for acceptance or rejection by the University for a determination in accordance with this section. Generally, projects conducted by students and faculty or employees as a part of formal instruction or thesis projects are considered personal research and outside the scope of official duties and responsibilities and programming unless such thesis projects are conducted as a part of a contractual research effort or substantially supported by the University.

Inventions arising from consulting engagements by faculty and other employees not having prior concurrence or approval by the appropriate Vice President and involving substantial use of University facilities will be governed as follows, notwithstanding any agreement between the consultant and his client: The patent rights to inventions and developments resulting from research or other activities conducted by faculty, other employees or students within the field of their official duties and responsibilities or programmed or substantially supported by the University are retained by the University. Disposition of patent rights is handled by the University. However, the faculty members, other employees and/or students, who are the innovators of record may participate in the income from discoveries and inventions on which patents are obtained.

Students working with faculty on consulting projects are governed by this same policy.

Auburn University cannot give up the right of our faculty to publish. Our standard position is as follows: Auburn’s Investigators shall have the right to publish or otherwise publicly disclose information gained in the course of the research provided that copies of all materials to be published will be submitted to Sponsor for review sixty (60) days prior to being submitted to publication. Fair consideration shall be given to Sponsor’s comments; however, Auburn shall have the right to the final decision. Any and all proprietary information of Sponsor will be excluded from publication. In order to permit Sponsor an opportunity to determine if a patentable invention is disclosed, the Principal Investigator will provide Sponsor with drafts of intended articles, whenever possible as soon as they reach a stage suitable for distribution.  Sponsor shall inform Auburn and the author(s) within thirty (30) days so as not to delay publication whether in its judgment the material contains information on which patent applications may or should be filed. If Sponsor wishes to file a patent application, Sponsor may request that publication be delayed for an additional thirty (30) days.

Auburn University cannot commit to binding arbitration, however the University can agree to non-binding mediation. As an instrumentality of the State of Alabama, Auburn University falls under the purview of the Alabama State Constitution which states in Article I, Section 14 “That the State of Alabama shall never be made a defendant in any court of law or equity.”

Auburn is committed to a policy that ideas or creative works produced at Auburn should be used for the greatest possible public benefit, and accordingly believes that every reasonable incentive should be provided for the prompt introduction of such ideas into public use, all in a manner consistent with the public interest. In addition, a large percentage of Auburn's research funding is derived from the Federal government, which under the requirements of Bayh-Dole maintains that federally funded inventions be commercialized for public benefit.

Due diligence milestones are mandatory in all of our license agreements, but may be modified on a case by case basis. Due diligence is a safeguard which prevents a licensee from shelving an invention only to keep it away from use by its competitors.

The University cannot submit to any type of equitable or injunctive relief. As an instrumentality of the State of Alabama, Auburn University falls under the purview of our State Constitution which states in Article I, Section 14 “That the State of Alabama shall never be made a defendant in any court of law or equity.”

As an instrumentality of the State of Alabama, Auburn University cannot enter into agreements that are governed by the laws of another state or country. Our options are to change the non-Alabama law to Alabama state law, or to delete the section in its entirety and remain silent on the issue of governing law. For all license agreements, the governing law must be that of the State of Alabama.

As an instrumentality of the State of Alabama, Auburn University cannot indemnify other parties. To indemnify another party allows for the possibility of entering into a court of law or equity which is prohibited by our State Constitution which states in Article I, Section 14 “That the State of Alabama shall never be made a defendant in any court of law or equity.”  Additionally, the University requires that outside parties indemnify the university in license agreements and some research agreements.  This is required in order to protect the university and its public services as a whole, the importance of which far outweighs our innovation advancement and commercialization efforts.

The University’s standard position is that it does not relinquish ownership of or assign away its rights to its intellectual property and inventions (IP), rather that it licenses the right to commercialize such IP.

It is the University’s policy not to warrant or guarantee anything; however the University can "represent".  The terms “warrant” and “guarantee” are weighted such that by agreeing to them allows for the possibility of entering into a court of law or equity which is prohibited by our State Constitution which states in Article I, Section 14 “That the State of Alabama shall never be made a defendant in any court of law or equity.”