UNH VI.F Operation and Maintenance of Property Revised November 2006
2. Intellectual Property Policy
2.1 References
UNH
Policy on Ownership and Management of Research Data – UNH VI.F.6
UNH Policy on Misconduct in Scholarly Activity - UNH II.C
UNH Policy on Financial Conflict of Interest in
Research – UNH II.D
UNH
Policy on Management of Equity Interests in Start-up Companies - UNH IV.D
UNH Guidelines on
Material Transfer Agreements - http://www.orpc.unh.edu/MTA.htm
Primer on Copyright Law and Recommended
Procedures
2.2 Preamble
2.2.1 The
University of
2.2.2 Intellectual
Property that has commercial potential may be protected under a variety of
mechanisms. Most commonly these include Copyrights, Patents, Plant Variety Protection,
Trademarks, and Trade Secrets. The incentive to the creators of Intellectual
Property must be preserved so that their creative abilities and the creative
abilities of others are encouraged and stimulated. The benefits derived from Intellectual
Property should be used to further the teaching and/or research programs of the
University.
2.2.3 The
University has a responsibility to use all available resources to ensure
utilization of Inventions and materials for the public good and to expedite
their development and transfer. Concurrently, the rights and privileges of Inventors
or creators must be preserved so that their initiatives and entrepreneurship
may be encouraged, stimulated, and rewarded.
2.2.4 To
foster such activities, the University shall maintain an Intellectual Property
policy that is balanced with the University’s mission and is fair to all
parties.
2.3 Intellectual
Property Administration
2.3.1 Through
the Office of the Vice President for Research (VPR), the Office for Research
Partnerships and Commercialization (ORPC) has the responsibility to manage the
University’s Intellectual Property. This responsibility includes, but is not
limited to, the following:
2.3.1.1 To act in
accordance with the policy herein set forth;
2.3.1.2 To make
recommendations to the VPR and the President with respect to any changes in the
Intellectual Property Policy of the University as, from time to time, may be
deemed appropriate;
2.3.1.3 To
maintain files and records of Intellectual Property activities including the
institutional expenses related to protection of the Intellectual Property and
commercialization;
2.3.1.4 To submit
an annual report to the President concerning the University’s Intellectual
Property activities;
2.3.1.5 To publicize
and promote the University’s Intellectual Property Policy and to vigorously
pursue opportunities arising therefrom;
2.3.1.6 To comply
with Federal regulations regarding the reporting, licensing, and maintenance of
Inventions;
2.3.1.7 To
allocate appropriate resources to manage the University’s Intellectual Property;
and
2.3.1.8 To offer
information and assistance to University members concerning the procedures that
should be followed in order to gain adequate protection between the time of
conception of an invention, discovery or copyrightable work and the processing
of a formal application for a patent or proprietary agreement.
2.3.2 The administration of the principles and Policy set forth herein
shall be the responsibility of the ORPC.
2.4 Applicability
2.4.1 This
Policy applies to all members of the University community (hereinafter referred
to as Covered Individuals) including, but not limited to, all faculty, administrators,
staff, students; visiting scholars, scientists, and postdoctoral fellows; and
any other persons at the University involved in carrying out the University’s
mission at or under the auspices of the University.
2.4.2 This
Policy applies regardless of the source of support for the research/scholarly
activity and therefore does not distinguish between funded and unfunded
efforts, except where specific sponsor requirements prevail.
2.4.3 This
Policy should not be construed to limit the right of any member of the
University community to conduct his/her research/scholarly work.
2.5 Definitions. Throughout this Policy statement, terms
related to development, transfer, and commercialization of Intellectual
Property are used. These terms are briefly described below. For further
clarification and examples, please refer to the ORPC website http://www.orpc.unh.edu/ .
2.5.1 Assignment.
The process of transferring ownership of the Intellectual Property from
the Inventor/author/developer to another individual or entity, such as another
educational institution or corporation. For purposes of this Policy, Assignment
is to the
2.5.2
Copyright. As defined in 17 US Code, a Copyright is
granted by the
2.5.2.1 Scholarly works (e.g., textbooks, class notes,
research monographs and articles, journal publications, classroom and research
instructional materials);
2.5.2.2 Creative/artistic works (e.g. music, art,
dance, poetry, fiction, and film);
2.5.2.3 Copyrightable software (academic, research, and
commercial);
2.5.2.4 Mask Works (semiconductor chip designs
protected under a Federal law administered by the U.S. Copyright Office);
2.5.2.5 Other developing areas, including but not
limited to multi-media works and electronic communications (including media
used for distance learning).
2.5.3 Covered Individual. Any faculty member, staff member, student,
visiting scholar, or any other person at the University involved in carrying
out the University’s mission at or under the auspices of the University.
2.5.4 Disclosure. The act of reporting an Invention or other
creation of Intellectual Property.
2.5.5 Exempted Scholarly Work. This applies to Copyrightable Material where
the University waives its ownership interest in favor of the author. See
Section 2.8.
2.5.6 Intellectual Property. As used in this Policy, includes not only
technology such as Inventions, Know-how, discoveries, creations, or authored
works which may be protected legally (such as with Patents and Copyrights), but
also the physical or tangible embodiment of the technology, such as biological
organisms, plant varieties, or computer software based on or derived from Research
Data.
2.5.7 Invention.
Any new, useful and non-obvious machine, composition of matter,
manufacture, process, or any improvement to these, that has been both conceived
and reduced to practice. Examples: new fluorescence optics instrument, new
algorithm for data compression, new chemical process, new plant variety, or new
monoclonal antibody.
2.5.8 Inventor(s).
The person(s) who devises, creates, and produces something not
previously known or existing.
2.5.9 Invention Disclosure. The process of
disclosing the invention or intellectual property to the University’s Office
for Research Partnerships and Commercialization. (See Form B.)
2.5.10 Know-How. Often associated with Tangible Research Property,
Know-how may include detailed and specific information regarding how to manipulate
specific biological materials or create and maintain specific devices. Know-how
of this nature seldom warrants publication because of its restricted
application. Such Know-how may be extremely valuable to licensees or developers
of Tangible Research Property.
2.5.11 License.
A legal contract that grants a commercial partner the rights to develop,
make, use, or sell Intellectual Property. The License establishes the
obligations of each party and sets fees and royalties. It also identifies
whether the License is exclusive or non-exclusive, the field of use, and the
territory.
2.5.12 Material Transfer Agreement (MTA). A legal document that governs the transfer of
Tangible Research Property between the University and a potential partner for
testing and evaluation purposes. See UNH Guidelines on Material Transfer
Agreements.
2.5.13 Net
Income. Net Income is the amount of
money cumulatively received after deduction of expenses connected with
developing, securing, maintaining and commercializing the Intellectual Property.
For example: UNH receives an initial License fee of $100,000 and has Patent
expenses of $15,000 and licensing expenses of $3,000. The Net Income is
$100,000 minus $18,000, leaving $82,000.
2.5.14 Owner(s).
The individual(s) holding the rights and title to the property. Property
can be either tangible or intangible.
2.5.15 Paid-Up License. A term used to describe a License where the
licensor receives no additional Royalty payments.
2.5.16 Patent. As defined in 35 US Code, a Patent is a grant
of a property right by the U.S. Patent and Trademark Office to the Inventor for
an Invention that is novel, useful, and non-obvious.
2.5.17 Plant Variety Protection Certificates. These certificates are issued by the U. S.
Department of Agriculture for sexually produced plants.
2.5.18 Research Data.
Data generated through research, including lab notebooks, research
notes, research data reports, notebooks, survey data, etc. See UNH Policy on
Ownership and Management of Research Data.
2.5.19 Royalty.
The cash revenue paid by a commercial partner, other university, or
other entity for the right to use an Intellectual Property. Royalty revenues
are normally expressed as a percentage of the sales.
2.5.20 Spin-Out.
For purposes of this Policy, any company started as a result of
licensing the University’s Intellectual Property.
2.5.21 Tangible Research Property. Perceptible items produced in the course of
research including such items as biological materials, engineering drawings,
integrated circuit chips, computer databases, prototype devices, circuit
diagrams, and equipment. Individual items of Tangible Research Property may be
associated with one or more intangible properties, such as Inventions,
Copyrightable Works, Trademarks, and Know-how. An item of Tangible Research
Property may be the product of a single creator or a group of individuals who
have collaborated on a project.
2.5.22 Trademark.
As recognized by Federal and state laws, a Trademark is any work, name,
symbol, or device adopted and used by an individual or a corporation to
distinguish its goods or services from the goods or services of others.
2.5.23 Trade Secret. Technical or
business information, including formulae, processes, and devices used or usable
to achieve a competitive advantage in a trade or business and not publicly
available. Trade Secret protection may be available under state law. Trade Secrets
may be retained for a brief period of time for specific purposes, such as to
allow for the preservation of rights to file a Patent application. (See Uniform
Trade Secrets Act for further information.) As a public institution, the
University does not accept Trade Secrets.
2.5.24 Use of University Resources. The use of University facilities and services
not available to the general public. Examples include, but are not limited to:
use of office, use of computer, use of laboratory space, use of student or
other special resources, use of special instrumentation, or special financial
assistance.
2.6 Intellectual Property Ownership
2.6.1 A Covered Individual shall own all Intellectual Property discovered, created, or developed by the individual, unless:
2.6.1.1 The
Covered Individual discovered, created, or developed the Intellectual Property while
conducting the University duties, responsibilities, and/or assignments for
which the individual was or is employed (received/s salary, wages, stipend, or
grant funds) by the University. Intellectual Property in these instances shall
be assigned to the University.
2.6.1.2 Intellectual
Property resulted from a Covered Individual making Use of University Resources
(such as laboratories or libraries) or equipment beyond what is available to
the non-University community. Intellectual Property in these instances shall be
assigned to the University.
2.6.1.3 The
Covered Individual discovered, created, or developed the Intellectual Property
for which there is a legal obligation that otherwise restricts ownership by
virtue of a Sponsored Research, Material Transfer, Confidential Disclosure, or
other legally binding agreement. Intellectual Property in these instances shall
be governed by the contract or other agreement between the University and the
other legal entity. Federally-sponsored
projects shall also follow 37 CFR 401.
2.6.2 The ORPC shall determine the appropriate
classification for each Intellectual Property case reviewed.
2.7 Student
Intellectual Property
2.7.1 To the extent permitted by this Policy,
undergraduate students shall own any Intellectual Property that they make, discover,
or create in the course of research unless:
2.7.1.1 The student performed
the research while receiving financial support from the University in the form
of wages, salary, stipend, or grant funds.
2.7.1.2 The student
made Use of University Resources (including University-administered funds,
facilities, or equipment) in connection with the research.
2.7.1.3 The research
was funded by a sponsor pursuant to a grant or Sponsored Research Agreement or
is subject to a Material Transfer Agreement, Confidential Disclosure Agreement,
or other legal obligation that restricts ownership of Intellectual Property. In
such instances, undergraduate students will make Assignment to the University
and will share in the distribution of royalties.
2.7.2 Inventions
made by graduate students in the course of employment at the University or
research carried out in University laboratories as part of a post-baccalaureate
or postdoctoral degree or non-degree program, or resulting from work directly
related to the graduate student’s employment or research responsibilities at
the University, or from work performed under a grant or other sponsorship, or
undertaken with other Inventors who have a duty to make Assignment to the
University, shall be the property of the University and shall be subject to the
Intellectual Property Policy. Any Inventions arising from a dissertation
submitted as a part of the requirements for a degree shall be subject to the
Intellectual Property Policy. In such instances, graduate students will make
Assignment to the University and will share in the distribution of royalties.
2.7.3 Theses
and Dissertations. All student theses
and dissertations and derivatives of these works are considered Exempted
Scholarly Works and the student will own the Copyright unless the work was
commissioned by the University or is under legal obligation. The University,
however, is allowed under a Royalty-free License to reproduce and publish the
works with appropriate attribution.
2.8 Copyrightable Works
2.8.1 Copyrightable
Works developed in the course of completing an individual’s University duties
is assigned per Section 2.6 of this Policy. However, the University waives its
ownership in the interest of the author for Exempted Scholarly Works. Examples
of Copyrightable Work considered Exempted Scholarly Works include the
following:
2.8.1.1 Traditional
publications in academia regardless of their medium of expression, such as
textbooks, course material, case studies, peer-reviewed manuscripts, syllabi,
tests, study-guides, glossaries;
2.8.1.2 Academic
software (not for commercial use);
2.8.1.3 Electronic
publications such as web sites, course descriptions/notes published electronically;
2.8.1.4 Photographs,
films, charts, transparencies, video and audio tapes;
2.8.1.5 Graphic
and sculptural works, works of art, architectural plans and structures;
2.8.1.6 Dress and
fabric designs;
2.8.1.7 Theses
and dissertations;
2.8.1.8 Music;
2.8.1.9 Furniture
design.
2.8.2 If a
Covered Individual retains title to Copyright in instructional or research
materials, such as class notes, curriculum guides, laboratory notebooks, theses,
or dissertations, that individual shall grant to the University a
non-exclusive, irrevocable, Royalty-free right to use, display, duplicate,
create derivative works and/or distribute the materials with appropriate
attribution for educational and/or research purposes.
2.9 Intellectual
Property Records and Reporting
2.9.1 Covered Individuals engaged in any projects
from which any Intellectual Property is likely to arise shall keep records
consistent with the UNH Policy on Ownership and Management of Research Data and
witnessed where necessary, and shall report promptly to the ORPC any Intellectual
Property, whether or not the Inventor believes the University has a direct
interest, by completing an Invention Disclosure (See Form B, attached). As
required by Federal law 37 CFR 401, the Invention Disclosure must be filed
promptly on all Inventions where the Invention was funded wholly or in part by
the Federal government. The property rights shall depend upon the
classification of the Intellectual Property. (Refer to section 2.6 above.)
2.9.2 Disclosure to the ORPC is highly recommended
before any other Disclosure, presentation, display, performance, or publication
of the work to any sizable audience. Failure to do so may result in loss of
rights and subsequent commercial potential.
2.10 Protection
of Intellectual Property Rights
2.10.1 Patents
and Trademarks. When the opportunity to
patent an Invention and/or file for a Trademark is brought to the attention of
the ORPC, the Inventor will take steps to ensure that the Invention or Trademark
is documented using the attached Form B. The ORPC will then consider whether
the Invention or Trademark should be protected through filing an application
with the U.S. Patent & Trademark Office. In making this decision, the ORPC
may call upon other persons, associated or not associated with the University,
for technical or other advice. Furthermore, in reaching a decision the ORPC
will consider not only the importance of the Invention or Trademark, but also
whether or not the interests of the Inventor, the University, and the public
would be served best by a Patent or Trademark. The ORPC will respond to the Inventor(s)
within 60 days of receipt of the Invention Disclosure with its decision on
patentability or trademarking.
2.10.1.1 When
the Invention/Trademark is assigned to the University under Section 2.6, the
ORPC shall make a determination about patenting or trademarking based upon the
commercial potential.
2.10.1.1.1 If
the ORPC decides to file a Patent or Trademark application, the Inventor will
be expected to give all reasonable assistance in preparing the application. On
Federally-sponsored agreements, the Patent process must also abide by the
agreement terms and conditions, with particular attention to 37 CFR 401.
2.10.1.1.2 If
the ORPC decides not to file a Patent or Trademark application, the ORPC may,
upon request and to the extent possible under the terms of any agreements that
supported the work, reassign ownership to the Inventor(s). The Invention/Trademark
will be released to the Inventor(s) and the University will waive its rights to
Assignment. The Inventor(s) shall be free to make a Patent or Trademark
application on his/her own responsibility. When an Invention results from
Federal funding, typically the rights would be retained by the Federal sponsor.
In such cases, the Inventor(s) may request that the sponsor grant rights in the
Invention directly to the Inventor(s). Once the University waives its interest
in an Invention, the Inventor must assume all liabilities connected with the
exploitation and defense of the Invention or discovery and must not use the
name of the University in advertising or otherwise promoting the development,
manufacture, or use of the Invention.
2.10.1.2 When an Invention results from Intellectual
Property developed and owned by a Covered Individual under Section 2.6 of this Policy,
the ORPC may offer assistance to the Inventor(s) concerning the Patent/Trademark
application process and may recommend patent agents and/or patent counsel to
assist the Inventor in applying for a Patent. The cost of the Patent/Trademark
application and prosecution shall be the sole responsibility of the Inventor(s).
The Inventor must assume all liabilities connected with the exploitation and
defense of the Invention or discovery and must not use the name of the
University in advertising or otherwise promoting the development, manufacture,
or use of the Invention.
2.10.2 Copyrights and Mask Works Protection.
2.10.2.1 Notices.
2.10.2.1.1 If
materials are published (i.e., distributed to any sizable audience) without a
proper notice as noted below, full protection against infringement is jeopardized.
Prior to any publication, the Covered Individual should place the following
notice on all materials in which the University owns the Copyright:
Copyright
© [year]
2.10.2.1.2 To
protect Mask Work rights, the Covered Individual should apply the following
notice on all University-owned semi-conductor chip products, which incorporate
Mask Works:
Mask
Work *M* [year] University
of New Hampshire
2.10.2.1.3 No
other institutional or departmental name is to be used in the notice, although
the name and address of the department to which readers can direct inquiries
may be listed below it. The date in the Copyright or Mask Work notice should be
the year in which the work is first published.
2.10.2.2 Registration. Additional rights and protection for Copyrightable
Material and Mask Works require registration with the U.S. Copyright Office,
which will be coordinated through the ORPC after Disclosure.
2.11 Commercialization
of University-Owned Intellectual Property
The commercialization of
the University’s Intellectual Property can be a lengthy process and requires
the partnership of a business that has the ability and desire to utilize the Intellectual
Property. The benefits of transferring the Intellectual Property are increased
recognition of the University’s quality of research and scholarship as well as
the potential for financial rewards. The University will seek to license all Intellectual
Property assigned to the University. The typical means to transfer the Intellectual
Property to a commercial partner is through legal agreements. These agreements
can take a variety of forms: Cooperative Research Agreements, License
Agreements, Option Agreements, and/or Contract Research Agreements. Successful
commercialization also requires that the Inventor(s) recognize that their
participation and cooperation are required.
2.12 Income
Received from Intellectual Property
2.12.1 The University will distribute License fees,
royalties, and other income received from the licensing of Intellectual
Property according to the following schedule:
30% of Net Income to the Inventor(s)/author(s)/developer(s);
hereinafter called Inventor;
30% of Net Income to the Inventor's college
or school (or program, if the Inventor is not associated with a college or
school);
30% of Net Income to a University-wide
Research and Development Fund administered by the VPR; and
10% of Net Income to ORPC.
2.12.2 Where Intellectual Property is conceived
jointly by two or more Inventors, each of the co-Inventors shall share in the Inventor(s)’
distribution referred to above in such proportions as the joint Inventors agree
reflects their respective contributions. If the co-Inventors are unable to
determine the appropriate distribution, the ORPC shall do so in writing to the
Inventor(s) and retain a copy of the distribution allocation agreement for the
useful life of the Intellectual Property (Patent and/or License period).
2.13 Equity
The
University strives to achieve a creative and entrepreneurial environment for
commercializing its technology. As such, the University recognizes that “Spin-outs”
of its technology may result in a new company, called a “start-up”. The
University in these instances may accept equity in the start-up company as a
substitute for royalty in the License Agreement in accordance with the UNH
Policy on Management of Equity Interests in Start-up Companies.
2.14 Participation Agreement
All
University faculty (including but not limited to tenured, tenure-track,
research, clinical, adjunct, and emeriti faculty); visiting faculty or other
visitors using research facilities; postdoctoral employees or fellows; graduate
students and undergraduate students participating in sponsored research as
employees or otherwise; and all salaried employees shall execute an
Intellectual Property Participation Agreement (Form A) as a condition of
employment, participation in sponsored research, or Use of University Resources.
Notwithstanding the above, an individual acknowledges that he or she is bound
by the University Intellectual Property Policy by accepting or continuing
University employment or by using University resources or facilities. All
students shall be advised of the University Intellectual Property Policy and
procedures through publication and dissemination in the UNH Student Rights,
Rules and Responsibilities.
2.15 Appeal
In cases where rights and/or equities are in dispute, the ORPC shall report in
writing such dispute to the VPR. Within 30 days of receipt of the notice, the
VPR shall appoint an ad hoc review committee consisting of four persons: One
person selected by the Inventor(s), the Director of the ORPC, one person
selected by the VPR, and one by the Vice President for Academic Affairs. This
committee shall recommend an agreement which shall take effect unless a further
appeal is made by the individual or individuals involved, or by the VPR. In
this event the review committee will present the case to the University
President, whose decision shall be final and binding upon all parties, except for faculty who are members of the UNH
American Association of University Professors collective bargaining unit, who
retain the right to grieve the decision via the grievance procedure outlined in
Article 9 of the AAUP-UNH/ University System of New Hampshire Collective
Bargaining Agreement.
FORM A
Office for Research Partnerships and Commercialization
Intellectual Property Participation Agreement
The
In order that the
University may fulfill legal and contractual obligations to sponsors of
research, and in consideration of my employment by the University, or my
participation in sponsored research, or my use of funds, facilities, or other
resources provided by the University, I hereby agree as follows:
1.
I have
read, and I understand and agree to be bound by, the terms of the “Intellectual
Property Policy” as well as by the terms of any revisions or amendments adopted
by the President of the
2.
I agree
to report to the ORPC any Invention which is conceived or reduced to practice
in the course of my employment at the University, or from work directly related
to employment responsibilities at the University, or from work carried out on
University time, or at University expense, or with Use of University Resources
under grants or otherwise. I also agree to assign in writing to the “
3.
I
acknowledge that any Tangible Research Property, including Know-how, whether or
not patentable, which is made in the course of employment at the University or
from work directly related to employment responsibilities at the University, or
from work carried out on University time, or at University expense, or with Use
of University Resources under grants or otherwise is the property of the
University. I also agree to assign in writing to the “
4.
I
understand that the University incurs binding obligations to sponsors under the
terms of sponsored research agreements.
When I participate in sponsored research, I understand that it is my
responsibility to ascertain and abide by the terms of the sponsored research
agreement as it relates to me. In particular, when engaged in outside activity,
such as consulting, I recognize my duty to protect the University’s obligations
to its research sponsors.
5.
I also
understand that on occasion University policy or the University’s obligations
to research sponsors may require that I assign my interest in Copyrightable Materials
to the University. In such cases, I agree to assign all right, title and interest
in and to such materials to the “
6.
I will
cooperate fully, at no expense to me and without charge, with the University in
the preparation and prosecution of Patents, in the registration of Copyrights
and in the preparation and execution of all documents necessary or incidental
thereto.
7.
I accept
the provisions for the sharing of royalties and equity in the Policies and procedures
as stated therein, and as amended from time to time.
8.
I am
under no obligation to any person, organization or corporation with respect to
any Invention(s), Tangible Research Property or Copyrightable Materials which
are, or could be reasonably construed to be, in conflict with the Agreement.
9.
I agree
that this Agreement is effective as of the first date of my employment,
appointment, or matriculation, as the case may be, and applies to any Inventions,
Tangible Research Property, Know-how, or Copyrightable Materials made during
the time I am employed by the University, hold an appointment or continue to
matriculate.
________________________________________
Employee Signature
________________________________________
Printed
Name
________________________________________
Date
THIS FORM WOULD BE SIGNED WHEN THE INDIVIDUAL BEGINS
EMPLOYMENT AT THE UNIVERSITY. THIS FROM WILL BE KEPT AT HUMAN RESOURCES IN THE
EMPLOYEE’S RECORD.
FORM B
Office for Research Partnerships and Commercialization
Invention Disclosure
I. Description
Please
provide a title for your Invention and a brief description. Inventions include
new processes, products, apparatus, compositions of matter, living organisms -
OR improvements to (or new uses for) things that already exist. Use additional
sheets and attach descriptive materials to expand answers to questions. (Please
include any available sketches, drawings, photo, reports, and manuscripts.)
A. Invention Title:
B. Description:
C. What are the immediate and/or future
applications of the Invention?
D. Why is the Invention better—more
advantageous—than present technology? What are its novel and unusual features?
What problems does it solve?
E. Is work on the Invention continuing? Are there
limitations to be overcome or other tasks to be done prior to practical
application? Are there any test data?
F. Have products, apparatus or compositions, etc.
actually been made and tested?
(See next page.)