a. The
Institution encourages and promotes research and scholarship based on the
traditional principles of the academic profession. These products may
constitute Intellectual Property that could be of financial benefit to the
individuals involved and the Institution. The primary purposes of this policy
are to establish guidelines to support faculty, staff, and students, in
identifying, protecting and administering Intellectual Property and defining
the rights and responsibilities of all involved. This policy governs unless a
specific policy provides otherwise.
b. Any person who
is uncertain as to how to identify a potential Copyrightable Work, Invention,
Trade Secret or Tangible Research Property, or how the Institution implements
any of these policies should contact the Vice President for Research and
request guidance.
II.
Definitions.
a. “Author”: A person who creates a Copyrightable Work.
b. “Copyright
Agreement”: A written and signed agreement between the Author(s) and the
Institution that explicitly defines the ownership of the Copyrightable Work,
any control rights in cases of Mediated Courseware, any reimbursement for
Significant Use of Institutional Resources, and the sharing of royalties.
c. “Copyrightable Work or Work”: An original Work
by an Author which has been fixed in a tangible medium of expression from which
it can be perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or device, such as books, journals, software,
computer programs (including source code), musical Work, dramatic Work, videos,
multimedia products, sound recordings, pictorial and graphical Work, etc. Any Copyrightable Work that is also an
Invention shall be governed by the General Patent and Trade Secret Policy and
not the General Copyright Policy. A Work
may be the product of a single Author or a group of Authors who have
collaborated on a project.
d. “Costs of
Invention Protection”: The expenses
incurred by the Institution in conducting the research and in procuring,
protecting, preserving, maintaining, and licensing the Invention and related
property rights. This includes the costs
in securing patent protection in the
e. “Cumulative Net
Royalties”: The cumulative lifetime
gross royalties and licensing or assignment fees less the expenses incurred by
the Institution in procuring, protecting, preserving, maintaining, marketing
and licensing the patent and related property rights including legal fees
associated with the Invention, fees for patentability and marketability
searches, fees arising out of litigations, fees for legal advice or any fees or
costs directly attributable to the invention being licensed. Indirect costs, overhead or other Institution
costs usually associated with operation of the Institution and not directly
attributable to the Invention will not be deducted from gross revenues.
f.
“Institution”: The
g. “Intellectual
Property”: Collectively, all forms of
property created by the mind including, but not limited to, Inventions,
Copyrightable Work, Trademarks, and Tangible Research Property.
h. “Intellectual
Property Protection Procedure”: The
procedure established under VI(n) for review of Inventions by the Institution.
i.
“Invention”: A
process, method, discovery, device, plant, composition of matter, know-how, or
other Invention that reasonably appears to qualify for protection under United
States patent law (including, but not limited to, utility patent, plant patent,
design patent, certificate of Plant Variety Protection, etc.), whether or not
actually patentable. This includes software which may also be a Copyrightable
Work. An Invention may be the product of
a single Inventor or a group of Inventors who have collaborated on a project.
j.
“Invention Disclosure”:
A written document which allows one skilled-in-the-art to fully
understand and practice an Invention.
k. “Invention
Disclosure Committee”. The Invention
Disclosure Committee will be composed of one member from the
l.
“Inventor”: An
individual who contributes to the conception of an Invention under U.S. patent
law and who is (are) identified as such on the licensed patent, patent
application or unpatented technology. In the case of a patent or patent
application, according to
m. “Licensing
Revenue”. Revenue derived from any
agreement licensing or assigning Intellectual Property or Invention rights to a
third party in exchange for payment of licensing fees, research fees, milestone
fees, sponsored research or development, royalties, equipment, or like in kind
payments.
n. “Mediated
Courseware”: Teaching aids or
instructional assets created and/or deployed electronically. Mediated
Courseware may incorporate text, graphics, video, and audio elements. Examples
of such materials include, but are not limited to, hypertext modules,
simulation software, web sites, and databases containing numbers, images, or
text.
o. “PMO”. A PMO or Patent Management Organization is a
third party, which is a nonprofit organization described in section 501(c)(3)
of the Internal Revenue Code of 1986, that has as one of its primary functions
the management of Institution Inventions and receives Licensing Revenue and
gifts, or supporting or promoting the Institution or Institution research under
U.S. 37 CFR Part 401 and 35 U.S.C. 200-212.
p. “Public
Disclosure”: Means describing an
Invention in a printed publication, a patent application or at a conference,
meeting, or other public gathering, in the United States or any other country,
sale or offered for sale of Invention, use of the Invention, other than as part
of experimental use, in the United States, or disclosure to any person who is
not required to maintain the Invention’s confidentiality.
q. “Significant
Use of Institutional Resources”: An
Author’s use of other employees’ time or Institutional facilities or equipment
that appreciably increases the Institution’s costs beyond those normally
incurred in support of an employee in the Institution. Significant Use does not
include the normal use of Institutional employees’ time, facilities, or
equipment commonly available to faculty, staff, or the public, such as
libraries, internet access, office space, office equipment, computers, and/or
office supplies. Unless otherwise agreed, Significant Use also does not include
the use of Institution developmental leave time, so long as it does not
appreciably increase the Institution’s costs beyond those normally incurred in
support of an employee of the Institution.
r.
“Tangible Research Property”: Tangible items produced in the course of
research including, but not limited to, 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 Work, and Trademarks. An item of Tangible Research
Property may be the product of a single Author, Inventor or a group of
individuals who have collaborated on the project.
s. “Technology
Transfer and Commercialization Officer”:
The individual holding responsibility for the office of Technology
Transfer and Commercialization at the Institution or, where appropriate, his or
her designee.
t.
“Trade Secret”:
Information, including a formula, pattern, compilation, program, device,
method, technique or process, that derives independent economic value, actual
or potential, from not being generally known to, and not being readily
ascertainable by proper means by, other persons who can obtain economic value
from its disclosure or use.
u. “Trademark”
(including Service Mark): A distinctive
word, design, or graphic symbol, or combination word and design, that
distinguishes and identifies the goods and services of one party from those of
another, such as names or symbols used in conjunction with plant varieties or
computer programs, or the Institutional names, logos, or derivatives thereof.
v. “Unit”. Administrative, academic or research unit of
the Institution that provided the environment in which the research or
investigation of the Inventor was conducted.
w. “University
System”: The
x. “Vice
President for Research”: The individual
holding the office of Vice-President for Research at the Institution or, where
appropriate, his or her designee.
y. “Work for
Hire”: Defined pursuant to Federal
Copyright Law which includes a Work prepared by employees (staff, faculty, or
student) within the scope of their employment, created pursuant to a written
agreement identifying the Work as a Work for Hire. Unless a Copyright Agreement
provides otherwise, software created by employees within the scope of their
employment and not treated as Mediated Courseware under section IV of this
policy shall be treated as a Work for Hire.
III. General Copyright Policy.
a. Except as
otherwise explicitly provided under this policy or applicable law, an employee
who creates a Work retains copyright ownership of the Work.
b. If there has
been Significant Use of Institutional Resources to create a Copyrightable Work,
the ownership of which is vested in the individual employee, the Institution
shall be reimbursed out of the royalties produced by the Work, in accord with a
Copyright Agreement between the employee and the Institution up to the value of
the Significant Use of Institutional Resources.
c. If an employee
creates a Work for Hire, the employee must disclose the Work to the Institution
pursuant to section III F. In such instances the Institution shall have the
first option to secure copyright in the name of the Institution. Should the
Institution decide, in writing, it would not be appropriate to secure
copyright, the employee then may proceed to personally secure the copyright.
d. Copyright
ownership of Work developed as a result of Work supported partially or fully by
an outside agency through a contract or grant shall be determined in accordance
with the terms of the contract or grant. In those cases where copyright
ownership is shared between the sponsor and the Institution, the employee may
share in the royalties produced by the Work in accord with a Copyright
Agreement between the employee and the Institution. In those cases where copyright ownership is
vested in the Institution, the Institution shall have the first option to
secure copyright in the name of the Institution. Should the Institution decide,
in writing, it would not be appropriate to secure copyright, the employee then may proceed to personally secure the
copyright.
e. Royalties received as a result of copyright
ownership by the Institution will be disbursed at a minimum of 30 percent to
the employee(s) and the remainder pursuant to the negotiated Copyright
Agreement. No limit shall be set on the absolute amount of royalty income the
employee(s) may earn, except that it shall be in keeping with University System
policy.
f. When an
Author creates a Copyrightable Work the following steps should be followed to
establish a Copyright Agreement between the Author and the Institution:
1. The Author
will initiate the process by delivering a copy of the work and a proposal for
the terms of the Copyright Agreement to the Vice President for Research.
2. After review,
the Vice President for Research will forward a proposed Copyright Agreement for
review and approval by appropriate department or unit heads, dean or
administrative unit heads, and the Vice President for Academic Affairs and
Provost for review and comment.
3. A Copyright
Agreement will be entered into between the Author and the Vice President for
Research on behalf of the Institution.
i.
The Institution shall be responsible for copyright
registration of Work owned by the Institution, and for administering contracts
with its Authors, including the responsibilities associated with maintaining
records for copyright registration, royalty collection and distribution,
marketing, and such other actions as are appropriate.
ii. Authors of
Works for which ownership vests in the Institution shall warrant that such Work
does not infringe any preexisting copyright and shall cooperate with the
Institution in the pursuit of copyright protection.
4. Disputes and
questions arising under the Copyright Agreement shall be submitted to the Vice
President for Academic Affairs and Provost for resolution.
IV. Mediated Courseware.
a. Self-initiated
Mediated Courseware. When an employee develops Mediated Courseware without
specific direction by the Institution, unless otherwise agreed, the ownership
of the Mediated Courseware shall remain with the employee. Normally, no
royalty, rent, or other consideration shall be paid to the employee when that Mediated
Courseware is used for instruction at the Institution and such Mediated
Courseware shall not be used or modified without the consent of the employee.
While the Author is employed by the Institution, the Mediated Courseware shall
not be sold, leased, rented or otherwise used in a manner that competes in a
substantial way with the for-credit offering of the Institution unless approved
by the Vice President for Academic Affairs and Provost of the Institution. The
Institution shall have a perpetual, non-exclusive, royalty-free right to use
such courseware for archival research purposes. Should approval be granted to
use the Mediated Courseware outside of the Institution, the provisions of
section III.b of this policy shall apply.
b. Institution-directed
Mediated Courseware. When the Institution directs in an employment contract the
creation of a specific Mediated Courseware, the resulting Mediated Courseware
belongs to the Institution and the Institution shall have the right to revise
it and decide who will utilize the Mediated Courseware in instruction.
Development of Institution-directed Mediated Courseware shall be reported to
appropriate administrator(s) at the Institution through a Copyright Agreement.
The Institution may specifically agree to share revenues and control rights
with the employee pursuant to the Copyright Agreement.
V. Student Work.
a. The Copyright
ownership of student Work that is performed in whole or in part by the student
with financial support in the form of wages, salaries, stipend, or grants from
funds administered by the Institution shall be determined in accordance with
the terms governing the financial support or in the absence of such terms,
shall become the property of the Institution.
b. The Copyright
ownership of student Work generated by research performed in whole or in part
utilizing equipment or facilities provided by the Institution under conditions
that impose copyright restrictions shall be determined in accordance with such
restrictions.
c. Students will
own the copyrights to their Work produced as students of the Institution, but
not within the provisions of V.a and V.b
above; however, a student must, as a condition to a degree award, grant
royalty-free permission to the Institution to reproduce and publicly
distribute, including by electronic means, copies of the student’s Work. Where there is Significant Use of
Institutional Resources, the copyright ownership shall be determined under
section III. Of this policy.
VI. General Patent and Trade Secret Policy (“Policy”).
a. The Institution
encourages the faculty, staff, and others associated with the Institution to
pursue patent and Trade Secret protection for Inventions as a method of
bringing recognition and remuneration to Inventors and the Institution.
b. Section VI(n)
outlines the procedure for processing of such Inventions or discoveries. The
Inventor(s) shall submit an Invention Disclosure to the Institution at least 60
days prior to Public Disclosure of the Invention. At any time during the processing of such
Invention, the rights, title and/or interest of such Inventions may be assigned
to a PMO. The Institution President, or designee, shall sign appropriate
documentation acknowledging the assignment.
The PMO will assume obligations under section VI, as appropriate, and
provide timely documentation to the Institution, if requested.
c. An Invention
may arise from the development of a new and useful process, device or
apparatus, article of manufacture, composition of matter (including, but not
limited to, chemical compounds, microorganisms, nucleotide sequence, amino acid
sequence, genetically engineered organisms, and the like), plant, or related
improvement, or a new use for a known material or device or related
improvement, or a new use for a known material or device. Any individual who is uncertain as to how to
identify a potential Invention should contact the TTC Officer and request
guidance.
d. All rights to
and interests in Inventions resulting from research or investigation conducted
in the course of the Inventor’s employment with the Institution (including, but
not limited to, the performance of a grant, contract or award made internally,
by an extramural agency or by a third party) or with the use of the
Institution’s resources shall be the sole and exclusive property of the Institution,
or no other person or entity shall have rights of ownership or interest in such
Inventions. Any and all exceptions to
this Policy shall be determined and approved by the VP for Research. In all other cases, the Institution shall
have the right of first refusal to the title of all Inventions derived with the
use of Institution facilities, gifts, grants, or contract funds through the
Institution. The Inventor shall provide all necessary declarations,
assignments, or other documents as may be necessary in the course of processing
the invention, patent prosecution, or protection of patent rights to assure
that title in such Inventions shall be held by the Institution or other parties
as may be appropriate under the circumstances.
e. This Policy
applies to all Inventions made by the Institution’s faculty, staff, students,
trainees, volunteers or others if such Inventions are:
1) the result of
research performed by or under the direction of any faculty member, staff or
student, the cost of which was partially or wholly paid for with funds under
the control of or administered by the Institution and/or
2) the result of
an investigation by the faculty, staff, students, trainees, volunteers or
others utilizing the Institution’s facilities, laboratories or other resources
available to such faculty, staff, students, trainees, volunteers or others
because of their status within the Institution.
f.
All Inventions conceived or actually or conceptually reduced
to practice in the furtherance of research or investigation conducted by the
Institution’s faculty, staff, students, trainees, volunteers or others in
Paragraph VI(e) above, shall be promptly disclosed in writing to the TTC
Officer. The Invention Disclosure form
provided by the TTC Officer should be used for the reporting process and may be
obtained from the TTC Officer or completed in consultation with the TTC
Officer.
g. All rights to
and interests in Inventions arising in the course of research or investigation
sponsored by the Institution, any government or private agency or other
sponsored research are controlled by the terms of the applicable Intellectual
Property agreement, which must be reviewed, negotiated and approved by the the
TTC Officer. In the absence of
provisions to the contrary contained in any such research or investigation
agreement or under Federal law or regulations, the following shall apply:
1) The Inventor
has the right to:
i.
receive notice within six (6) months of the Institution’s
intention to file a patent application or otherwise to retain title to the
Inventions after the Invention Disclosure is made to the Institution of the
Invention;
ii. receive a
share of any licensing fees or royalties received by the Institution from the
commercialization of the Invention according to the Distribution Schedule contained
in VI(j);
iii. receive from
the Institution title to any Invention subject to this Policy in the event the
Institution elects not to retain title; and
iv. timely
publication of their research findings provided that a Invention Disclosure has
been made.
2) The Inventor
is obligated to:
i.
promptly file an Invention Disclosure including the name of
any collaborator;
ii. assign title
to the Invention to the Institution;
iii. cooperate to
the extent necessary as determined by the Institution in the reasonable delay
of publication to allow for a timely submission of a patent application;
iv. cooperate in
prosecuting all patents applications and other required documents;
v. participate in
the defense of such patents during prosecution for interference or
infringement; and
vi. assist with
licensing or marketing efforts related to the Invention.
3) The
Institution has the right to:
i.
assign to the Inventor title to any Invention, subject to
this Policy, for which the Institution chooses not to retain title;
ii. assign the
rights or interests of any patented or unpatented Invention owned by the
Institution to a PMO; or
iii. make, use,
license, sell or exchange rights to a third party the rights or interests of
any patented or unpatented Invention owned by the Institution, and exclude
others from doing so.
4) The
Institution is obligated to:
i.
make faculty, staff, students, trainees, volunteers or
others aware of this Policy and of any ongoing agreements with external sources
to evaluate and/or market such Inventions;
ii. after the
Invention Disclosure is filed, determine whether the Institution chooses to
retain title and/or file a patent application and give notice of Institution’s
intention and/or patent application to an Inventor within six (6) months after
the Invention Disclosure is made;
iii. expedite
Intellectual Property protection; and
iv. distribute
Licensing Revenue received by the Institution for any Invention according to
the Distribution Schedule contained in VI(j).
h. In no
instance, and regardless of ownership of the patent, may the Institution's name
be used in connection with the marketing of the Invention without the express
written permission of the Institution.
i.
The UND Chester Fritz Library Patent & Trademark
Depository offers a preliminary review of active
j.
Subject to restrictions arising from obligations of the
Institution pursuant to gifts, grants, contracts, or other agreements with
outside organizations, the Institution agrees, for and in consideration of the
assignment of Invention rights, to pay Cumulative Net Royalties according to
the Distribution Schedule below.
Distribution Schedule
Cumulative Net
Royalties Inventor Unit Institution/PMO
<$25,000 50% 10% 40%
$25,000-$50,000 45% 10% 45%
>$50,000 40% 10% 50%
When there are two or more Inventors,
each Inventor shall share equally in the Inventor's share of Cumulative Net
Royalties, unless all Inventors have agreed in writing to a different
distribution of such share. The Units’ share shall follow the Inventors’
distribution share off Cumulative Net Royalties. The Vice President for Research will have
final authority in resolving any dispute between Inventors as to the sharing of
royalties between them.
k. Cumulative Net
Royalties received by the Institution and the Units must be used to support
research, to further development of Intellectual Property, and/or to protect
Institution’s Inventions.
l.
An Inventor voluntarily leaving the employment of the
Institution for employment elsewhere will have the Cumulative Net Royalties due
Inventor reduced by 75%, except in the event that the Inventor participates in
the formation of a new business affiliated with the Institution using the
Invention technology.
m. The Inventor
obligations under VI(g)(2) will not be terminated upon termination of employment
from the Institution.
n. Intellectual
Property Protection Procedure. The
Office of Vice President for Research is responsible for the administration of
this Intellectual Property Policy. The
TTC Officer is responsible for the administration of the Intellectual Property
Protection Procedure, financial rights, negotiation and management of Invention
records. If an Invention is assigned to
a PMO during the Intellectual Property Protection Procedure, the PMO shall be
responsible for its administration and provide the Institution with the
appropriate documentation if requested.
This Intellectual Property Protection Procedure serves as a guide to the
Institution community in meeting the disclosure and reporting requirements of
the Institution, North Dakota State Board of Higher Education and cooperating
agencies.
1. Intellectual
Property and/or Invention Agreement Review. Prior
to executing any contract that binds the Institution or Inventor with regards
to Intellectual Property, such contract will be submitted to the TTC Officer,
who, with guidance from General Counsel, will ascertain that Intellectual
Property clauses in sponsored projects are acceptable to the principal
investigator and the Institution and are consistent with policies of the State
Board of Higher Education, and if appropriate, to Federal law. Such agreements include confidentiality,
non-disclosure, material transaction, consulting and like agreements containing
provisions for proprietary information and contractor, sponsored research or development,
licensing or like agreements containing provisions for Intellectual
Property. The TTC Officer shall verify
that the terms of a contract will not willfully or knowingly infringe on any
background technology on which the Institution has previously secured a patent
or on any proprietary agreement that the Institution may have with another
party.
2. Documentation
and Tracking. Inventors are responsible for recording and
maintaining the discovery records of all potentially patentable discoveries
derived through Institution activity.
Bound, dated, witnessed documentation is the encouraged method for
maintaining such records. Any questions
regarding the proper method for maintaining records should be directed to the
TTC Officer.
3. Invention
Disclosure. An Inventor shall make a written description
of the Invention to the TTC Officer at the earliest possible time after the
creation of an Invention. An Invention
Disclosure should be made on a form provided by the TTC Officer or prepared in
conjunction with the TTC Officer. If
the written description of the Invention Disclosure is adequate then the TTC
Officer will assign an Institution document number. The TTC Officer will have sole discretion to
determine whether the Invention Disclosure is sufficient. If not on file, the TTC Officer will request
that Inventor signs an agreement with Institution to assign rights to
Institution. Upon making an Invention
Disclosure, the TTC Officer will notify within a reasonable period of time, if
necessary, the appropriate Federal agency providing grant support of the
Invention Disclosure, in compliance with U.S. 37 CFR Part 401 and 35 U.S.C.
200-212.
4. TTC Officer
Evaluation. The TTC
Officer will review each Invention before committing Institution or other funds
in the pursuit of a patent covering the Invention, protection of the Invention
as a Trade Secret, protection of the Invention under Copyright or any other
form of protection of the Invention as Intellectual Property. Such an evaluation should consider the all
aspects of the Invention, prior art search and assessment, discovery’s gross
market potential, potential licensees, financial return, obligation to
sponsoring parties, and other factors impacting the investment of time and
funds to complete the patent application process. The review may entail the
commissioning of market, patentability or similar studies at the sole
discretion of the TTC Officer. Upon
review, the TTC Officer will advance Invention Disclosure to the Invention
Disclosure Committee for review, unless additional research or investigation is
required towards patenting of Invention or determining sufficient value. If latter, the Invention rights may be
returned to Inventor.
5. Invention
Disclosure Committee Review. The Invention Disclosure Committee will
review, recommend filing or not filing, and prioritize, if necessary, the
filing a patent application on the Invention.
Final approval will be signed by the VP for Research.
6. Patent
Application. Upon approval by the Institution to pursue
protection of the Invention, the TTC Officer will:
i.
notify, if necessary, the appropriate Federal agency of the
Institution’s desire to retain title to the invention;
ii. work with
Inventor to file a
iii. file a
7. Documentation: As necessary to protect the interests of the
Inventor and the Institution, and as allowed by law, the records supporting
Invention protection and appropriate documents with any commercialization
organization will be maintained as confidential. The official Invention File
shall the following items, if and when they are created,
i.
Documentation identifying the sources of funds used to cover
the costs.
ii. The costs of
Invention protection. In the event that
third Party pays for prosecution costs, said costs will be reduced accordingly.
iii. Any obligatory
contract or grant terms and conditions under which the discovery was conceived or
developed.
iv. Initial
records of Invention (i.e. notebook references, drawings, sketches, etc.).
v. Any formal
records of Invention required by sponsors.
vi. Invention
Disclosure documents submitted by the Inventor(s).
vii. Invention
Disclosure documents submitted to a patent agent or attorney.
viii.Inventor and
Institution assignment agreements.
ix. Documentation
of the approval by the Invention Disclosure Committee and Vice President for
Research decision to proceed in securing a patent, the source(s) of funds used
in covering the costs, and the patent attorney or other professional service
involved in securing the patent.
x. The patent
agent’s / attorney’s findings and assessment from a preliminary patent search.
xi. The final
draft of a patent application as filed.
xii. Any patent
assignment.
xiii.Any and all
appropriate patent prosecution documents.
xiv.A disbursement
of funds agreement identifying financial returns to the Inventor, Institution,
and any patent development/commercialization entity.
xv. The issued
patent.
xvi.Any licenses,
equity positions, or other commercialization documents which determine
financial returns to the Inventor and the Institution and its entities.
xvii. Obligatory
confirmatory licenses to any sponsor.
xviii. Documentation
of any abandonment of any patent by the Institution, any agreements
transferring title back to the Inventor or any obligatory transfer of title to
the sponsor.
The Inventor shall be provided copies
of each.
8. Commercialization. Upon the decision to pursue commercialization of an
Invention, the TTC Officer shall outline a commercialization plan in
cooperation with the Inventor. The
commercialization plan should give careful consideration to steps that could be
taken to protect the value of the Invention, including the appropriate use of
confidentiality agreements, material transaction agreements and other
Intellectual Property agreements. A copy
of this plan and annual progress reports shall be provided to the Inventor, the
Institution, and any applicable cooperating agency. The principal elements of
this plan shall be incorporated into any licensing agreement between the
Institution and any commercialization organization.
9. Patent and/or
Intellectual Property Assignment and/or Licensing. The Institution authorizes the TTC Officer to establish a
means of administering and managing the Institution’s Invention assets which
(1) expedites their commercialization, (2) provides means for defense of a
patent, (3) maintains the secrecy of Trade Secrets and (4) provides financial
returns to the Inventor and the Institution. For non-PMO commercialization
organizations, the TTC Officer will be responsible for reviewing with General
Counsel, negotiating and approving all agreements with third parties relating
to the assignment of Invention rights.
Either the TTC Officer, the Vice President for Research, or other
designee, are authorized to sign licensing or like agreements on behalf on the
Institution.
i.
The Institution may assign or transfer ownership rights in
Inventions to a PMO at its sole discretion.
When appropriate, Institution and PMO will have confidentiality
agreements in place. If the Invention
was supported directly or indirectly by a Federal agency applicable, prior to
assignment the Institution will obtain documents showing that the Invention has
been assigned to the Institution by the Inventor and the Institution has
disclosed and elected to retain title to the Invention to the supporting.
ii. It is the
responsibility of employees and Units to provide the TTC Officer with any and
all Intellectual Property agreements, which include consulting,
confidentiality, MTA, licensing and research agreements, to ensure that the
terms of the agreements with third parties do not conflict with their
commitments to the Institution. Each employee shall make the nature of the
employee’s obligations to the Institution clear to any third party for whom the
employee expects to consult. Specifically, the scope of the consulting services
must be distinguished from the scope of research commitments to the
Institution.
10. Licensing
Revenue Collection and Cumulative Net Royalties Distribution. Unless assigned to a PMO, the TTC Officer
will be responsible for the collection of all Licensing Revenue and the payment
of all fees under VI(j), as appropriate, upon approval by Institution General
Counsel, and the distribution of Cumulative Net Royalties under VI(j) upon
approval by the Vice President for Research. Documentation of the distribution
of funds to the Inventor, Institution, any cooperating agencies, and other
parties will be prepared by the TTC Officer or PMO, as appropriate, and signed
by all parties. A PMO will provide
Institution a copy of such documentation if requested.
11. Intellectual
Property Documents. The TTC
Officer shall maintain a permanent filing and storage system for all original
Invention documents and any and all Intellectual Property agreements. A copy of
the document should be provided to any cooperating agency and Inventor.
VII.
General
Trademark Policy
a. Trademarks
developed by faculty, students and staff of the Institution shall be treated in
the same manner as Inventions.