D. Intellectual Property Policy
UNH Policy on Ownership and Management of Research Data – UNH VIII.C
UNH Policy on Misconduct in Scholarly Activity - UNH II.C
UNH Policy on Financial Conflict of Interest in Research – UNH VIII.E
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 - http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH Copyright Primer.pdf
2.1 The University of New Hampshire (University) recognizes its responsibility to produce and disseminate knowledge. Inherent in this responsibility is the need to encourage the production of creative and scholarly works and the development of new and useful materials, devices, processes, and other Intellectual Property. The creation of this Intellectual Property may have potential for commercialization, which thereby contributes to the professional development of the individuals involved, enhances the reputation of the University, provides expanded educational opportunities for students, and promotes public welfare.
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.
2.3 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.
2.4 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.
3. Intellectual Property Administration
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:
3.1.1 To act in accordance with the policy herein set forth;
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;
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;
3.1.4 To submit an annual report to the President concerning the University's Intellectual Property activities;
3.1.5 To publicize and promote the University’s Intellectual Property Policy and to vigorously pursue opportunities arising therefrom;
3.1.6 To comply with Federal regulations regarding the reporting, licensing, and maintenance of Inventions;
3.1.7 To allocate appropriate resources to manage the University’s Intellectual Property; and
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.
3.2 The administration of the principles and Policy set forth herein shall be the responsibility of the ORPC.
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.
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.
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.
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/.
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 University of New Hampshire.
5.2 Copyright. As defined in 17 US Code, a Copyright is granted by the United States government to the author/creator of "original works of authorship." These works include the following:
5.2.1 Scholarly works (e.g., textbooks, class notes, research monographs and articles, journal publications, classroom and research instructional materials);
5.2.2 Creative/artistic works (e.g. music, art, dance, poetry, fiction, and film);
5.2.3 Copyrightable software (academic, research, and commercial);
5.2.4 Mask Works (semiconductor chip designs protected under a Federal law administered by the U.S. Copyright Office);
5.2.5 Other developing areas, including but not limited to multi-media works and electronic communications (including media used for distance learning).
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.
5.4 Disclosure. The act of reporting an Invention or other creation of Intellectual Property.
5.5 Exempted Scholarly Work. This applies to Copyrightable Material where the University waives its ownership interest in favor of the author. See Section 8.
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.
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.
5.8 Inventor(s). The person(s) who devises, creates, and produces something not previously known or existing.
5.9 Invention Disclosure. The process of disclosing the invention or intellectual property to the University's Office for Research Partnerships and Commercialization. (Form A)
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.
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.
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.
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.
5.14 Owner(s). The individual(s) holding the rights and title to the property. Property can be either tangible or intangible.
5.15 Paid-Up License. A term used to describe a License where the licensor receives no additional Royalty payments.
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.
5.17 Plant Variety Protection Certificates. These certificates are issued by the U. S. Department of Agriculture for sexually produced plants.
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.
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.
5.20 Spin-Out. For purposes of this Policy, any company started as a result of licensing the University’s Intellectual Property.
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.
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.
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.
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.
6. Intellectual Property Ownership
6.1 A Covered Individual shall own all Intellectual Property discovered, created, or developed by the individual, unless:
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.
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.
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.
6.2 The ORPC shall determine the appropriate classification for each Intellectual Property case reviewed.
7. Student Intellectual Property
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:
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.
7.1.2 The student made Use of University Resources (including University-administered funds, facilities, or equipment) in connection with the research.
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.
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.
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.
8. Copyrightable Works
8.1 Copyrightable Works developed in the course of completing an individual's University duties is assigned per Section 6 and/or Section 7 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:
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;
8.1.2 Academic software (not for commercial use);
8.1.3 Electronic publications such as web sites, course descriptions/notes published electronically;
8.1.4 Photographs, films, charts, transparencies, video and audio tapes;
8.1.5 Graphic and sculptural works, works of art, architectural plans and structures;
8.1.6 Dress and fabric designs;
8.1.7 Theses and dissertations;
8.1.9 Furniture design.
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.
9. Intellectual Property Records and Reporting
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 (Form A). 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 6 and/or Section 7 above.)
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.
10. Protection of Intellectual Property Rights
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 Form A. 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.
10.1.1 When the Invention/Trademark is assigned to the University under Section 6 and/or Section 7, the ORPC shall make a determination about patenting or trademarking based upon the commercial potential.
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.
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.
10.1.2 When an Invention results from Intellectual Property developed and owned by a Covered Individual under Section 6 and/or Section 7 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.
10.2 Copyrights and Mask Works Protection.
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] University of New Hampshire. All rights reserved.
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
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.
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.
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.
12. Income Received from Intellectual Property
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.
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).
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.
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 B) 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.
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.