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University System of Maryland - A Public System of Higher Education
IV - 3.20 - 1 of 17
IV - 3.20 - UNIVERSITY SYSTEM OF MARYLAND POLICY ON
INTELLECTUAL PROPERTY
(Approved by the Board of Regents, February 8, 2002; Amended by
the Chancellor, July 7, 2004)
I. INTRODUCTION
The primary mission of universities is to create, preserve, and
disseminate knowledge. When that knowledge takes the form of
intellectual property, a university must establish a clear and
explicit policy that will protect the interests of both its
creators and the university while ensuring that society benefits
from the fair and full dissemination of that knowledge.
II. EFFECTIVE DATE
This policy will be effective on July 1, 2002 ("Effective Date").
It will apply to all intellectual property disclosed to the
University on or after July 1, 2002. Intellectual property
disclosed to the University prior to the Effective Date will
remain subject to the UMS Policy on Patents effective May 31,
1990 or the UMS Policy on Copyrights effective May 31, 1990,
unless otherwise agreed by the University and all creators of the
intellectual property (or the heir or assignee of any creator's
share of Revenue).
III. DEFINITIONS
The terms defined in this section are given special meanings in
this policy and appear capitalized throughout.
A. Personnel. All University employees, full-time and part-
time, including Student Employees acting within their Scope of
Employment; non-employee consultants; visitors; and others using
University resources.
B. Resources Usually and Customarily Provided. All resources
provided unless specified otherwise, in advance and in writing,
as a condition of using the resource.
C. Revenue. Consideration paid in cash or equity by a third
party in exchange for specific intellectual property rights.
Revenue does not include research support in any form (e.g.,
sponsored research agreements, restricted grants, unrestricted
grants, or equity), tuition income, and contract income received
by the University including contract income received in lieu of
tuition.
D. Scope of Employment. All activities, related to the field
or discipline of the faculty member's appointment, including the
general obligation of a faculty member to teach, to do creative
work, and to conduct research, or related to the employment
responsibilities of non-faculty Personnel, and for which
Personnel receive compensation from the University, where
compensation is any consideration, monetary or otherwise,
including but not limited to, title and the ability to use
University resources.
E. Sponsored Research Agreements. Grants, contracts,
cooperative agreements, and other agreements under which research
or development activities will be carried out, or other
agreements administered by the University that relate to
intellectual property created under the agreement.
F. Students. Persons enrolled in a University, acting within
the course of their academic work, including, but not limited to,
undergraduates, graduate and professional students, non-degree
students, and not-for-credit students.
G. Student Employee. A Student who is also a University
employee, acting within the Scope of Employment.
H. University. One of the following: a constituent institution
of the University System of Maryland, the University of Maryland
Biotechnology Institute, the University of Maryland Center for
Environmental Science, or the University System of Maryland
Office.
IV. GENERAL PROVISIONS
A. Purpose. The purpose of this policy is to set forth the
terms, conditions, and procedures whereby the University System
of Maryland, Personnel and Students establish and maintain their
interests in intellectual property created by or used at USM
institutions, taking into account intellectual property laws
governing patents, copyrights, trademarks, and other forms of
intellectual property. This policy governs the ownership and
protection of such property at the University.
B. Scope of Application. All Personnel and Students shall
comply with this policy, as amended from time to time. This
policy shall be included in the faculty handbook, as directed in
Board of Regents Policy II - 1.00, Section I. B.2.
C. Protecting University Interests. Personnel and Students may
not (1) sign agreements or take any action on behalf of the
University unless they are authorized agents of the University,
or (2) make unauthorized use of the name of the University. In
cases where Personnel or Students take such actions, the
University is not bound to honor those actions or agreements.
D. Acquisition. The University may acquire ownership or use of
intellectual property by assignment, license, gift, bequest, or
any other legal means. The University shall administer such
intellectual property in accordance with this policy unless
otherwise required by the terms of the acquisition.
E. Administration of Intellectual Property which is not
University-owned. At the request of the owner, intellectual
property not owned by the University may be administered by the
University. In such cases this policy shall govern that
administration unless the University agrees otherwise in writing.
F. Sponsored Research
1) Ownership. Sponsored research agreements shall provide that
all intellectual property developed by Personnel or Students
under such agreements shall belong to the University; however,
the University, on a case-by-case basis (as circumstances
warrant, and consistent with applicable private use restrictions
e.g., under bond covenants), may agree to assign ownership or
licensing rights to the sponsor, subject to the University's
right to use and reproduce the intellectual property for research
and educational purposes. The University's president or designee
shall approve any such agreement.
2) Federal Sponsorship. Any research project that is funded,
in whole or in part, by a federal agency is subject to specific
federal statutes and regulations. Those regulations generally
allow the University to elect title to any invention that is
conceived of or first actually reduced to practice in the
performance of federally-funded research with the purpose of
commercializing the invention, subject to the government's rights
which include reservation of a nonexclusive license to use the
invention world-wide for government purposes.
G. Implementation Authority. The Chancellor shall have the
authority and responsibility for implementation and coordination
of this policy. Each president shall have the authority and
responsibility to implement and coordinate this policy within the
president's University. Subject to the other provisions of this
policy and applicable law, the presidents may enter into
agreements with respect to ownership, licensure, disposition of
intellectual property, disposition of royalty income, resolution
of disputes, and other matters related to intellectual property
in which that University has an interest under this policy, and
may register intellectual property; seek protection under
copyright, trademark, and/or patent laws; and enforce, defend,
manage, and take any action relevant to the institution's
intellectual property rights that is necessary for the proper
administration of this policy.
V. COPYRIGHTS
A. Ownership by Creator. Personnel and Students shall have all
rights in copyrights of their work, subject to section V.B.
below, with the following exceptions.
1) Scope of Employment. The University owns all rights in
copyright for work produced by non-faculty Personnel within the
Scope of Employment.
2) Sponsored Research Agreements. The University owns all
rights in copyright for work produced by Personnel or Students
under Sponsored Research Agreements.
3) Signed agreements. The University owns all rights in
copyright for all work as stated in written agreements.
4) Computer Programs and Software. Ownership of copyrighted
software and computer programs is addressed in Section VII.
5) Technology-mediated Instructional Materials. Ownership and
use of technology-mediated instructional materials is addressed
in Section VIII.
B. Right of Use
1) University rights. The University shall have the right to
use and reproduce for research and educational purposes scholarly
and original works, whether owned by the University, Personnel,
or Students, for which it has provided resources.
2) Additional Rights. If the University wishes to secure
additional rights in copyrighted work, it shall so specify in
writing at the time it provides resources beyond Resources
Usually and Customarily Provided or other consideration.
C. Responsibilities of Personnel and Students
1) Assignment. For work to which the University has or had
rights of ownership or use under this policy, Personnel and
Students shall, upon request, execute all legal documents
designed to assist the University, or its assignees, in proving
or benefiting from such rights, as deemed appropriate by the
University.
2) External Collaborations. See Section IV.C and the Policy
on Professional Commitment of Faculty, BOR 41.0 II-3.10.
3) Use of Copyrighted Materials. All Personnel and Students are
responsible for complying with University guidelines on the fair
use of copyrighted material and for complying with the
requirements of copyright law, including obtaining required
permissions to use copyrighted material.
D. Responsibilities of the University
1) Agreement Regarding Use of Resources Beyond Resources
Usually and Customarily Provided. When the University authorizes
or directs efforts to create a work or works using University
resources beyond Resources Usually and Customarily Provided, it
shall enter into a written agreement addressing the extent of use
of resources, the schedule for the project (if appropriate),
control over the work and its revisions, and ownership of the
work. When the work done by Personnel routinely involves
resources beyond Resources Usually and Customarily Provided,
compliance with this section may be accomplished by including the
required terms in an employment agreement.
2) Sharing of Revenue. The University shall remit to creators
or their assignees or heirs, their share of Revenue from
copyrights as specified in Section XI.A. of this policy.
3) Use of Copyrighted Materials. The University shall develop
and disseminate guidelines for the use of copyrighted materials.
These guidelines should address library and educational fair use
as well as fair use exceptions for research and scholarly work.
VI. PATENTS
A. Ownership
1) University Ownership
a) Within Scope of Employment. The University owns inventions
created by Personnel within the Scope of Employment.
b) Use of University Resources. The University owns inventions
created by Personnel, Graduate Students, or Professional Students
with the use of University resources.
c) Signed Agreements. The University owns all inventions made
by Personnel or Students under Sponsored Research Agreements and
as stated in written agreements.
2) Creator Ownership
a) Outside Scope of Employment. Personnel, Graduate Students,
and Professional Students own patent rights to inventions
conceived and first reduced to practice outside the Scope of
Employment and without the use of University resources and not
subject to Sponsored Research Agreements or other written
agreements
b) Student Ownership. Undergraduate, non-degree, and not-for-
credit Students own inventions they create unless the invention
is subject to another provision of this section.
B. Responsibilities of Personnel and Students
1) Disclosure. Personnel and Students shall disclose inventions
which are subject to University ownership to the president or
designee in a timely manner, fully, and in writing. When
uncertain about the University's rights, Personnel and Students
shall disclose.
2) External Collaborations. In accord with Section IV.C.,
Personnel and Students may not: (a) sign patent agreements or
other documents (e.g., invention reports, licenses, assignments,
Material Transfer Agreements, or Confidential Disclosure
Agreements) which abrogate the University's rights; (b) make
unauthorized use of the name of the University; or (c) transfer
material relating to intellectual property outside the
University, except pursuant to a properly authorized Material
Transfer Agreement. See also the Policy on Professional
Commitment of Faculty, BOR II-3.10.
3) Assignment. As to an invention in which the University has a
right to ownership or use, the inventor, upon request, shall
execute promptly all contracts, assignments, waivers or other
legal documents necessary to vest in the University, or its
assignees, any or all rights to the invention, including
assignment of any patents or patent applications relating to the
invention.
C. Responsibilities of University
1) Timely Evaluation. The University shall evaluate inventions
disclosed in accordance with Section VI.B.1) and shall do so with
reasonable promptness and in good faith. The University shall
decide whether to seek legal protection of its ownership rights,
such as filing for patent protection; the scope of patent
protection; and whether and how to pursue, limit, or abandon
commercialization. The University may at any time decide not to
pursue or to abandon the pursuit of patenting and/or
commercialization of any invention in which it has an interest.
2) Timely Information. The University shall inform inventors in
a timely manner about substantive decisions regarding protection,
commercialization and/or disposition of inventions disclosed in
accordance with Section VI.B.1). Terms of agreements which
constitute proprietary business information may be treated as
confidential by the University in accordance with applicable law.
The University shall notify inventors promptly when it decides
either not to pursue, or to abandon pursuit of, all efforts to
commercialize an invention.
3) Commercialization by Inventors. The University, at its
discretion and consistent with the public interest, may license
intellectual property to the inventors on an exclusive or non-
exclusive basis. Inventors must demonstrate technical and
business capability to commercialize the intellectual property.
Agreements with inventors shall be subject to review and approval
of conflict of interest issues in accordance with applicable
University policy.
4) Assignment of Ownership. The University may assign ownership
to the inventors as allowed by law, subject to the rights of
sponsors and to the retention by the University of a license
which at a minimum shall grant the University the right to use
intellectual property in its internally administered programs of
teaching, research, and public service on a perpetual, royalty-
free, non-exclusive basis. The University may retain more than
the minimum license rights, and assignment or license may be
subject to additional terms and conditions, such as Revenue
sharing with the University or reimbursement of the costs of
legal protection. The University shall negotiate promptly, upon
written request by the inventors, the transfer to the inventors
of the University's interest in any invention that it has chosen
not to protect or commercialize, subject to any legal obligation
to offer its interest to a sponsor, licensee, or another
institution with rights to the invention before it can agree to
negotiate the transfer of the University's interest in an
invention to the inventors.
5) Sharing of Revenue. The University shall remit to the
inventors or their assignees or heirs, their share of Revenue
from inventions as specified in Section XI.B. of this policy.
VII. COMPUTER PROGRAMS AND SOFTWARE
A. Ownership
1) University Ownership
a) Within the Scope of Employment. The University owns
computer programs and software created by Personnel within the
Scope of Employment.
b) Use of University Resources. The University owns computer
programs and software created by Personnel, graduate Students, or
professional Students with the use of University resources.
c) Signed Agreements. The University owns all computer
programs and software created or made by Personnel or Students
under Sponsored Research Agreements and as stated in written
agreements.
2) Personnel Ownership
a) Outside Scope of Employment. Personnel, graduate Students,
and professional Students own software and computer programs
conceived and first reduced to practice, and/or authored, outside
the Scope of Employment and without the use of University
resources and not subject to Sponsored Research Agreements or
other written agreements.
b) Student Ownership. Undergraduate, non-degree, and not-for-
credit Students own computer programs and software they create
unless the computer program or software is subject to another
provision of this section.
B. Responsibilities of Personnel and Students
1) Disclosure. Personnel and Students shall disclose computer
programs and software that are subject to University ownership to
the president or designee in a timely manner, fully, and in
writing. When uncertain about the University's rights, Personnel
and Students shall disclose. Disclosure may include deposit of a
digital-time-stamped copy of the software program, with
appropriate annotations.
2) External Collaborations. See Section IV.C. See also the
Policy on Professional Commitment of Faculty, BOR II-3.10.
3) Assignment. As to a computer program or software in which
the University has a right to ownership or use, the creator, upon
request, shall execute promptly all contracts, assignments,
waivers or other legal documents necessary to vest in the
University, or its assignees, any or all rights to the computer
program or software, including assignment of any patents,
copyrights, patent applications, or copyright applications,
relating to the work.
C. Responsibilities of University
1) Timely Evaluation. The University shall evaluate computer
programs and software disclosed in accordance with Section
VII.B.1) and shall do so with reasonable promptness and in good
faith. The University shall decide whether to seek legal
protection of its ownership rights, such as filing for patent
protection, the scope of patent protection, and whether and how
to pursue, limit, or abandon commercialization. The University
may at any time decide not to pursue or to abandon the pursuit of
patenting and/or commercialization of any computer program or
software in which it has an interest.
2) Timely Information. The University shall inform creators in
a timely manner about substantive decisions regarding protection,
commercialization and/or disposition of computer programs or
software disclosed in accordance with Section VII.B.1). Terms of
agreements which constitute proprietary business information may
be treated as confidential by the University in accordance with
applicable law. The University shall notify creators promptly
when it decides either not to pursue, or to abandon pursuit of,
all efforts to commercialize computer programs or software.
3) Commercialization by Creators. The University, at its
discretion and consistent with the public interest, may license
intellectual property to the creators on an exclusive or non-
exclusive basis. Creators must demonstrate technical and business
capability to commercialize the intellectual property. Agreements
with creators shall be subject to review and approval of conflict
of interest issues in accordance with applicable University
policy.
4) Assignment of Ownership. The University may assign ownership
to the creators as allowed by law, subject to the rights of
sponsors and to the retention by the University of a license
which at a minimum shall grant the University the right to use
intellectual property in its internally administered programs of
teaching, research, and public service on a perpetual, royalty-
free, non-exclusive basis. The University may retain more than
the minimum license rights, and assignment or license may be
subject to additional terms and conditions, such as Revenue
sharing with the University or reimbursement of the costs of
legal protection. The University shall negotiate promptly, upon
written request by the creators, the transfer to the creators of
the University's interest in any computer program or software
that it has chosen not to protect or commercialize, subject to
any legal obligation to offer its interest to a sponsor,
licensee, or another institution with rights to the intellectual
property before it can agree to negotiate the transfer of the
University's interest in intellectual property to the creators.
5) Sharing of Revenue. The University shall remit to the
creators or their assignees or heirs, their share of Revenue from
computer programs or software as specified in Section XI.B. of
this policy.
VIII. TECHNOLOGY-MEDIATED INSTRUCTIONAL MATERIALS.
If the University determines that Section VII. is inadequate
to cover technology-mediated instructional materials, in whole
or in part, the University shall insert its own policy
statement in this section. This policy must be consistent with
the provisions of Section VII above and must be based on the
University's mission and must define technology-mediated
instruction and technology-mediated instructional materials,
specify ownership rights and responsibilities for reporting by
Personnel and Students, describe how materials may be
protected and commercialized, specify how costs and Revenue
will be allocated, and describe conditions attached to use of
work prepared for technology-mediated instruction by Personnel
and Students. If the University elects not to have a separate
policy statement, this section will say explicitly that
Section VII applies to technology-mediated instructional
materials.
IX. OTHER TYPES OF INTELLECTUAL PROPERTY
A. Tangible Research Property. The principles in Section VI.
that apply to inventions and patents also apply to tangible
research property.
B. Mask Works. The principles in Section VI. that apply to
inventions and patents also apply to mask works.
C. Plant Varieties. The University owns and may protect or
commercialize plant varieties according to the principles of
Section VI.
D. Trademarks, Service Marks, and Trade Dress. Trademarks,
service marks, and trade dress may be created in association with
an underlying license for another form of intellectual property,
such as a patent or a plant variety ("associated with other
intellectual property"), or independently, such as a university
logo or symbol ("independently created").
1) Associated with Other Intellectual Property. The University
owns a trademark, service mark or trade dress if it is associated
with other intellectual property owned by the University.
2) Independently Created. The University owns trademarks,
service marks, and trade dress that are independently created by
Personnel within the Scope of Employment unless the University
agrees otherwise in writing.
3) Commercialization. The University may commercialize or
license its trademarks, service marks, and trade dress.
4) Registration. The president or designee shall approve
registration of trademarks or service marks, at the state or
federal level.
X. INTERINSTITUTIONAL AGREEMENTS
A. Joint Appointments and Affiliations. This section applies
when an individual has an appointment in and receives support for
research or creative work from two or more Universities and when
a Student or Student Employee is earning a degree in one
University but doing research or creative work in another.
1) Ownership. When more than one University can claim
ownership to intellectual property under this policy, they own it
jointly.
2) Management Agreements. Universities that are or may become
joint owners of intellectual property shall enter into agreements
stating which University will be responsible for management of
the intellectual property. Universities are encouraged to
negotiate standard agreements whenever possible.
a) Terms to be Addressed. The agreements shall state which
institution will be responsible for prosecution of patent
applications or other forms of intellectual property protection,
which institution will license the intellectual property, how
expenses and deductions from Revenue will be allocated, and how
institutional net revenue will be shared. The distribution of
each University's share of Net Revenue, Project Specific Costs,
and General Costs shall be addressed in the management agreement.
b) Student Requirements. With regard to Students and Student
Employees, agreements shall specify whether the degree-granting
University or the supporting University will be responsible for
managing intellectual property they create when that property is
subject to University ownership.
3) Responsibilities of Managing University. The University
managing intellectual property under an agreement shall promptly
inform the other University or Universities about steps taken
with regard to ownership. Such information shall include at
minimum copies of the invention disclosure form, documents
associated with filing for statutory protection, assignment of
rights, and license agreements. If the managing University
decides not to proceed, the other owning University or
Universities shall have the right to assume responsibility as the
managing University.
4) Distribution of Revenue. The managing University shall
distribute Revenue to the creators and share net revenue in all
cases according to Section XI.
5) Disputes. A president may ask the Chancellor to intercede if
the Universities are unable to reach agreement or differ in their
interpretation of an agreement. The Chancellor's decision shall
be final and binding on all parties.
B. Joint Creators. This section applies when Personnel or
Students from two or more Universities collaborate.
1) Early Notification. As soon as collaborators from different
Universities recognize that their efforts have resulted in, or
are likely to result in, the creation of intellectual property
subject to this policy, they shall inform their respective
Universities that an agreement is needed.
2) Agreements Govern. Signed agreements between Universities
shall determine ownership of intellectual property,
responsibility for managing it, and distribution of expenses and
Revenue resulting from its development. Universities whose
Personnel or Students are engaged in frequent collaboration are
encouraged to negotiate standard agreements within the framework
of this policy.
3) Disputes. A president may ask the Chancellor to intercede if
the Universities are unable to reach agreement or differ in their
interpretation of the agreement. The Chancellor's decision shall
be final and binding on all parties.
XI. REVENUE SHARING
Unless otherwise agreed to in writing by the creators of a work
or inventors of an invention, each named creator or inventor
shall receive equal shares of net Revenue.
A. Copyrights. The University shall share with creators
Revenue it receives from copyrights of their work, subject to
certain exceptions.
1) Exceptions
a) Scope of Employment. Revenue generated from work produced
by non-faculty Personnel within the Scope of Employment is
excluded from sharing. However, the University may elect, by
written agreement or University policy, to pay up to fifty
percent of net Revenue to such non-faculty Personnel.
b) Contract. When a third party contract dictates
apportionment of Revenue different from that specified in this
policy, the terms of the contract govern.
c) Equity. Equity shall be distributed in accord with Section
XI.G.
d) Technology-mediated Instructional Materials. University
policy adopted to fulfill Section VIII may exclude some or all
Revenue from sharing.
2) Deductions from Revenue. The University shall make the
following deductions from Revenue before distributing net Revenue
(Section XI.A.3).
a) Creators' Share. First, ten percent of Revenue shall be
distributed among the creators of the work until the cumulative
total reaches the limit set pursuant to this paragraph that was
in effect during the fiscal year in which the University first
received Revenue. The limit in FY2004 is $10,300 to be shared
among the inventors. The Chancellor shall establish a new limit
for each succeeding fiscal year by adjusting the previous year's
limit by an amount reflecting the change in the Consumer Price
Index during the last calendar year completed, rounded to the
nearest $100.
b) General Costs. Second, the University will deduct 30% of
Revenue to cover the general cost of developing, obtaining,
managing, and defending creative works, unless otherwise agreed
to by the University and creators, in writing.
c) Project Specific Costs. Third, the remaining 60% of the
Revenue received from a work shall be applied to reimburse any
specific, incremental expenses incurred by the University in
obtaining and maintaining the copyright, and in developing,
marketing, licensing, and defending the work. After
reimbursement of the University's expenses, Revenue may be used
to reimburse costs incurred by creators on behalf of their own
works but only if the University had authorized such expenses in
advance in writing.
d) Residual Creators' Share. Fourth, after project specific
costs have been paid in full, any remaining Revenue shall go to
the creators until the threshold dollar amount has been paid, as
specified above in Section XI.A.2)a).
3) Distribution of Net Revenue. Net Revenue is the revenue
remaining after deductions under XI.A.2.
a) Creators' Share. The University shall distribute among the
creators fifty percent (50%) of the net Revenue it receives from
their creative work unless applicable laws, regulations,
provisions of grants or contracts, or signed agreements with
creators provide otherwise.
b) University's Share. The University shall receive 50% of the
net Revenue. Each University shall establish guidelines for the
use of its share of the net Revenue. Net Revenue received on
account of copyrighted work shall be dedicated to research,
scholarship, creative work, and related academic activities.
4) Timely Distribution. The University shall distribute
accrued Revenue due creators under this policy at least annually.
Distribution will be made along with a statement of related
income and expenses.
B. Patents and Computer Programs and Software. The University
shall share with inventors or creators Revenue it receives from
their inventions or creations as provided in this section.
1) Exceptions
a) Contract. When a third party contract dictates apportionment
of Revenue different from that specified in this policy, the
terms of the agreement govern.
b) Equity. Equity shall be distributed in accord with Section
XI.G.
2) Deductions from Revenue. The University shall make the
following deductions from Revenue before distributing net Revenue
(Section XI.B.3).
a) Creators' or Inventors' Share. First, ten percent of Revenue
shall be distributed among the creators or inventors until the
cumulative total reaches the limit set pursuant to this paragraph
that was in effect during the fiscal year in which the University
first received Revenue. The limit in FY2003 is $10,000 to be
shared among the inventors or creators. The Chancellor shall
establish a new limit for each succeeding fiscal year by
adjusting the previous year's limit by an amount reflecting the
change in the Consumer Price Index during the last calendar year
completed, rounded to the nearest $100.
b) General Costs. Second, the University shall deduct 30% of
Revenue to cover the general cost of developing, obtaining,
managing, and defending inventions or creative work, unless
otherwise agreed to by inventors or creators and the University,
in writing.
c) Project Specific Costs. Third, the remaining 60% of Revenue
received from a creative work, patent, or invention shall be
applied to reimburse any specific, incremental expenses incurred
by the University in obtaining and maintaining the patent and in
developing, marketing, licensing, and defending the patent or
licensable invention or creative work. After reimbursement of the
University's expenses, Revenue may be used to reimburse costs
incurred by inventors or creators on behalf of their own works
but only if the University had authorized such expenses in
advance in writing.
d) Residual Creators' Share. Fourth, after project specific
costs have been paid in full, any remaining Revenue shall go to
the creators until the threshold dollar amount has been paid, as
specified above in Section XI.B.2)a).
3) Distribution of Net Revenue. Net Revenue is the Revenue
remaining after deductions under XI.B.2.
a) Creators' Share. The University shall distribute among the
inventors or creators fifty percent (50%) of the net Revenue it
receives from their inventions or creations unless applicable
laws, regulations, provisions of grants or contracts, or signed
agreements with inventors or creators provide otherwise.
b) University's Share. The University shall receive 50% of the
net Revenue. Each University shall establish guidelines for the
use of its share of the net Revenue. Net Revenue received on
account of an invention shall be dedicated to research and to the
promotion of patenting and patents.
4) Timely Distribution. The University shall distribute
Revenue due creators under this policy at least annually.
Distribution will be made along with a statement of related
income and expenses.
C. Tangible Research Property, Mask Works, and Plant Varieties.
When tangible research property, mask works, or plant varieties
are licensed, Revenue shall be distributed in the same manner
that Revenue is distributed under Section XI.B.
D. Trademarks, Service Marks, and Trade Dress
1) Creators' Share
a) Associated with Other Intellectual Property. Revenue
received from commercialization of a trademark, service mark, or
trade dress that is related to an intellectual property license
shall be shared with creators of the trademark, service mark, or
trade dress, as specified in Section XI.B.
b) Independently-created trademark, service mark, or trade
dress. Except as provided herein or unless subject to prior
written agreement between the creators and the University, the
University will not share the Revenue from commercialization of a
trademark, service mark, or trade dress with the individuals who
created the trademark, service mark, or trade dress.
2) University Ownership. Revenue received from
commercialization of a trademark, service mark, or trade dress
licensed independently and not directly related to another form
of intellectual property license shall not be shared and shall
belong to the University.
E. Joint Appointment. In situations covered by section X.,
the University's share of net Revenue shall be divided equally
among the Universities or as otherwise provided by written
agreement.
F. Joint Creators. If joint creators are from different
Universities, the University's share of net Revenue shall be
divided equally unless determined by signed agreements as
provided in Section X.B.2.
G. Equity
1) Issuance of Shares. Equity may be issued separately to the
University and the inventors or creators.
2) Distribution of Shares. Equity in a commercial venture
received as consideration for intellectual property rights shall
be shared equally between the University and the creators, unless
a different distribution is negotiated in an agreement signed by
the University and the creators of the relevant intellectual
property.
3) Timely Distribution. When the University receives all
shares directly, as soon as practicable after the University
receives equity, and subject to the creators receiving any
conflict of interest exemptions that must be granted and
complying with any conditions for those exemptions, the
University shall transfer equity shares to the creators. The
University and creators shall have independence in their exercise
of equity holder privileges within the constraints of law,
policy, specific exemption under Maryland law from the State
Ethics Law, and contractual agreements.
4) Unqualified Persons. Personnel or Students not qualified to
hold the equity under applicable law shall designate a qualified
person to receive the equity. If no designee is named within
thirty days of a written request by the University to do so, the
right to a share of the equity shall be forfeited to the
University.
XII. ADMINISTRATION
A. Implementation Options. Each University shall elect one of
the following options for implementing this policy:
1) Adoption. Adopt the USM policy including the requirements
in XII.B., below;
2) Modification. Modify the USM policy, retaining the
requirements in XII.B., below, to reflect the unique needs of the
University based on its mission;
B. University Implementation. Each University shall develop
procedures for implementing this policy that:
1) establish the University's policy on technology-mediated
instructional materials, as required in Section VIII.;
2) establish guidelines for use of materials protected by
copyright, as required by Section V.C.3);
3) establish guidelines for use of the University's share of
net Revenue within the University, as required by Sections
XI.A.3)b) and XI.B.3)b);
4) designate an initial point of contact for intellectual
property issues;
5) publicize and make available the University policy and
implementation procedures;
6) provide the Chancellor with a copy of the University's
policy for approval prior to initial adoption as well as prior to
any subsequent revision (Until such time as the Chancellor
provides written approval of the initial University document,
this USM document shall apply to the University. Subsequent
revisions shall not go into effect until approved by the
Chancellor in writing.);
7) provide the Chancellor with a copy of the University's
implementation procedures for the record.
C. Authority to Subcontract. The University may enter into
contracts with third parties in connection with the development,
administration, and protection of its intellectual property.
D. Special Cases.
1) Issues not addressed. The Board of Regents recognizes that
special cases will arise that are not specifically covered by
this policy. In such cases, Presidents may make a decision on
how to proceed and report that decision to the Chancellor.
Alternatively, the President may submit such cases to the
Chancellor or designee for resolution. All decisions on such
cases shall be reported to the Intellectual Property Committee,
which will take them into account in its annual review of this
policy.
2) Policy waivers. Only the Chancellor may waive any provision
of the USM Policy or of any University's approved policy on
intellectual property. All decisions concerning waiver shall be
reported to the Intellectual Property Committee and to the Board
of Regents.
E. USM Intellectual Property Committee
1) Membership. The Chancellor shall appoint one representative
from each institution from nominees submitted by the presidents.
The Chancellor will assure that faculty members constitute a
significant proportion of the membership and that representatives
of technology transfer offices shall routinely meet with the
Committee. Members shall serve a three-year term. No voting
member may serve more than two consecutive terms. The Vice
Chancellor for Academic Affairs shall chair the Committee,
without a vote.
2) Responsibilities. The Committee shall advise the Chancellor
on intellectual property matters. It shall convene at least once
each academic year to review this policy and may recommend
revisions to the policy. The Committee shall also meet at the
call of the Chair. A University president or the Chancellor may
refer to the Committee for its recommendations to the Chancellor
matters relating to this policy, including relevant matters not
addressed by the policy, and suggestions for revisions. The
Chancellor may ask the Committee for advice on the resolution of
disputes over intellectual property.
3) Creator's Right to Participate. Whenever the Committee
considers this policy's application in order to advise the
Chancellor about a specific work, Personnel or Students who
created the work or their representative may make a written
presentation and an oral presentation to the Committee.
XIII. REPORTING
Each University president shall report annually to the
Chancellor and the Board of Regents on intellectual property
activity at the University. The report, in a format to be
determined by the Chancellor, shall include data for the
preceding year on disclosures, patent applications, patent
awards, licenses, and start-up companies, distinguishing
when appropriate between Maryland-based companies and those
outside of the State. The report shall also include data on
revenue and expenditures associated with the University's
technology transfer function.
(This policy replaces USM IV-3.00 Policy on Patents and USM IV-
3.10 Policy on Copyrights in their entirety.)
Glossary (This section is provided for information only. It is
not part of the policy.)
Commercial venture - a start-up company, limited partnership,
joint venture or any other entity that has obtained an option or
a license to university technology.
Confidential Disclosure Agreement - An agreement or section of an
agreement that prevents parties to the agreement from releasing
knowledge or information without the other's permission.
Copyright - The intangible property right granted by statute for
an original work fixed in a tangible means of expression. A
copyright provides the owner with the following exclusive rights
over a work: to reproduce, to prepare derivative works, to
distribute, to perform publicly, and to display publicly.
Copyright comes into existence immediately at the time the work
is fixed in a tangible means of expression.
Creative works - "Original works of authorship" that are fixed
in a tangible form of expression that may be protected by
copyright. The fixation need not be directly perceptible so long
as it may be communicated with the aid of a machine or device.
Copyrightable works include the following categories: (1)
literary works; (2) musical works, including any accompanying
words; (3) dramatic works, including any accompanying music; (4)
pantomimes and choreographic works; (5) pictorial, graphic, and
sculptural works; (6) motion pictures and other audiovisual
works; (7) sound recordings; and (8) architectural works.
Creator - Refers to an individual or group of individuals who
make, conceive, reduce to practice, or otherwise make a
substantive intellectual contribution to the creation of
intellectual property. "Creator" follows the definition of
"inventor" used in U.S. patent law and the definition of "author"
used in the U.S. Copyright Act.
Disclose - Formally record the essence of a potentially
patentable concept, the circumstances in which it was conceived,
the persons participating in the invention, and the steps taken
to reduce it to practice, if applicable, in accord with the
requirements of U.S. patent law for establishing precedence
Equity or equity shares - Shares of common or preferred stock,
warrants, options, convertible instruments, units of a limited
partnership, or any other instruments conveying ownership
interest in a commercial venture, or options or rights to
purchase an ownership interest.
First sale - The principle that gives the purchaser of a
copyrighted work the right, among other things, to lend it to
others.
Intellectual property - The intangible value developed by human
creativity that is protected by the legal mechanisms of patents,
trademarks, copyrights, service marks, trade secrets, mask works,
and plant variety protection certificates. Rights derived from
legislation include ownership and disposition, including
commercialization. Intellectual property encompasses inventions,
discoveries, know-how, show-how, processes, unique materials,
copyrightable works, original data, and other creative or
artistic works that have value. It also includes the physical
embodiments of intellectual effort such as models, machines,
devices, designs, apparatus, instrumentation, circuits, computer
programs and visualizations, biological materials, chemicals,
other compositions or matter, plants, and records of research.
Invention - any discovery which is or may be patentable or which
may be commercially licensable.
License - A contract in which an intellectual property owner
grants permission to exercise one or more of the rights that an
owner holds.
Mask work - A series of related images representing a
predetermined, three-dimensional pattern of metallic, insulating,
or semiconducting layers of a semiconductor chip product.
Material Transfer Agreement - A contract covering transfer of
physical possession and use of tangible research property into or
out of the university.
Patent (U.S. only) - The intangible property right to exclude
others from making, using, offering for sale, or selling the
invention in the United States or importing the invention into
the United States. In order to obtain patent protection, an
invention must be useful, novel and unobvious.
Plant variety protection certificate - Registration under the
Plant Variety Act of 1970 that protects sexually propagated
cultivars that are distinctive, uniform and true-breeding.
Royalty - Payment made to an owner of intellectual property for
the privilege of practicing a right held by the owner of the
intellectual property under applicable law
Tangible research property - Includes the physical embodiments of
intellectual effort such as models, machines, devices, designs,
apparatus, instrumentation, circuits, computer programs and
visualizations, biological materials, chemicals, other
compositions of matter, plants, and records of research.
Tangible research property is distinct from intangible properties
such as patents, trademarks, copyrights, service marks, trade
secrets, mask works, and plant variety protection certificates.
Individual items of tangible research property may be associated
with one or more intangible properties.
Trade dress - Distinctive and unique packaging, color
combinations, building designs,
product styles, and overall presentations identifying the source,
product, producer, or distributor of goods and services where the
appearance distinguishes the product or business from other
similar products or businesses but is not distinctive or specific
enough to be considered a trademark.
Trademarks and service marks - Distinctive words or graphic
symbols identifying the source, product, producer, or distributor
of goods and services
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