D. Intellectual Property Policy

(Note: OLPM sections on this page may be cited following the format of, for example, "UNH.VIII.D.1". These policies may be amended at any time, do not constitute an employment contract, and are provided here only for ease of reference and without any warranty of accuracy. See OLPM Main Menu for details.)

1. References

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

UNH Primer on Copyright Law and Recommended Procedures

Acknowledgement of Intellectual Property Policy and Assignment

2. Preamble

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 legal mechanisms. Most commonly these are legal protections covering 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 Intellectual Property and materials for the public good and to expedite their development and transfer. Concurrently, the rights and privileges of Innovators 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 On behalf of the Office of the Senior Vice Provost for Research (OSVPR), UNHInnovation (UNHI) is responsible for managing the University's Intellectual Property. Administration of the principles and policy set forth herein shall be the responsibility of UNHI. 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 Senior Vice Provost for Research (SVPR) 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 the University community concerning the procedures that should be followed in order to gain adequate protection between the time of conception of an Invention, discovery, Trademark or Copyrightable Work and the processing of a formal application for a patent or registration.

4. Applicability

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.

5.1 Assignment. The process of transferring ownership of the Intellectual Property from the Innovator 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 and Copyrightable Work(s). As defined in 17 US Code, copyright is granted by the United States government to the author of "original works of authorship fixed in a tangible form of medium." As often found in academia, 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, photography, audio-visual works, and film);

5.2.3 Copyrightable software (academic, research, and commercial);

5.2.4 Mask Work(s) (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 multimedia 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 a creation of Intellectual Property as required under this policy.

5.5 Exempted Scholarly Work. This applies to Copyrightable Works where the University waives its ownership interest in favor of the author. See Section 8 of this policy.

5.6 Innovator(s). The person(s) who devises, creates, and produces Intellectual Property.

5.7 Intellectual Property. As used in this policy, includes not only Inventions, authored works, Trademarks, or other knowledge products which may be protected legally (such as with Patents and Copyrights), but also physical or tangible embodiments, such as biological organisms, unpatented plant varieties, or other Tangible Research Properties. See Section 5.21 of this policy. Intellectual Property is also known as Innovation(s) in this policy.

5.8 Invention. Any invention or discovery which is or may be patentable or otherwise protectable in regards to ownership. Examples: new fluorescence optics instrument, new algorithm for data compression, new chemical process, new plant variety, or new monoclonal antibody.

5.9 Inventor(s). The person(s) who devises, creates, and produces something not previously known or existing and who is determined to be an inventor under applicable patent law. Inventor(s) is a specific category of Innovator.

5.10 Intellectual Property Disclosure. The process of disclosing Intellectual Property to UNHI.

5.11 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 may add value to Intellectual Property Licenses.

5.12 License. A legal contract that grants to others certain legally protected rights of use in Intellectual Property. The License establishes the rights and obligations of each party and sets Royalties. It also identifies whether the License is exclusive or non-exclusive, the field of use, and the territory.

5.13 Material Transfer Agreement (MTA). A legal document that governs the transfer of Tangible Research Property between the University and a potential partner for purposes including testing and evaluation.

5.14 Net Income. As used in this policy, Net Income is the amount of money received by UNH from licensing after deduction of certain expenses connected with developing, securing, maintaining, and commercializing the Intellectual Property. For example: UNH receives a royalty payment of $100,000 and incurs Patent-related expenses of $15,000 and licensing expenses of $3,000. The Net Income is $100,000 minus $18,000, leaving $82,000. Net Income does not include research funding provided by a licensee, equipment, gifts, or other non-Royalty-based items of value.

5.15 Owner(s). The individual(s) or entity holding the rights and title to the property. Property can be either tangible or intangible.

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. The USPTO grants three types of Patents: utility Patents for novel, useful, and non-obvious Inventions; plant Patents for any distinct and new variety of plant that is asexually reproduced; and design Patents for a new, original, and ornamental design for an article of manufacture.

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 value paid by a commercial partner, other university, or other entity for the right to use Intellectual Property. Royalties are often expressed as a percentage of the licensee's sales revenue earned through use of the Intellectual Property.

5.20 Start-Up. 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 individual 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 word, 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 by the University 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 an academic 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 special resources, use of special instrumentation, or special financial assistance.

6. Intellectual Property Ownership

6.1 UNHI shall determine the appropriate ownership classification for each Intellectual Property case reviewed.

6.2 A Covered Individual shall own Intellectual Property discovered, created, or developed by the individual, unless one or more of the following prevails, in which case the Intellectual Property is hereby assigned to the University:

6.2.1 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.

6.2.2 Intellectual Property resulted from a Covered Individual making significant Use of University Resources or equipment beyond what is considered normal usage.

6.2.3 The Covered Individual discovered, created, or developed the Intellectual Property for which there is a legal obligation that designates 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.

6.2.4 The Intellectual Property is a “work made for hire” under the U.S. Copyright Act of 1976 (17 USC 101), in which case the University is the author and owner.

7. Student Intellectual Property

7.1 Undergraduate students: Undergraduate students shall own any Intellectual Property they make, discover, or create unless one or more of the following applies, in which case the Intellectual Property is hereby assigned to the University:

7.1.1 The student developed the Intellectual Property while receiving financial support from the University in the form of wages, salary, stipend, or grant funds;

7.1.2 The student made significant Use of University Resources (including University-administered funds, facilities, or equipment);

7.1.3 The student developed the Intellectual Property in the course of research 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 designates ownership of Intellectual Property;

7.1.4 In all instances of Assignment to the University by undergraduate students, the student will share in the distribution of Royalties. See Section 12 of this policy.

7.2 Graduate Students: Graduate students shall own any Intellectual Property they make, discover, or create unless one or more of the following applies, in which case the Intellectual Property is hereby assigned to the University:

7.2.1 Intellectual Property was developed 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;

7.2.2 Intellectual Property was developed from work directly related to the graduate student’s employment or research responsibilities at the University;

7.2.3 Intellectual Property was developed from work performed under a grant or other sponsorship, or undertaken with other Covered Individuals who have a duty to make Assignment to the University.

7.3 Intellectual Property arising from a dissertation submitted as a part of the requirements for a degree shall be subject to this Intellectual Property policy. In instances where graduate students are required to make Assignment to the University, such students will share in the distribution of Royalties. See Section 12 of this policy.

7.4 Theses and Dissertations. All student theses and dissertations and derivatives of these works are considered Exempted Scholarly Works (see Section 8 of this policy) and the student will own the Copyright unless the work was commissioned by the University or is under legal obligation. The University, however, retains a non-exclusive, irrevocable, 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 are assigned per Section 6 and/or Section 7 of this policy. However, where not contrary to the terms of legal agreements, the University waives its ownership in the interest to the author for Exempted Scholarly Works, subject to the retained license prescribed by Section 8.2 of this policy. 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 websites, course descriptions/notes published electronically;

8.1.4 Photographs, films, charts, transparencies, video and audio recordings;

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;

8.1.8 Music;

8.1.9 Furniture design.

8.2 If a Covered Individual is granted, pursuant to this section, Copyrights that would otherwise be owned by the University in instructional materials, such as class notes, curriculum guides, theses, or dissertations, the University retains a non-exclusive, irrevocable, Royalty-free License to use, display, duplicate, create derivative works from and/or distribute the materials with appropriate attribution for University 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 UNHI any Intellectual Property, whether or not the Covered Individual believes the University has a direct interest, by completing an Intellectual Property Disclosure.

9.2 If an Invention was funded wholly or in part by the Federal government, the Intellectual Property Disclosure form must be filed promptly as required by Federal law 37 CFR 401.

9.3 Property rights shall depend upon the classification of the Intellectual Property. (Refer to Section 6 and/or Section 7 of this policy.)

9.4 Disclosure to UNHI 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. The opportunity to patent an Invention and/or file for a Trademark registration is brought to the attention of UNHI when the Innovator documents the Invention or Trademark using the Intellectual Property Disclosure. UNHI will then consider whether the Invention or Trademark should be protected through filing an application or registration with the USPTO. In making this decision, UNHI may call upon other persons, associated or not associated with the University, for technical or other advice. To reach a decision, UNHI will consider not only the importance of the Invention or Trademark, but also whether or not the interests of the Innovator, the University, and the public would be served best by a Patent or Trademark registration. When the Invention/Trademark is assigned to the University under Section 6 and/or Section 7 of this policy, UNHI will respond to the Innovator(s) within a reasonable time from its receipt of the Intellectual Property Disclosure with a decision on patentability or trademarking, taking into consideration the nature of the disclosure, stage of development of the Intellectual Property, any legal obligations, and commercial potential.

10.1.1 When the Invention/Trademark is assigned to the University under Section 6 and/or Section 7 of this policy, UNHI shall make a determination about patenting or trademarking based upon the commercial potential or other legal obligations.

10.1.1.1 If UNHI decides to file a Patent or Trademark application, the Innovator will be expected to provide all reasonable assistance in preparing the application. For Inventions developed under Federal sponsorship, the Patent process must also conform to grant and contract terms and conditions, with particular attention to 37 CFR 401.

10.1.1.2 If UNHI decides not to file a Patent or Trademark application, UNHI may, upon request and to the extent possible under the terms of any agreements that supported the work, reassign ownership to the Innovator(s). In such cases, the Invention/Trademark will be released to the Innovator(s) and the University will waive its rights to Assignment in a formal Release Agreement that clarifies title in the Intellectual Property. The Innovator(s) shall be free to make a Patent or Trademark application on his/her own responsibility but understands that any future work or improvement which utilizes any released Innovation will require a new Intellectual Property Disclosure and UNHI will evaluate and may elect title to the new use/improvement (this will not affect title of the original Innovation). When an Invention results from Federal funding, the right to patent is held 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 Intellectual Property, the Innovator must assume all liabilities connected with the exploitation and defense of the Intellectual Property or discovery and must acknowledge any rights held by research sponsors. The Innovator(s) must not use the name of the University in advertising or otherwise promoting the development, manufacture, or use of the Intellectual Property. In the event the Intellectual Property was the subject of a Patent or Patent application or Trademark or Trademark application paid for by the University, the Innovator(s) agree to reimburse the University for all out-of-pocket Intellectual Property-related expenses out of future revenues generated through exploitation of said Patent or Patent application or Trademark or Trademark application.

10.2 Copyrights and Mask Works Protection.

10.2.1 Notices.

10.2.1.1 If materials are published (i.e., distributed to any sizable audience) without a proper notice as described 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:

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 was first published.

10.2.2 Registration. Additional rights and protection for Copyrightable Works and Mask Works require registration with the U.S. Copyright Office, which will be coordinated through UNHI after Disclosure.

11. Commercialization of University-Owned Intellectual Property

The commercialization of the University’s Intellectual Property can be a lengthy process and requires relationships with businesses that have the ability and desire to utilize the Intellectual Property. The benefits of transferring the Intellectual Property include 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 the Innovator(s)' participation and cooperation.

12. Income Received from Intellectual Property

12.1 The University will distribute Royalties and other Net Income received from the licensing of Intellectual Property according to the following schedule:

30% of Net Income to the Innovator(s)/author(s)/developer(s), hereinafter called Innovator;

30% of Net Income to the Innovator's college or school (or program, if the Innovator is not associated with a college or school);

30% of Net Income to a University-wide Research and Development Fund administered by the SVPR; and

10% of Net Income to UNHI.

12.2 Where Intellectual Property is conceived jointly by two or more Innovators, each of the co-Innovators shall share in the Innovator's distribution equally unless another distribution is desired and included in the original Intellectual Property Diclosure Form.

12.3 For administrative efficiencies, UNHI shall make annual Net Income payments per the above schedule in the instances when any individual Net Income payment is less than $25.

13. Equity

The University strives to achieve a creative and entrepreneurial environment for commercializing its Innovations. As such, the University recognizes that the Innovations may result in a new company, as earlier defined as a Start-Up. See Section 5.20 of this policy. The University in these instances may accept equity in the Start-Up company as a portion of its consideration for the License.

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 Acknowledgement of Intellectual Property Policy and Assignment 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 its publication and dissemination in the UNH Student Rights, Rules and Responsibilities.

15. Appeal

In cases where rights and/or equities are in dispute, UNHI shall report in writing such dispute to the SVPR. Within 30 days of receipt of the notice, the SVPR shall appoint an ad hoc review committee consisting of four persons: one person selected by the Innovator(s), the Executive Director of UNHI, one person selected by the SVPR, and one by the Provost. 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 SVPR. 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.