10.03 Inventions, Patents, Copyrights, Trademarks and Other Intellectual Properties
I. Purpose Statement:
Whereas the University of Northern Iowa (UNI) is strongly committed to the discovery of new knowledge and to economic development and technology transfer for the State of Iowa; and whereas UNI has a unique role in contributing to the economic vitality of the state through education of its citizens and providing expertise to Iowa's communities, businesses and emerging growth sectors of the economy. The following policy is adopted to encourage and support creative activity by employees and students for the public benefit and shall be deemed to be a part of the conditions of employment of every employee of the University and a part of the condition of enrollment and attendance at the University for every student
As used in this policy, the following terms have the meanings indicated:
Author - University personnel, singly or as a group, who produce written, visual, recorded or other materials which may be protected by intellectual property law.
Development Costs - Development costs include all costs, expenses and losses paid or incurred in connection therewith, including, but not limited to, all direct costs and expenses, indirect costs and expenses as allocated and determined by the University or the UNI Research Foundation, all attorney's fees and other costs and expenses of obtaining, securing and protecting patents, copyrights, trademarks, trade secrets, and other intellectual property.
Disclosure - A detailed, complete and accurate description of material information relating to an item of intellectual property.
Equity - Common or preferred stock or other security, or the market value thereof, less any debt incurred; the net market value of a business or property; funds provided to a business through sale or transfer of stock.
Intellectual Property - Inventions, copyrights and copyrightable material, patents, trademarks and trade secrets and other forms or types of intellectual property which may emerge in the future.
Intellectual Property Officer (IPO) - The person or persons appointed by the President to facilitate the development and legal protection of intellectual property on behalf of the University.
Inventions - All devices, discoveries, processes, methods, uses, products or combinations thereof, or other similar intellectual properties, whether or not patented or patentable at any time under the U.S. Patent Act law or any international patent agreement as now existing or hereafter written, amended or supplemented.
Inventor - University personnel, singly or as a group, who conceive and demonstrate proof-of-concept, reduce to practice, or otherwise establish the novelty and utility of an invention, as defined above.
Net Proceeds - The gross receipts derived from trademarks, materials, inventions, discoveries and/or intellectual properties, including but not limited to, rents, royalties, dividends, earnings, gains and sale proceeds less development costs.
Permanent Standing Sub-Committee - Committees existing as part of the Intellectual Properties Committee with Sub-Committee Chairs having specialized expertise in copyright, trademarks and patents.
Provisional disclosure - A partial description of an invention or other item of intellectual property which, after consultation with the IPO an inventor or author may submit for establishing priority or for other legal or procedural consideration. A provisional disclosure may be brought before the Committee at the discretion of the inventor and IPO.
Research Foundation - The University of Northern Iowa Research Foundation (UNIRF) is the incorporated unit through which university intellectual properties are owned and managed, and fees, royalties, and other forms of income, but not including equity from intellectual properties are received, disbursed and managed in accordance with the formula set forth below
Trade Secret - Any information, device, method, formula, etc., whether or not copyrightable or patentable, which is not generally known or accessible apart from the University, and which gives competitive advantage to its owner.
Trademarks - Distinctive marks of authenticity such as words, letters, symbols, designs, etc., identifying the source, producer or distributor of goods or services.
University Facilities - All University buildings, laboratories, classes, equipment, supplies, and/or services.
University Personnel - All members of the faculty, staff, and students, without exception.
University Sponsoring Unit (USU) - The college(s), or administrative unit outside the college, or the applicable divisional Vice Presidential office which contributes the financial support for personnel time, procurement and/or prototype development of the intellectual property. The Dean of a college upon approval by UNIRF may designate a unit within that college as the USU for a specific Intellectual Property.
Written Materials - All literary, dramatic and musical material or works, and all other works such as, but not limited to, software, web-based instructional tools and programs, on-line original or proprietary data bases and other information resources, lab manuals, study guides and architectural designs published or unpublished, copyrighted or copyrightable at any time under the Federal Copyright Act as now existing or hereafter written, amended or supplemented.
III. Policy and Policy Administration:
- All matters relating to inventions, patents, copyrights, trademarks and other intellectual properties withwhich the University of Northern Iowa is in any way concerned will be administered by the President of the University or such personor entity as the President may designate. Funding for intellectual property matters, e.g., patent searches and applications, may need to be obtained from external sponsors, for which the University may enter into special license/use agreements, or fromthe University Research Foundation.
- The President may appoint an Intellectual Property Officer(s), Intellectual Property Committee and such Standing Sub-Committees as needed to execute, encourage, and support activities pertaining to all University intellectual property.
- The Committee and Sub-Committees will be composed of the Associate Provost for Sponsored Programs, University Intellectual Property Officer(s), the Director of Business and Community Services, a representative of the Research Foundation, and up to seven members from the University faculty and/or staff. University's designated legal counsel will serve as an ex-officio committee member. Committee members will serve at the pleasure of the President. Sub-Committee Chairs may, at their discretion, request that up to three faculty and/or staff serve on the Standing Committee, with the normal term of appointment to be staggered three-year terms. All members shall serve without additional compensation. The President will appoint a member to serve as Chair for each respective sub-committee.
- The University Intellectual Property Committee (IPC) will have the following responsibilities:
- To support, promote, and encourage University personnel in the development of marketable copyrightable, patentable, or other proprietary intellectual properties; promote the patenting or other means of legal protection of inventions; and encourage personnel in the creation and disclosure of intellectual property.
- To evaluate inventions and discoveries for marketability, patentability, and, where desirable, to consult such expertise as the Committee may require to examine the merits of each potentially patentable invention.
- To recommend to the UNI Research Foundation and/or such person or entity as the President may designate applications for trademarks and patents.
- To recommend to the UNI Research Foundationthe appropriate patent, trademark, trade secret, and other intellectual property and related rights or equities to be held by the UNI Research Foundation in an invention, and to review agreements with cooperating organizations, with respect to patent rights or equities.
- In the absence of overriding obligations to outside sponsors of research, recommend to the UNI Research Foundationthe release of intellectual property rights to the inventor(s) in those circumstances where the UNI Research Foundation elects not to file a patent application or where no further research or development of that intellectual property will be conducted involving University support or facilities. When the IPC and UNI Research Foundation determine not to file a patent application or to cease further development efforts the UNI Research Foundation shall cede all rights and interest in the intellectual property to the inventor(s), with the exception that it may reserve the right to retain a non-divisible, non-distributable 10% share of future royalties or other earnings on subsequent sale or licensure of the invention. (See: <insert link >)
- After consultation with the IPO and legal counsel, recommend to the UNI Research Foundation to cease maintenance of a patent in its portfolio. Upon approval of such recommendation, the IPO shall, 60 days prior to the due date of the next maintenance fee payment, notify the inventor(s) of UNI Research Foundation's intention to abandon its ownership interest in the patent; and shall grant the inventor(s) first right of refusal to secure undivided ownership of the patent, contingent upon the inventor(s)'s payment of legal and maintenance fees. The UNI Research Foundation may reserve the right to retain a 10% share of future royalties or other earnings on subsequent sale or licensure of the patent.
- To recommend to the UNI Research Foundation and/or such person or entity as the President may designate licenses and related agreements entered into with other parties concerning patent, trademark, copyright and related intellectual property right.
- To review the procedures for the collection of royalties and fees and their distribution, and make recommendations to the UNI Research Foundationand/or such person or entity as the President may designate for modification of such procedures.
- To review situations of possible infringement of copyright, patent and trademark rights held by the University or UNI Research Foundation, and in association with the University and/or UNIResearch Foundation's designated legal counsel, to recommend to the University and/or UNI Research Foundation negotiations, litigation, and settlement of matters arising therefrom.
- To assist UNI Research Foundationin negotiation with cooperating organizations concerning prospective rights to patentable inventions, discoveries, or copyrightable materials made as a result of research carried out under grants, contracts or other agreements to be funded in whole or in part by such cooperating organizations, and assist UNI Research Foundationin negotiating institutional patent, copyright, or other agreements with Federal agencies or other organizations regarding the disposition of those intellectual property rights.
- To recommend to the UNI Research Foundation, IPO, or President appropriate exemptions from this policy.
- To make such reports and recommendations to the University President and/or UNI Research Foundationas the President may direct.
IV. Inventions - Duty to Disclose
- An agreement to assign inventions and patents to the UNI Research Foundation, except for those resulting from permissible consulting activities without the use of University facilities, shall be mandatory for all University personnel, for persons not employed by the University but who use University facilities in the development of intellectual property, and for those who receive grant or contract funds through the University. Exemptions from such agreements to assign may be authorized in those circumstances where the mission of the University is better served by such action, provided that the overriding obligations to other parties are met and such exemptions are not inconsistent with other Board of Regents' or University policies (for example, students, merely because of enrollment at the University, will not be subject to this policy except for theses copyrights, see below).
- University personnel and all those using University facilities in the development of intellectual property shall properly disclose, in a reasonable and prompt manner, the conception and/or reduction to practice of potentially patentable or otherwise legally securable inventions in keeping with the time restrictions of U.S. patent or trademark law. Such disclosure shall be made to the Intellectual Properties Officer. Persons making disclosures shall execute such declarations, assignments or other documents as may be necessary in the course of invention evaluation, patent prosecution, or protection of patent rights.
V. Licensing and distribution of royalties for patents and other intellectual property
The President of the UNI Research Foundation or designee will, upon signature, grant written license agreements, on behalf of the UNI Research Foundation following review by IPO and approval by legal counsel.
- Distribution of royalties
Subject to restrictions arising from overriding obligations of the University pursuant to grants, contracts or other agreements with outside organizations, the UNI Research Foundation agrees, for and in consideration of, the assignment of patent or other intellectual property rights, to pay annually to the named inventor(s), the inventor(s)' heirs, successors or assignees, a royalty share of the net proceeds received by the UNI Research Foundation for each patent or other intellectual property right assigned to the UNI Research Foundation, as shown below. In situations where additional costs are known to be forthcoming, for example when patent maintenance fees will be due, funds sufficient for payment may be withheld from distribution by the UNI Research Foundation. Where there are two or more inventors, each inventor shall share equally in the inventor's share of net proceeds, unless all inventors previously have agreed in writing to a differing distribution of such share. Modifications to existing patents and new patents that modify existing license agreements will be treated as a component of the existing patent and/or license agreement and therefore will not result in further inventor's share claims. Distribution of the inventor's share of net royalties shall be made at least annually. In the event of any litigation, actual or imminent, or any other action to maintain or protect its rights and interest in a patent or other intellectual property, the UNI Research Foundation may withhold distribution of all or any portion of net royalty or other proceeds from the patent or intellectual property in question until resolution of the matter. Of the remaining net proceeds, the shares shall be distributed as indicated in the table below. The UNI Research Foundation will not be responsible for interest payment on royalty income disbursed on or after the agreed date of disbursement.
- Use of proceeds
Proceeds from inventions which are held by the UNI Research Foundation shall be used for the support of University research, technology deployment and scholarly activities; however, exceptions may be granted by the University President or President's designee.
The following distribution table applies only to licensing fees, royalties, and other income realized from patents or other intellectual property held by the UNI Research Foundation. Unless otherwise stipulated, income from sale of equities and other assets related to or deriving from intellectual property is not subject to distribution under this formula.
Total Net Royalty Per Invention
UNI Research Foundation
University Sponsoring Unit Share
(after patent prosecution and maintenance costs are recovered by UNIRF or the USU, whichever party expended those costs.)
This distribution shall apply to all inventors who submit intellectual property disclosures on or after the effective date of this revised policy. Distribution of revenues of previous disclosures shall be governed by the distribution formula in force at the time of the disclosure.
- Ownership and disposition of copyrightable materials.
Copyright ownership and the rights thereof are terms provided by Federal law. The University believes that its copyright policy objectives will best be attained within the context of the Federal law by defining the equities of ownership of copyrightable material in terms of the following categories. Copyright ownership of all materials, which are developed with the use of University facilities, shall reside with the University or the UNI Research Foundation as allowed and provided by law, except as follows:
- The University will not assert ownership of copyrightable materials produced by faculty members as a part of their normal, individual teaching or scholarly activities at the University unless University ownership is specifically provided for in a related agreement.
- Copyright ownership of all materials which are developed in the course of, or pursuant to, sponsored research or other agreement(s) will be determined in accordance with the terms of those agreement(s) or Federal or State law directly applicable to the agreement. In the absence of such agreement terms, or Federal/State law, except as provided under F.(1.)(a.) above, the copyright will be the property of the University to the extent allowed by law.
- In the case of theses, the author(s) of a thesis shall own the thesis copyright but must, as a condition of a degree award, grant royalty-free permission to the University to reproduce and publicly distribute copies of the thesis.
- Revenues received through the licensing of copyrights shall be shared as defined by the distribution for patent royalties.
All trademarks held by or pertaining to the University are the exclusive property of the University. No steps shall be taken by University personnel for securing trademarks by usage or registration with respect to the University or any products resulting from the University's name or scholarly, research, athletic or other activities, except with the approval of the President, or President's designee after consultation with the University Intellectual Property Committee and the appropriate standing sub-committee. Applications for trademarks will be pursued on behalf of the University by the chair of the Permanent Standing Sub-committee on Trademarks with the approval of the Intellectual Property Officer. Revenues received through the licensing of trademarks shall be shared as determined by the President.
VIII. Other Intellectual Property
Other forms of intellectual property, including those which may emerge in the future, shall be administered by the President or President's designee after consultation with the Intellectual Property Committee in accordance with applicable law and policy governing the University's interests in inventions and patents.
IX. Making Scientific and Other Research Available to the Interested Public
Consistent with the purpose of this Policy as outlined in Section A, the scientific and other research which results in the securing of intellectual property rights for the benefit of UNI and the UNI Research Foundation under this Policy shall be made available to faculty, staff and students of the university, and to members of the general public, but only after all necessary steps have been taken to secure full legal rights to the inventions, patents, copyrights, trademarks, or other intellectual property which are subjects of this Policy. Once those rights have been secured, copies of the scientific and other research materials shall be placed in the University of Northern Iowa Library, where such material will be available to the members of the general public.
Procedures of the Intellectual Property Officer, Intellectual Property Committee, and Inventors
The Intellectual Property Officer and Intellectual Property Committee may:
- After specific approval of the Intellectual Property Committee, waive University or UNI Research Foundation rights to an invention or other intellectual properties;
- Recommend that patent, copyright, and license applications be submitted on behalf of UNI the UNI Research Foundation and/or the author(s) or inventor(s), and encourage the submission of trademark license applications;
- Recommend copyright registration on behalf of the University; patents on behalf of the UNI Research Foundation and/or the author(s) or inventor(s) respectively; and encourage trademark registration on behalf of the University;
- Recommend written license agreements on behalf of the University and/or UNI Research Foundation following approval by legal counsel in regard to patents, trade secrets, and copyrights; and encourage and support trademark license agreements.
- Recommend purchase of licenses for non-University copyrighted material or patented inventions for University use and/or sub-license following approval by legal counsel;
- Recommend licensure of the University's or UNI Research Foundation's copyrighted materials, trademarks and patented inventions;
- Recommend on behalf of the University and/or inventor(s) or author(s) any agreements as may be appropriate following approval by legal counsel;
- Obtain and maintain documentation as necessary in all matters concerning the management of intellectual properties;
- Recommend royalty division agreements with the inventor(s) or author(s) on behalf of the UNI Research Foundation;
- Seek out and recommend appropriate patent management and license marketing organizations, recommend to the UNI Research Foundation working contracts between such organizations and the UNI Research Foundation and, after consultation with the Intellectual Property Committee, transmit reports of invention(s) to such organizations;
- Facilitate communication and cooperation between all parties involved; and at the behest of the University President facilitate compliance with the terms and conditions of this policy; and
- Prepare and submit a semi-annual report on the University patent, copyright, trademark and license activities and finances to the University President, and prepare such other reports and perform such other functions as may be requested by the President or the UNI Research Foundation.
- The IPC will make a decision to file a full disclosure with the Research Foundation within 3 months from the date of receipt of the complete disclosure. In certain cases, the IPC may also elect to file an expedited full disclosure which may be authorized for immediate transfer to the Research Foundation upon a majority affirmative vote of the members.
Procedure for Inventors
- University personnel and contractors covered by intellectual property agreements are required to report intellectual property discoveries to the IPO.
- The inventor and IPO (on behalf of the University and UNI Research Foundation) will sign a confidentiality agreement.
- The inventor shall submit the Intellectual Property Disclosure" to the IPO.
- The Inventor will assist the IPO in conducting a patent abstract search.
- The IPO and inventor will prepare a summary of the invention and relevant legal, marketing, and other information that may be of use to the IPC in determining how to proceed with securing and developing the invention. In certain cases an inventor, with approval of the IPO, may elect to file a Provisional Disclosure; a provisional disclosure may be activated at any time upon request of the inventor, the IPO, or the IP Committee, provided that requirements for adequate documentation and legal authorization have been met.
- The IPC may invite the inventor to make an oral presentation to the IPC, in executive session, at the next meeting after the Intellectual Property Disclosure is received by the IPO.
- At the time of transfer, the inventor will assign all rights to the invention to the University of Northern Iowa Research Foundation.
Procedures for Committee Meetings and Disclosures
- Frequency: Quarterly, and when called by the Chair of the committee.
- General meeting(s). Policy matters including activity report, financial report and general business.
- Executive Session(s) (as needed for specific Standing Sub-Committees). Presentation of disclosures by inventors; committee discussion of disclosures and actions to take regarding past disclosures; and confidential licensing agreements.
Budget will be derived from funds advanced by the UNI Research Foundation on an annual basis and other funds sources identified by the University. The Chair of the committee and the Intellectual Property Officer (IPO) or designee will have signature authority for expenses directly related to legal services and other costs associated with preparation or development of approved disclosures.
Academic Affairs Council, approved 2009 Intellectual Property Committee, approved April 29, 2009. President's Cabinet, approved June 9, 2009.