Policies and Procedures

Table of Contents | Index

10.03 Inventions, Patents, Copyrights, Trademarks and Other Intellectual Properties

A. Purpose Statement:

Whereas the University of Northern Iowa (UNI) is strongly committed to the concepts of economic development and technology transfer for the State of Iowa, and 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, business 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. 

B. Policy and Policy Administration:

1. All matters relating to inventions, patents, copyrights, trademarks and other intellectual properties with which the University of Northern Iowa is in any way concerned will be administered by the President of the University or such person or 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 the University Research Foundation.

2. Intellectual Property Officer. The President may appoint an Intellectual Property Officer(s), Intellectual Property Committee and such Standing Committees as needed to execute, encourage, and support activities pertaining to all University intellectual property. The Intellectual Property Officer with the approval of the President or legal counsel may:

a. After specific approval of the Intellectual Property Committee and President, waive University rights to an invention or other intellectual properties;

b. Recommend that patent, copyright, and license applications be submitted on behalf of the University and/or the author(s) or inventor(s), and encourage the submission of trademark license applications;

c. Recommend copyright registration and patents on behalf of the University and/or the author(s) or inventor(s), and encourage trademark registration on behalf of the University;

d. Grant written license agreements on behalf of the University following approval by legal counsel in regard to patent and copyright, and encourage and support trademark license agreements;

e. Purchase licenses for non-University copyrighted material or patented inventions for University use and/or sub-license following approval by legal counsel;

f. Grant use of the University’s copyrighted materials, trademarks and patented inventions;

g. Execute on behalf of the University and/or inventor(s) or author(s) any agreements as may be appropriate following approval by legal counsel;

h. Obtain and maintain documentation as necessary in all matters concerning the management of intellectual properties;

i. Execute royalty division agreements with the inventor(s) or author(s) on behalf of the University.

j. Seek out and recommend appropriate patent management and license marketing organizations, recommend to the President working contracts between such organizations and the University and/or UNI Research Foundation and, after consultation with the Intellectual Property Committee, transmit reports of invention(s) to such organizations;

k. Support the marketing of licensed University trademarked products;

l. In conjunction with the UNI Research Foundation and/or such person or entity as the President may designate (e.g. Athletics in regard to trademark issues), properly receive, account for, disburse all proceeds received pursuant to this policy;

m. Facilitate communication between all parties involved, and enforce the terms and conditions of this policy; and

n. Prepare and submit an 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.

3. The President will appoint a University Intellectual Property Committee and such permanent Standing Committees as deemed necessary. The Committee(s) will be composed of the University Intellectual Property Officer(s) and up to five members including the Associate Director of the Office of Intellectual Property and/or committee chairs 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 ofthe President. 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 committee and the permanent Standing Committees.

4. The University Intellectual Property Committee (IPC) will have the following responsibilities:

a. To support, promote, and encourage University personnel in the development of copyrightable and patentable intellectual properties, promote the patenting of inventions and encourage personnel in the creation of intellectual property.

b. To evaluate inventions and discoveries for patentability, and, where desirable, to consult such expertise as the Committee may require to examine the merits of each potentially patentable invention.

c. To recommend to the inventions and discoveries for patentability, and, where desirable, to consult such expertise as the Committee may require to examine the merits of each potentially patentable invention.

d. To recommend to the UNI Research Foundation the patent and related rights or equities held by the University of Northern Iowa in an invention, and to review agreements with cooperating organizations, with respect to patent rights or equities.

e. In the absence of overriding obligations to outside sponsors of research, recommend to the UNI Research Foundation the release of patent rights to the inventor(s) in those circumstances where the University elects not to file a patent application and where no further research or development of that invention will be conducted involving University support or facilities. The IPC’s decision not to elect to recommend filing a patent application will be made within a period not to exceed three months from the date of first submission of the inventor(s)’ written statement of disclosure of an invention to the Intellectual Property Committee. In every instance in which the IPC determines not to file a patent application or to continue efforts at marketing, or fails to elect to do so within three months from the date of submission of the disclosure, all of the University’s rights to the invention with the exception of the right to retain 5% of future royalties will be released to the inventor(s).

f. 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 property rights.

g. To review the procedures for the collection of royalties and fees and their distribution, and make recommendations to the UNI Research Foundation and/ or such a person or entity as the President may designate for modification of procedures.

h. 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 Research Foundation’s designated legal counsel, to recommend to the University and/or UNI Research Foundation in negotiations, litigation, and settlement of matters arising therefrom.

i. To assist UNI Research Foundation in 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 Foundation in negotiating institutional patent, copyright, or other agreements with Federal agencies or other organizations regarding the disposition of those intellectual property rights.

j. To recommend to the UNI Research Foundation, IPO, or President appropriate exemptions from this policy.

k. To make sure reports and recommendations to the University President and/ or UNI ResearchFoundation as the President may direct.

C. Inventions and Patents

1. 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 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 parities 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 these copyrights, see below).

2. 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 inventions in keeping with the time restrictions of U.S. patent 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.

3. 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 rights, to pay annually to the named inventor(s), the inventor(s)’ heirs, successors or assignee, 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.  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.  Distribution of the inventor’s share shall be made at least annually.  In the event of any litigation’s, actual or imminent, or any other action to protect patent rights, the UNI Research Foundation may withhold distribution of all royalty proceeds until resolution of the matter.  Of the remaining net proceeds, the shares shall be distributed as indicated in the table below. 

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.

(after the patent and/or prototype development costs)

D. Copyrights

1. Ownership and disposition of copyrightable materials.

 Copyright ownership and the right 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 use of University facilities, shall reside with the University or the UNI Research Foundation as allowed and provided by law, except as follows:

a. The University will not assert ownership of copyrightable materials produced by faculty members as a part of their normal teaching or scholarly activities at the University unless University ownership is specifically provided for in a related agreement.

b. Copyright ownership of all materials which are developed in the course of, or pursuant to, sponsored research or other 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 D.1.a. above, the copyright will be the property of the University to the extent allowed by law.

c. 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.2.      Revenues received through the licensing of copyrights shall be shared as defined by the distribution for patent royalties.

E. Trademarks

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 Committee.  Applications for trademarks will be pursued on behalf of the University Chair of the Permanent Standing 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.

F. 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.

G. 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 after all necessary steps have been taken to secure full legal rights to the inventions, patents, copyrights, trademarks or other intellectual property rights which are subject 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 Graduate College, where such material will be available to the members of the general public.

H. Definitions

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, costs and expenses of obtaining, securing and protecting patents, copyrights, trademarks, all attorney’s fees, and other intellectual property.

Disclosure- A detailed, complete and accurate description of material information relating to an item of intellectual property.

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.

Inventions- All inventions, discoveries, processes, methods, uses, products or combinations, or other 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.

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 Committee- Committees existing as part of the Intellectual-Properties Committee with Committee Chairs having specialized expertise in copyright, trademark, and patents.

Research Foundation- The Research Foundation is the incorporated unit through which university intellectual properties are managed, and profits from intellectual properties is received, disbursed and managed.

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 and services.

University Facilities- All University buildings, laboratories, classes, equipment, supplies, and/or services.

University Personnel- Part-time, full-time, visiting and volunteer members of the faculty, staff, and all other agents and employees, undergraduate and graduate students, and postdoctoral fellows of the University.

University Sponsoring Unit- The college(s), or administrative unit outside the college, or the applicable divisional Vice President which contributes the financial support for personnel time, procurement and/or prototype development of the intellectual property.

Written Materials- All literary, dramatic and musical material or works, and all other works such as 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.

UNI Research Foundation and Intellectual Property Committee
Approved by the President’s Cabinet 11/11/02

  
Maintained by: University Marketing & Public Relations / President's Office

Last Updated: July 19, 2007