UNHI Creative Works Symposium Session: Deconstructing UNH Intellectual Property Policy

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UNH’s Intellectual Property Policy

Creative Works Symposium

April 29, 2015

Maria Emanuel, Ph.D. – Associate Director

UNHInnovation

© 2015 University of New Hampshire | innovation.unh.edu

© 2015 University of New Hampshire | innovation.unh.edu 2

Agenda

• Universities and Intellectual Asset Management (IAM)– Tech Transfer– UNHInnovation

• IAM Tools– Bayh-Dole Act– UNH Intellectual Property Policy – Examples at UNH

• Resources

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Intellectual Asset Management

Why Do Universities Care about IAM?


Vitamin D

• Dr. Harry Steenbock, 1923 • Wisconsin Alumni Research Foundation

(WARF), 1925• 2014: WARF has a $2.6B endowment;

contributes over $70M annually to UW-Madison to further research; 70%

of income comes from Vitamin D


What is Technology Transfer?

• Process of transferring skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments or universities and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services

*Wikipedia


What is Technology Transfer?

• Service to faculty• Service to the public

– New products to market

• Economic development– Supporting start-ups, licensing locally

• Revenue generation• Compliance

– Bayh-Dole– Institutional policies Axanova L. U.S. Academic Technology Transfer Models:

Traditional, Experimental and Hypothetical. les Nouvelles, June 2012, p.125 -136.


What is Technology Transfer/UNH

• UNH Mission: From its main campus in Durham, its college in Manchester, and the UNH School of Law in Concord, the University serves New Hampshire and the region through continuing education, cooperative extension, cultural outreach, economic development activities, and applied research.



• UNH Mission: From its main campus in Durham, its college in Manchester, and the UNH School of Law in Concord, the University serves New Hampshire and the region through continuing education, cooperative extension, cultural outreach, economic development activities, and applied research.

OUTREACH



• Facilitating the availability of UNH’s research and knowledge for use and consumption by larger audiences while maintaining fidelity to the research

• Contributing to the UNH research enterprise brand

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Deriving maximum benefit from the knowledge that we create




• Identification• Evaluation

– Protectability– Marketability

• Protection– Patent– Trademark– Copyright– Know-How– Tangible Research Property

• Commercialization– Continuum of options

• Management


A Continuum of Options

• There are a continuum of commercialization options– Open Source/Creative Commons– Copyright/trademark licenses – Patentable innovations that are not patent protected– Patented innovations

• UNH Examples:– Polyfrag software (Meghan MacLean)– Plant varieties developed by Brent Loy– Itaconic acid polymerization (Itaconix/Yvon Durant)– InterOperability Lab (IOL) Test Tools

• Royalties Since 2012: $170K• Drive Consortia Memberships• Beta versions to develop more robust tool

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Tools


Bayh-Dole Act

• Patent and Trademark Law Amendments Act• Patentable intellectual property arising from federal

government-funded research• Pre-1980:

– Federal research funding contracts and grants obligated inventors (where ever they worked) to assign inventions they made using federal funding to the federal government

• Post-1980:– Bayh–Dole permits a university, small business, or non-profit

institution to elect to pursue ownership of an invention in preference to the government


Bayh-Dole Act

• Encourage utilization of inventions produced under federal funding• Permits universities (all non-profits) and small business to elect to retain title

to inventions made in performance of the federally funded program • Permits exclusive licensing with transfer of an invention to the marketplace

for public good. Government receives royalty-free, non-exclusive license to use for government purposes (including use by government contractors)

• University must disclose invention to the government within two months after disclosure to university

• University has two years after disclosure to the government in which to elect title. If title is elected by the university, a patent application must be filed. If title is not elected by university, the right to take title defaults to the government

• Make efforts to attract, and give preference to, small business licensees


Bayh-Dole Act

• Share royalties with the inventor• Use the balance of royalties after

expenses for scientific research or education

• University agrees to require, by written agreement, its employees to disclose promptly in writing each invention made


UNH IP Policy: History

• 1990– Established UNH IP Policy

• 2006– Significant revision of IP Policy, including student IP rights and

commercialization of UNH-developed works

• 2014– Editing or cleaning up of language to conform across all policies

at UNH– Clarification of Exempted Scholarly Works ownership and license– Clarification of student IP ownership– Improved innovation release process


UNH IP Policy: Applicability (Section 4)

• Covered Individual: All members of the University community– 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.

• 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.

• This policy should not be construed to limit the right of any member of the University community to conduct his/her research/scholarly work.


UNH IP Policy: IP Ownership & Covered Individuals (Section 6)

• A Covered Individual shall own all IP discovered, created, or developed by the individual unless:– IP discovered, etc. while conducting University duties for which

the individual is employed (receives salary, wages, stipend, or grant funds)

– IP resulted from an individual making Use of University Resources beyond what is available to the non-University community

– Legal obligation otherwise restricts IP ownership (e.g. Sponsored Research Agreement, NDA, MTA)

• You own the copyright in Exempted Scholarly Works; the University has a royalty-free license to use it as well.


UNH IP Policy: IP Ownership & Graduate Students (Section 7.2)

• Graduate students shall own all IP discovered, created, or developed by the individual unless:– IP discovered, etc. 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

– IP resulted from work directly related to the graduate student’s employment or research responsibilities at the University

– IP 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

• All student theses, dissertations, and derivatives of these works are Exempted Scholarly Works. Graduate student owns the copyright, although the University has a royalty-free license to use it as well.


UNH IP Policy: IP Ownership & Undergraduate Students (Section 7.1)

• Undergraduate students shall own all IP discovered, created, or developed by the individual unless:– IP discovered, etc. while receiving financial support from the

University in the form of wages, salary, stipend, or grant funds– IP resulted from an individual making Use of University

Resources beyond what is available to the non-University community

– Legal obligation otherwise restricts IP ownership (e.g. Sponsored Research Agreement, NDA, MTA)

• Works produced for class assignments remain the property of the student, unless any of the above apply. This includes patentable inventions and copyrights.


UNH IP Policy: Exempted Scholarly Works (Section 8.1)

• 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

• Academic software (not for commercial use)• Electronic publications such as websites, course descriptions/notes

published electronically• Photographs, films, charts, transparencies, video and audio recordings;• Graphic and sculptural works, works of art, architectural plans and

structures• Dress and fabric designs• Theses and dissertations• Music• Furniture design


UNH IP Policy: Exempted Scholarly Works (Sections 8.1 and 8.2)

• Exempted Scholarly Works ownership:– University waives its ownership in the interest to the

author for Exempted Scholarly Works• Provided this is not contrary to the terms of legal agreements

– And, 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

• For instructional materials, such as class notes, curriculum guides, theses, or dissertations


UNH IP Policy: Royalty Distribution (Section 12)

• Net Income Received from IP is distributed as:– 30% Innovator(s)/author(s)/developer(s)– 30% Innovator’s college/school– 30% Office of the Senior Vice Provost for Research– 10% UNHI


UNH IP Policy: Acknowledgement (Section 14)

• Acknowledgement of Intellectual Property Policy and Assignment

– Required under the Bayh-Dole Act for federally-funded projects

– Part of UNH IP Policy– ‘I hereby expressly and solely assign to the

“University of New Hampshire” all right, title and interest in and to any such Innovation.’

• Stanford vs. Roche (2011)

– Included in Visiting Scholar Agreements


UNH IP Policy: Return of Innovations (Section 10)

• If UNHI does not pursue IP rights applications or further commercialization of an innovation, the innovation is released to innovator*– *If federally funded, invention must first be released to federal

agency

• Reimburse the University for all out-of-pocket Intellectual Property-related expenses out of future revenues generated

• Innovator assumes all liability• All new improvements or discoveries developed at UNH

must be reported


Other Policies

• Openness, Access, and Participation in Research and Scholarly Activities Ownership and Management of Research Data

• Financial Conflict of Interest in Research• Conflict of Commitment• Conflict of Interest in Start-up Companies• Management of Equity in Interests in Start-

up Companies

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Intellectual Asset ManagementExamples at UNH


UNHInnovation

• Building public-private partnerships that result in research investments and technology-based economic development

• Assure Bayh-Dole compliance• Manage UNH IP policy• Identify, evaluate, protect, and license University-developed

innovations• Develop and manage non-disclosure/confidentiality

agreements, material transfer agreements, IP-related terms and conditions of sponsored research agreements, and license agreements

• Support spin-out companies for the commercialization of University-developed innovations


FY2014 Metrics - UNHI

College/Department Disclosures

US Full & Provisional Patent Applications Filed US Patents Issued

US Trademark Applications Filed

US Trademarks Issued

Options/Licenses

Royalties Generated

Legal Reimbursements

Start-up Companies

Academic Affairs 0 0 0 0 0 0 266.09$ -$ 0Athletics 2 0 0 0 0 1 1,649.20$ 4,087.50$ 0College of Engineering and Physical Sciences 19 5 5 0 0 0 75,729.85$ 84,183.50$ 0College of Health and Human Services 8 0 0 0 1 2 980.65$ 980.65$ 0College of Liberal Arts 0 0 0 0 0 0 10,479.70$ -$ 0College of Life Sciences and Agriculture 6 1 0 0 0 5 149,250.73$ -$ 0Cooperative Extension 1 0 0 0 0 0 4,500.00$ -$ 0Institute for Earth, Oceans, & Space 9 1 1 0 0 4 8,000.00$ -$ 0General Administration 3 0 0 1 0 0 -$ -$ 0Information Technology 0 0 0 0 0 1 -$ -$ 0Library 1 0 0 0 0 1 -$ -$ 0Peter T. Paul College of Business and Economics 0 0 0 0 0 0 -$ -$ 0Research 10 0 0 0 1 110 287,110.00$ -$ 0UNH School of Law 9 0 0 3 2 0 -$ -$ 0

FY14 Total: 68 7 6 4 4 124 537,966.22$ 89,251.65$ 0

Fiscal Year 2014


Metrics – history of UNHI

FY05OIPM

FY10ORPC

FY13ORPC Transition

FY14UNHI

0

20

40

60

80

100

120

140

$0

$100,000

$200,000

$300,000

$400,000

$500,000

$600,000

Disclosures Licenses Start-UpsUS Patents Filed US Patents Issued Royalties


Metrics: FY00-10, FY11-FY14; % of TotalCollege FY00-10

Inv. Discl.

FY11-14Inv. Discl.

FY00-10Licenses

FY11-14 Licenses

FY00-10US

Patent Appl.

FY11-14 US

Patent Appl.

FY00-10Royalties

FY11-14Royalties

FY00-10Start-Ups

FY11-14Start-Ups

Eng. and Phys. Sci

76% 39% 34% 8% 77% 89% 12% 6% 71% 33%

Life Sci. and Ag

20% 9% 32% 9% 22% 5% 66% 50% 29% 0%

Paul 1% 1% 0% 0% 1% 0% 0% 0% 0% 0%

Health & Hu. Srvc.

1% 15% 0% 2% 0% 5% 0% 0% 0% 0%

Liberal Arts

1% 4% 6% 2% 0% 0% 7% 3% 0% 0%

Coop. Ext. 1% 2% 2% 0% 0% 0% 0% 2% 0% 0%

IOL 0% 14% 0% 72% 0% 0% 0% 18% 0% 0%

Other 1% 10% 27% 9% 0% 0% 15% 22% 0% 67%

UNH Law N/A 5% N/A 0% N/A 0% N/A 0% N/A 0%


UNH Patents

Compression/Decompression ofImage Files Using a Chaotic System

US 7110547 B2Kevin Short, Math.

Wildcat MandarinUS PP18845 P3Rosanna Freyre, Plant Biology

Tablet StandUS D678297 S1

Therese Willkomm, IOD/OT

Tri-Material Dual-SpeciesNeutron Spectrometer

US 8,710,450Jim Ryan, Space Science Center


UNH TrademarksInnovator(s) Trademark Implementation

Dot Sheehan(Athletics)

OHT (logo)

Apparel

Research Computing & Instrumentation

UNHCEMS®

(wordmark)Online chemical inventory software

Jane StapletonSharyn Potter (Prevention Innovations)

Bringing in the Bystander®

Know Your Power®

(wordmarks)

Curriculum: the role of bystanders in preventing sexual violence

Brent Loy(Plant Biology)

Slick-Pik®

(wordmark)Spineless summer squash

Jill GravinkJanet SableNortheast Passage/CHHS

Northeast Passage Living Beyond Disability (wordmark, logo)

Classes, workshops, camps in adaptive sports for individuals with disabilities

Goal based intervention in therapeutic recreation for individuals with disabilities

University of New Hampshire NH (logo)

Educational Services, merchandise (13 International Classes of Goods)


UNH Copyrights (Non-Software)

Healthy UNH PlateIHPP/Dining Services

Sonar Perspective View of Southeast Alaska

Jim Gardner/CCOM

Transitions textbookUNH ENGL 401 students/English

RENEW™ ProgramJoAnne Malloy/IOD

Mariana TrenchJim Gardner & Andy Armstrong/CCOM

Albert Einstein By Lotte Jacobi

UNH Library


UNH Copyrights - Software

Software Title Innovator(s) Dept./College

UNHCEMS® Phil Collins RCI/OSVPR

ePIP Data Importer Tucker Hurton RCI/OSVPR

CHRT, CUBE, SWGM, MASC’D Brian Calder CCOM/CEPS

MPAA Val Schmidt CCOM/CEPS

Violett, Intact®, Interact, Test Scripts TR-069

IOL OSVPR

AquaFE Ken Baldwin, Judd DeCew CCOM/CEPS

SEVE Courseware Bob Henry CE/CEPS

PolyFrag Meghan MacLean Nat. Resources/ COLSA

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UNH Resources


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UNH Resources

• UNHInnovation– http://innovation.unh.edu/

• Intellectual Property Policy – http://usnholpm.unh.edu/UNH/VIII.Res/D.htm

• USNH General Counsel Office– http://www.usnh.unh.edu/fac/offices/counsel.shtml

• Printing Services http://www.printing.unh.edu/copyright.html• Primer on Copyright Law and Recommended Resources

– http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH%20Copyright%20Primer.pdf

• Digital Millennium Copyright Act (DMCA) Implementation at UNH – http://www.unh.edu/cis/dmca/

• Library http://www.library.unh.edu/about/polreg/copyright.shtml• Research Policies and Procedures www.unh.edu/orps/policies.html• UNH Web Standards and Brand Guidelines http

://www.unh.edu/cpa/web-standards-and-visual-identity-guidelines


http://innovation.unh.edu/

http://innovation.unh.edu/

http://usnholpm.unh.edu/UNH/VIII.Res/D.htm

http://usnholpm.unh.edu/UNH/VIII.Res/D.htm

http://www.usnh.unh.edu/fac/offices/counsel.shtml

http://www.printing.unh.edu/copyright.html

http://www.unh.edu/cis/dmca/

http://www.library.unh.edu/about/polreg/copyright.shtml

http://www.unh.edu/orps/policies.html

http://www.unh.edu/orps/policies.html

http://www.unh.edu/cpa/web-standards-and-visual-identity-guidelines




Contact UNHInnovation

• Marc Sedam, Managing Director• Maria Emanuel, Ph.D., Associate Director• Ellen Christo, Manager, Strategic Partnerships• Timothy Benoît-Ledoux, Licensing Manager• Chelsey DiGiuseppe, Marketing Manager• Paige Smith, Business Manager• Annie Schofield, Program Support Assistant• Andrew Schmid, UNH Law Intern• Mike Leriche, UNH Justice Studies Intern

Gregg Hall35 Colovos RoadDurham, NH 03824603-862-4125

[email protected]@UNHInnovation

https://innovation.unh.edu/

mailto:[email protected]

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