INTELLECTUAL PROPERTY POLICY

Second Discussion Draft, Proposed August 29, 2000

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. Purpose, Scope and Authority

A. Purpose. The purpose of this policy is to establish the terms and procedures whereby the Board of Regents and personnel of the University System of Maryland establish and maintain their interests in intellectual property created by or used at institutions of the University System of Maryland. This policy works within the framework of intellectual property laws governing patents, copyrights, trademarks, and other forms of protected intellectual property. The following policy provides the guidelines governing the ownership and protection of such property at institutions of the University System of Maryland.

B. Scope. The University System of Maryland Intellectual Property Policy, as amended from time to time, is a condition of employment at the University and applies to all paid faculty and staff, full-time and part-time, including student employees. The policy also applies to all adjuncts, consultants, visitors and students who have signed an agreement to accept this policy as a condition of the use of University resources. 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. University faculty and staff, full-time or part-time, engaged in external consulting work or business are responsible for ensuring that agreements emanating from such work are not in conflict with University policy or with the University's contractual commitments. Such personnel should make their University obligations known to others with whom they make such agreements and should provide other parties to such agreements with a statement of applicable University policies regarding ownership of intellectual property and related rights.

D. Authority for Policy. The Board of Regents delegates to the Chancellor authority and responsibility for implementation and coordination of USM intellectual property policy. The Chancellor may seek the advice and assistance of the Intellectual Property Committee composed of representatives from institutions of the University System of Maryland. The Board of Regents further delegates to the chief executive officer of each University responsibility for administration of the USM intellectual property policy and for development of each University's intellectual property policy.

E. Authorization to Implement. In conformity with this policy, the chief executive officer of each University is authorized to enter into agreements with respect to ownership, licensure, disposition of royalty income, resolution of disputes, and other rights related to intellectual property under its jurisdiction. The chief executive officer is authorized to register intellectual property; seek concomitant protection under copyright, trademark, and/or patent; accept intellectual property from third parties; sell or grant licenses or assignments for any rights to intellectual property under the University's jurisdiction; enforce; defend;and take any other actions necessary to administer this policy.

III. DEFINITIONS

Only terms given special meaning in this policy are defined here. To assist the reader, a glossary is appended that supplies meanings for the technical vocabulary used in this policy.

A. Resources Usually and Customarily Provided. Items provided routinely to all members of the personnel group at the unit level, such as office space, library facilities, or ordinary access to computers and networks. Additional items are not usual or customary unless otherwise specified in writing at the time of provision of the resource.

B. Scope of Employment. All activities related to the appointment for which an individual receives compensation from the University.

C. University. One of the constituent institutions of the University System of Maryland, or the University of Maryland Biotechnology Institute, or the University of Maryland Center for Environmental Science, or the University System of Maryland Office.

IV. SPONSORED RESEARCH

Sponsored research agreements shall provide that all intellectual property developed as a result of the sponsored project shall belong to the University. The University may, however, on a case-by-case basis when circumstances warrant, assign ownership of intellectual property that results from sponsored research to the sponsor.

V. COPYRIGHT

A. Ownership

1) Independent Effort. Personnel own the copyright to any work that is prepared outside their Scope of Employment and without the use of University resources. Creators also own copyrights arising from scholarly or original work developed through independent effort, which includes the general obligation of faculty members to teach and to produce scholarly and original works.

2) Directed Effort. The University owns all rights in copyright for work produced by staff within the Scope of Employment, for all work produced in accord with signed agreements, and for all sponsored and commissioned work as noted below.

a) Contractual Obligation. When the University signs an agreement with a faculty member, a sponsor, a contractor, or any University personnel to produce a specific work, the University owns the work unless the University agrees otherwise.

b) Sponsored or Commissioned Work. Any sponsored or commissioned work agreement which provides for ownership by other than the University shall, at a minimum, also provide the University with a free-of-cost, non-exclusive, world-wide license to use and reproduce the copyrighted work for research and educational purposes, except where prohibited by law or government regulation.

3) Use of Resources. The University owns all scholarly and original work for which it has provided Resources beyond those Usually and Customarily Provided, unless a signed agreement states otherwise. For personnel working outside the Scope of Employment but using University Resources Usually and Customarily Provided, a signed agreement with the University shall be required.

4) Acquisition. The University may acquire ownership or use of copyrights by assignment, bequest, or license pursuant to the terms of a written agreement or testament. The University shall administer such intellectual property in accordance with this Intellectual Property Policy unless otherwise provided in the agreement or testament.

B. Responsibilities of creators

1) Early Notification. When pursuit of a project may require use of University Resources beyond those Usually and Customarily Provided, personnel have an obligation to notify the unit head of the nature and extent of resources needed. (See Notification Response. Section V.C.)

2) External Collaborations. Creators dealing with outside persons or organizations may not: (a) sign copyright agreements which abrogate the University's rights as stated in this policy or which otherwise conflict with this policy; (b) use the name of the University in connection with any copyright; or (c) transfer material relating to intellectual property outside the University.

3) Assignment. For work in which the University has a right to ownership or use, creators, 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 work, including assignment of ownership or particular license rights, as deemed appropriate by the University.

4) Protecting University Interests. See Section II.C and the Conflict of Commitment Policy, BOR 41.0 II-3.10.

5) Fair Use. All personnel are responsible for understanding what constitutes permissible use of copyrighted material under the University Fair Use guidelines and for complying with the obligations imposed by copyright law, including obtaining permissions when appropriate.

C. Responsibilities of University

1) Notification Response. When the University authorizes or directs efforts to create a work using University Resources beyond those Usually and Customarily Provided, it shall be explicit about the extent of use of resources, the schedule for the project, control over the work and its revisions, ownership of the work, and allocation of any revenue resulting from it.

2) Resource Use. The University shall periodically review and specify in writing what constitutes the Resources Usually and Customarily Provided to personnel. The standard may vary from unit to unit and perhaps within a unit.

3) Sharing of Revenue. The University shall remit to creators their share of income from copyrights as specified in Section IX.A. of this policy.

4) Fair Use. The University shall develop and disseminate guidelines for the Fair Use of copyrighted materials to ensure that all personnel are fully informed of their rights and obligations under copyright law.

VI. PATENT

A. Ownership

1) Scope of Employment. The University owns inventions created within the Scope of Employment, which includes the general obligation of faculty members to conduct research. The only exception to this policy shall be inventions conceived and first reduced to practice outside the Scope of Employment and without the use of University resources.

2) Acquisition. The University may acquire patents by assignment, bequest or license pursuant to the terms of a written agreement or testament and shall administer such invention in accordance with this Intellectual Property Policy unless otherwise provided in the agreement or testament.

3) Administration. An invention which the University does not own may be offered to the University for administration. If the University accepts, this policy shall govern the administration of the invention unless otherwise agreed.

4) Future Inventions. The University may agree to license or assign rights in future inventions to private corporations or businesses only with the written approval of the chief executive officer.

B. Responsibilities of Creators

1) Disclosure. Creators of inventions subject to University ownership shall disclose those inventions to the chief executive officer or designee in a timely manner. When uncertain about the University's rights, creators shall disclose their inventions.

2) External Collaborations. Creators dealing with outside persons or organizations may not: (a) sign patent agreements or other agreements related to intellectual property (such as licenses, assignments, Material Transfer Agreements, or Confidentiality Disclosure Agreements) which abrogate the University's rights as stated in this policy or which otherwise conflict with this policy; (b) use the name of the University in connection with any invention; or (c) transfer material relating to intellectual property outside the University.

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.

4) Commercialization by Inventors. The University may, at its discretion and consistent with the public interest, 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.