| Title: | Intellectual Property and Commercialization Policy |
|---|---|
| Policy Owner: | Office of the Vice President for Research |
| Applies to: | Faculty, Staff, Students |
| Campus Applicability: | Storrs and Regional Campuses and UConn Health |
| Effective Date: | September 30, 2015 |
| For More Information, Contact | Office of the Vice President for Research |
| Contact Information: | 860-486-3619 |
| Official Website: | http://research.uconn.edu/ |
Reason for Policy: The University encourages the development and commercialization of intellectual property invented, created and developed by faculty, students and staff. Intellectual property generally consists of patents, copyrights, trademarks and trade secrets. This policy sets out the University’s policies with respect to such intellectual property, including its ownership, protection and commercialization. The policy is organized as follows: (1) Ownership and Protection of Intellectual Property, (2) Commercialization of Intellectual Property, (3) Income Derived from Intellectual Property, (4) Licensing and New Company Formation, (5) Dealing with Outside Parties, (6) Other Considerations, (7) Exceptions, (8) Enforcement, and (9) Related Policies and Procedures. No policy of this nature can cover every possible scenario but it seeks to provide clarity on intellectual property and commercialization issues. The Office of the Vice President for Research (“OVPR”) is the entity at the University primarily responsible for implementing and interpreting this Intellectual Property and Commercialization Policy, and is ready to work with faculty, staff and students to explain these policies and make determinations in specific cases.
Applies to: Faculty, staff and students at the Storrs and Regional Campuses and UConn Health
1. Ownership and Protection of Intellectual Property
A. Inventions and Patents. Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered by the University (“University Inventions”). An issued patent is a limited grant from the federal government or a foreign government giving the owner of the patent the right to exclude others from practicing the inventions claimed in the patent.
B. Copyrights. Copyright protection extends to any original works of authorship fixed in any tangible medium of expression. A copyright owner possesses a series of exclusive rights, including the exclusive right to reproduce the work, prepare derivative works, distribute copies of the work, perform the work (in some cases) and display the work (in some cases). The University does not claim any product of authorship, unless a contract to the contrary modifies this general rule. If a contract grants ownership of the copyrighted work to an industry sponsor or other outside entity, an employee may be required to acknowledge the grant of ownership as a condition of working on such contract. If a contract grants ownership of the copyrighted work to the University, the work will be considered a “University Copyright.” In addition, the AAUP Collective Bargaining Agreement and other relevant collective bargaining agreements may contain provisions that allocate copyright ownership and other rights between faculty, staff and the University.
C. Trademarks. A trademark is a word, name, symbol or design that helps consumers identify and distinguish the source of a product from the products of others. Similarly, a service mark is a word, name, symbol or design used by a person providing services to help the public identify and distinguish the source of the services from the service of others. A trade name is a name used to identify a business. The University owns all rights, title and interest in all trademarks, service marks, trade names and other brand designations that relate to University Intellectual Property (as defined below) or to any University-related program of education, service, public relations, research or training (“University Trademarks”). University Trademarks may be used only with the express written permission of the University. Except as stated in Section 3(C), this Policy does not cover the use or licensing of University Trademarks; a link to the University’s trademark licensing procedures can be found in the “Related Policies” section of this Policy.
D. Trade Secrets. A trade secret is any formula, pattern, device, method, know how or compilation of information that derives independent economic value from not being known by others, and is the subject of efforts by the owner to maintain its secrecy. The University maintains a number of trade secrets, including but not limited to, unpublished grant proposals, invention disclosures and scientific data for which the University has not applied for patent protection (“University Trade Secrets”). The University will also agree on a limited basis to maintain the trade secrets of its industry partners.
E. University Intellectual Property or UIP. For the purposes of this Policy, University Inventions, University Copyrights and University Trade Secrets are referred to as “University Intellectual Property” or “UIP.” As noted above, University Trademarks are covered by a separate policy.
2. Commercialization
A. Industry Sponsored Research. The University is committed to developing industry collaborations and supporting research and development. The University understands that industry partners have diverse and unique needs, and is committed to providing contract terms and IP rights that meet these needs. Faculty members intending to work with industry partners should contact the OVPR so that different options can be discussed. The University offers many innovative intellectual property ownership models, including granting exclusive and non-exclusive licenses, which provide broad benefits to both industry and the University.
B. Government Sponsored Research. UIP arising from research funded by the US government or other funding agency will be controlled by the terms of the grant or contract and applicable laws, including the Bayh-Dole Act. Government-funded UIP will usually be owned by the University, subject to certain rights retained by the government.
C. Student Intellectual Property. Students will own the intellectual property that they invent, create and develop, including work created for a class, unless the student is (1) working on a University research grant or other sponsored research, (2) working for the University as an employee, or (3) working under a contract that stipulates otherwise. In these cases, the University will own the intellectual property.
D. Disclosure of Inventions. All faculty, employees (including students who are working for the University) and students (to the extent the student is working under a research grant, sponsored research or other governing contract) must disclose promptly any potentially patentable invention to the OVPR, and execute documents necessary for invention evaluation, patent prosecution or protection of University Patents. The disclosure should be made as soon as a faculty, employee or student becomes aware that their research or work has resulted in a patentable invention. OVPR will provide a preliminary evaluation of the patentable invention to the inventor within three months of disclosure, and will also provide periodic updates to inventor on the development and commercialization of the invention.
E. Determining Ownership and Protecting Intellectual Property. The OVPR, in consultation with the faculty member, staff, student and industry partner (if applicable), will determine the ownership of all inventions and trade secrets, whether a copyrighted work is a University Copyright, and whether to seek patent or copyright protection for the intellectual property.
3. Income Derived from Intellectual Property
A. Inventions. Under Connecticut state law and the by-laws of the University, the net revenue derived from licensing or income from the assignment or sale of University Inventions will be shared with employee inventors. Although current state law only requires the University to distribute 20% of the net revenues to inventors, the Board of Trustees has approved the distribution of net revenue as follows: 33.3% to the inventors on the patent, 33.3% to their department and 33.3% to the University. Net revenue is defined as the gross proceeds derived from assigning or licensing the University Invention, less costs and expenses reasonably allocated to the University Invention. In addition, the department’s share is further divided among the dean, the department head and the faculty member. The portion of revenue distributed to the University will be invested in research related activities and patent protection. If a faculty member, student or staff member is an inventor and leaves the University, he or she will remain entitled to the inventor’s share of the revenue. In some prior cases, the University has made distributions using different allocations, and may in the future enter into mutually agreed distributions that differ from the above formula.
B. University Copyrights. Net revenue derived from licensing of University Copyrights is property of the University, and the distribution of such revenue will be determined on a case by case basis, but may be distributed in a similar manner to the distribution for inventions as described above.
C. University Trademarks. The University generally retains all income derived from licensing of University Trademarks.
4. Licensing and New Company Formation
A. Licensing of Intellectual Property. The OVPR seeks to identify existing businesses that can further develop and commercialize the University Intellectual Property and bring a reasonable financial return to the University. Income derived from OVPR’s licensing activities is governed by Section 3 above.
B. New Company Formation. In cases where the faculty inventor may wish to form a new company based on the University Invention (hereinafter a “Faculty Startup or “Startup”), the University will require that the following conditions be satisfied before granting a license to University Intellectual Property to the Startup: (1) the faculty member may be involved with the Startup as a consultant or scientific advisor, but may not take on an operational role that interferes with her or his duties as a faculty member, (2) the Startup must demonstrate willingness and commitment to identify and engage individuals with reasonable and relevant experience to serve as the operating officer of the Startup, and (3) the Startup should develop a business plan and a fundraising plan. As part of granting the license to the Startup, the Startup will provide consideration to the University, which could include a reasonable equity stake, a reasonable royalty, as well as assuming the costs of intellectual property protection. Income earned by University from a Startup license or equity ownership is governed by Section 3 above.
C. Additional Considerations for Faculty Affiliated Companies. The following additional considerations apply to Startups:
(1) A faculty lab may collaborate or subcontract with a Startup only if an appropriate agreement is negotiated with the OVPR. The contract must contain a scope of work and clearly define responsibilities between the Startup and the faculty lab. The agreement will be governed by the applicable University policies, including this IP and Commercialization Policy.
(2) The faculty member may not represent the University in any negotiation or decision involving a Startup.
(3) The faculty member individually, and the Startup, must maintain practices that ensure that University material, data and intellectual property that are not licensed to the Startup are separated from and not used inappropriately by the Startup.
(4) The faculty member may not use space in an academic lab, or other University or state resources, including the University’s purchasing authority, for the benefit of a Startup unless (a) prior written approval has been granted by the appropriate department head or dean, and (b) a written agreement is in place with the University authorizing such use and agreeing to reimburse the University for such use.
(5) A faculty member that works on a Startup must fully comply with the policies on “Consulting for Faculty and Members of the Faculty Bargaining Unit” and “Financial Conflict of Interest in Research” and any other similar or successor policies on the same subject. These policies are designed to ensure that a faculty member’s relationship with a Startup does not create a real or perceived conflict of interest, and that the faculty member and University have agreed on the scope of permissible Startup activities.
(6) Startups may not compete with the University for research grants that could appropriately be conducted in the faculty member’s lab (i.e., grants for basic research).
D. Employment of Students Working at Startups. Faculty associated with a Startup may not unduly influence a student to accept employment. The employment of students at a Startup is governed by a separate University policy, namely “Use of Students in Outside Employment.” Under this policy, the faculty member must obtain written approval from the department head or dean prior to employing a student at a Startup, and the student may seek recourse through the Provost to address any grievances that may arise during the term of employment.
The University requires that each student receive a written offer of employment with a specific scope of work or job description, the rate of compensation and the expected hours of work. In addition, the student should receive a fair market value rate of pay.
E. Licensing Back of University Intellectual Property. If the University does not believe that it can successfully commercialize a University Invention, and if the faculty member is not interested in founding a Startup, the University will offer the inventor a license of the University Invention (such license referred to as a “license back”). In addition, the inventor may request a license back from OVPR at any time. OVPR is not required to grant a license back but will respond to any request within three months. If the University elects to license back the University Invention to the inventor, the inventor, as licensee, will assume obligations related to patent expenses and commercialization and will agree to pay a portion of the gross revenue that the inventor receives through his or her commercialization efforts. In addition, the inventor will not be entitled to the net revenue payments described in Section 3 of this policy.
5. Dealings with Outside Parties
A. Sponsored Research. All sponsored research agreements are negotiated and managed by the OVPR. Individual faculty members, departments, centers and other units of the University must work through the OVPR on such agreements.
B. Consulting. University faculty are encouraged to consult with industry, but must comply with all procedures set forth in “Consulting for Faculty and Members of the Faculty Bargaining Unit.” These policies apply even if the faculty member is consulting for a Startup, including a Startup with which that individual faculty member is affiliated.
Faculty members are required to ensure that the intellectual property provisions of any consulting agreements with industry do not conflict with the faculty member’s obligations to the University.
C. Use of Non-Disclosure Agreements. Non-public information related to University Intellectual Property should not be disclosed to outside parties unless there is in place a fully executed Non-Disclosure Agreement negotiated by OVPR and approved by University counsel.
D. Tangible Property. Tangible property, including but not limited to software, devices, designs, models, cell lines, plans, seeds, antibodies, compounds and formulations that are University property, may not be transferred outside of the University unless there is in place a fully executed Material Transfer Agreement negotiated by OVPR and approved by University counsel.
6. Other Considerations
A. Publication. Inventors should be aware that publication of research data and findings can jeopardize intellectual property rights for the University and the faculty member. When the University enters into industry sponsored research agreements, it will retain the right to publish all research results generated by faculty and students. The University may agree to delay the publication of research results that arise from industry sponsored research for a reasonable period of time to allow the sponsor to review the publication in order to determine if any confidential information should be removed or if a patent application should be filed.
B. Affiliates and Intellectual Property. In some limited cases, the University has affiliation agreements with other organizations (e.g. hospitals), and these agreements may grant the University additional intellectual property rights. For example, if a student is receiving a stipend from the University through an affiliate organization, the University will assert ownership of intellectual property created by the student.
C. Open Source Software Distribution. In those instances in which the University has an ownership interest in software, faculty and sponsors of research may request that the University distribute or otherwise make available software pursuant to an open source license. The faculty member should consult with OVPR to determine if such distribution is in the best interests of the University.
D. Signing of Agreements. Sponsored Research Agreements, Intellectual Property Licenses, Confidential Disclosure Agreements, Material Transfer Agreements and other related agreements that obligate the University may only be signed by an authorized University signatory. A full list of authorized signatories is set forth in the President’s Resolution Delegating Signing Authority (the website link is provided at end of this Policy).
Deans, Faculty and Department heads are not authorized under the President’s Resolution to sign agreements covered by this Policy.
E. Disagreements Related to Inventions. The University By-Laws establish procedures to follow in the event of a disagreement related to inventions.
7. Exceptions to This Policy
Exceptions to this Intellectual Property and Commercialization Policy may be approved by the OVPR, in consultation with the applicable University department, and faculty members, in its sole discretion. The Office of Clinical and Translation Research may approve changes to clinical trial agreements.
8. Enforcement
Violations of this policy may result in appropriate disciplinary measures in accordance with University Laws and By-Laws, General Rules of Conduct for All University Employees, applicable collective bargaining agreements, and the University of Connecticut Student Code.
9. Related Policies, Procedures and Board Resolutions
This policy replaces “Policy Regarding Research Collaborations with Industrial Partners and Technology Transfer”
The following are links to related policies, procedures and board resolutions, sorted by campus applicability.
All University Campuses
“Consulting for Faculty and Members of the Faculty Bargaining Unit”
“Consulting by Faculty” website
Specific to Storrs and Storrs-based Regional Campuses
“Financial Conflicts of Interest in Research”
“Use of Students for External Employment”
“Board of Trustees Resolution Delegating Signing Authority”
Specific to UConn Health
Further Sub-Delegations of Contract Approval and Signature Authority at OVPR
Individual Financial Conflict of Interest in Research
If any of the above policies are amended or new relevant policies adopted, these amended or new policies will apply as of their effective date.
Policy approved by the President’s Cabinet.
Adopted by the University of Connecticut Board of Trustees on September 30, 2015 and effective as of September 30, 2015.