Intellectual Property Policy & Procedures Definitions :: Ownership :: Distribution of Earnings from Intellectual Property :: Procedures
(FS, 4/01; BR, 4/02)
New Mexico State University recognizes that faculty, staff, and students may create commercially valuable intellectual property as a result of their involvement in their normal duties of teaching, scholarship, research, and service. It is the policy of the university to foster the creation and dissemination of intellectual property by establishing a strong motivational influence to faculty, staff, and students, to provide the advice and assistance of university administration to originators of intellectual property, and to assure compliance with agreements between the university and sponsors of university programs. (See Appendix C-6 for Employee Intellectual Property Agreement. BR, 12/89)
When used in this "Policy and Procedures Governing Intellectual Property," the following definitions apply:
"Copyright" is the intangible property right granted by Federal statute for an original work fixed in a tangible form of expression. Copyright provides the owner with the exclusive right to reproduce a work, to distribute it by sale or otherwise, to display or perform it publicly, and to prepare derivative works.
"Customary use" shall mean the use of university resources that is usual within the employee's appointment and academic assignments, and that does not compromise his or her core responsibilities.
"Earnings" shall mean actual proceeds received by University from sale or licensing of Intellectual Property in the nature of sales proceeds, license fees, and royalties; but shall not include: 1) proceeds in the nature of research or development funding or contracts or reimbursement for same to the University or its designee; or 2) amounts required to be paid or reimbursed to or offset by third parties under any contractual obligation.
"Intellectual Property" shall mean and include, but not be limited to, books, articles, publications, plays, films, audio and video works, written lectures, CDs, cassette tapes, CD-ROMs, DVDs, works of art, musical compositions, laboratory manuals and notebooks, devices, prototypes, computer programs, chemical compounds, data, databases, formulas, materials, methods, processes, recipes and new plants.
"Intellectual Property Office" shall mean an office of the University or its designee with the responsibility (using outside assistance as necessary) of receiving and processing Intellectual Property disclosures, obtaining Intellectual Property protection, maintaining and enforcing Intellectual Property and commercializing the Intellectual Property.
"Originator" shall mean the person or persons primarily responsible for developing the Intellectual Property.
"Patent" is the right granted under Federal statute for a discovery or invention. To be patented, the discovery or invention must be novel, useful, and not of an obvious nature. A patent gives the owner the right to exclude others from producing or using the discovery or invention for a limited period of time.
"Significant use" shall mean any use of university resources beyond what is customary, as defined above.
"Trademarks" are distinctive symbols, logos, pictures, or words that are used to distinguish and identify the origin of products. Trademarks may also include distinctive and unique packaging, color combinations, building designs, product styles, and overall presentations. A trademark provides the owner with the exclusive right to use it on the product it was intended to identify and often on related products. Service-marks receive the same legal protection as trademarks but are meant to distinguish services rather than products.
"University" shall mean the New Mexico State University and its designee the Arrowhead Center, Incorporated.
"University facilities" includes buildings, equipment, and other property owned or administered by the University. For the purposes of intellectual property policy, university libraries, public computer centers, and other facilities open to the public are usually excluded. The university administration may also exclude other facilities as well.
"University funds" shall mean any funds, regardless of source, that are administered by the University or its agents.
"University personnel" shall mean all faculty, fellows, staff employees (including students on appointment as University employees) and any person who collaborates on discovery of intellectual property.
"University resources" shall mean university facilities, university funds, or university personnel, as defined above.
Back to TopAll Intellectual Property will belong to the Originator except as follows:
1. University Employment. Intellectual Property developed by an employee of University and related to their regularly assigned duties belongs to the University. The University or its designee either will patent or register copyrights and/or trademarks in such Intellectual Property and share the earnings with the Originator as specified in Section C below or will return or assign rights to the Originator.
2. Use of University Resources. Intellectual Property developed with the significant use (as determined by the Originator and appropriate dean or director) of University resources, including facilities, personnel, equipment, etc., by employees, students or personnel, belongs to the University. The resources, including University or its designee either will patent or register copyrights in such Intellectual Property and share the earnings with the Originator as specified in Section C below or will return or assign rights to the Originator.
3. Grants and Contracts. Ownership of Intellectual Property developed as a result of projects funded by a contract or grant to the University will be determined in accordance with the terms of the contract or grant. In the event ownership of Intellectual Property is not in the company funding the project, Section B1 or B2, above, will apply as to ownership.
4. Consulting Agreements. Ownership of Intellectual Property developed as the result of consulting activity by a University employee, and to which the University is a party, will be determined in accordance with the terms of the consulting agreement. In the event ownership of Intellectual Property is not in the company funding the project, Section B1 or B2, above, will apply as to ownership.
5. Intellectual Property Owned by Originator. Intellectual property belonging solely to the Originator, and not conceived or made using University resources or in the course of University employment, may be submitted to the Intellectual Property Office in order to obtain the University's assistance in protection and commercialization of the Intellectual Property. The Originator and the University must negotiate and sign a written agreement before the University will assist the Originator. University will generally require some consideration for such assistance, such as an assignment, license (with the right to sublicense), right to receive royalties or other Earnings, as mutually agreed upon between University Intellectual Property Office and Originator.
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C. DISTRIBUTION OF EARNINGS FROM INTELLECTUAL PROPERTY
Proceeds received by the University, excluding any cost charged by the New Mexico State University Technology Transfer Corporation to the University associated with obtaining, maintaining and enforcing a patent, copyright or other protection, sale, licensing, litigation, or other claims, including legal fees, have been paid, Earnings shall be shared by the Originator and the University as follows:
1. Total Distribution to Originator. The Originator, or his/her heirs if Originator is deceased, will receive fifty (50%) percent and the University the remainder, payable annually.
2. Multiple Originators. Where more than one Originator is involved, the Originator's share of the fifty (50%) percent will be divided among the Originators as agreed upon by them. In the event all Originators do not agree in writing as to the percentages to be distributed to each Originator, University shall make such determination by sending written notice to each Originator.
3. Distribution by University. Earnings, excluding any cost charged by the Arrowhead Center, Incorporated, to seed future patent activity and cover overhead, received by University or its designee will be used to promote creative endeavor. One-third of the University's share will go to the Originator's college or appropriate division, one third will go to the Originator's department, and one third to the Office of the Vice Provost for Research of the University.
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D. PROCEDURES
1. Employee Intellectual Property Agreement. In accordance with Federal regulations, all employees and students receiving compensation from the University shall sign the Employee Intellectual Property Agreement at the time of employment (Appendix C-6).
2. Special Dispute Resolution Committee. Disagreements between the Originator and the appropriate dean or director as to whether or not the Intellectual Property was developed as a direct written requirement of employment or with the significant use of University resources and any disputes involving ownership of Intellectual Property may be appealed to a special committee designated or established by Originator, dean or director, and the University Intellectual Property Officer (Vice Provost for Research). The Dispute Resolution Committee will provide a written decision within ten (10) working days after the date the appeal is reviewed. Decisions of the Dispute Resolution Committee may be appealed to the University Appeals Board.
3. Intellectual Property Office. The Intellectual Property Officer will receive and process disclosures of Originators concerning Intellectual Property, notify the appropriate dean or director of Originator, if applicable, as to appropriate steps recommended as to the Intellectual Property, file for, obtain and maintain patents and/or copyrights for the Intellectual Property, provide for maintenance and enforcement of the Intellectual Property, attempt commercialization of the Intellectual Property, and attempt resolution of all disputes or claims concerning the Intellectual Property. Originator is expected to cooperate with the Intellectual Property Office concerning all these activities, including signing all necessary papers, as requested.
4. List of Intellectual Property. The University Intellectual Property Office will maintain a current list of patents and copyright registrations which have been processed with the University and will have such information available for all interested parties, except to the extent trade secrets are involved.
5. Disclosure of Intellectual Property. When an invention or other commercially exploitable material is developed under University employment, through the significant use of University resources, developed under sponsorship of a contract or grant, a disclosure must be submitted to the Intellectual Property Office by the Originator.
6. Federal Government Funding of Intellectual Property. Patentable Intellectual Property developed under the sponsorship of a Federal agency is subject to Federal Policy as detailed in P.L. 96-517 (35 U.S.C. ' 200), which is the Bayh-Doyle Act. This law allows grantees/contractors to take title to subject inventions made in the course of their Federally funded research. To enjoy the full benefits of this law, the University Intellectual Property Office or the Office of Grants and Contracts or the department of the Originator responsible for handling grants and contracts will:
a. inform the sponsoring Federal agency of an invention within two months of disclosure of the invention to the Intellectual Property Office;
b. elect within two years of disclosure to the Federal agency or within 60 days of the statutory deadline for filing a patent application in the U.S. Patent and Trademark Office, whether the University elects title to the invention;
c. file a patent application within one year of electing title or before any statutory deadline for filing the patent application in the U.S. Patent and Trademark Office;
d. grant a non-exclusive, nontransferable, irrevocable, paid-up license to the Federal Government; and
e. take necessary steps to comply with any applicable Federal Policy (including changes).
Unless otherwise defined or limited by contract, grant, or consulting agreement, distribution of shared Earnings from Intellectual Property will follow the guidelines detailed in Section C, above.
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