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Inventions/ Patents/ Technology Transfer
Are Patents, Trademarks, Servicemarks,
and Copyrights? (Information from
the U.S. Patent and Trademark Office)
|INTERNAL INTELLECTUAL PROPERTY PROCESS|
|IDEA or INVENTION||=>||DISCUSSION WITH ASSOCIATE PROVOsT FOR RESEARCH||=>||INVENTION DISCLOSURE||=>||PATENT DECISION|
The Associate Provost for Research shall have the responsibility to recommend to the Provost and Vice President for Finance and Business Services whether the securing of a patent is in the interest of Miami University and in the public interest. In this evaluation, the Associate Provost for Research generally will consult with the University attorney and individuals outside the University who are knowledgeable in the field of the invention. If the invention or discovery has arisen under the sponsorship of industry, the University’s agreement with industry generally will include a granting of some rights regarding licensing of resulting patents, as well as a commitment by the sponsoring company to its funding of a patent application. Thus, the Associate Provost for Research necessarily will consult with the sponsoring company in evaluating prospects for a patent in such instances.
The University also may use the services of a patent evaluation and management firm, such as the Research Corporation, to assist in the evaluation of invention disclosures, in filing patent applications, and in marketing and managing subsequent patents, unless the terms of an agreement with a sponsor of the research dictate otherwise.
15.6.C.3 Patent Application Procedures for Projects Funded by External Agencies:
If the research results from a project sponsored by an outside agency through a grant or contract to the University, the provisions of the grant or contract will prevail. Where such provisions provide for retention of some or all patent rights with the University, the same procedures will be followed with respect to the retained patent rights as those provided for non-sponsored research. Disclosure of all such inventions within the University should follow the same procedures described above as the first step in complying with such patent terms in grants and contracts.
In the development of agreements for research with corporations and other private groups, accommodations should be made to recognize both the proprietary rights of the corporation, and the obligation of the University to publish and disseminate research in oral and written form. Where appropriate, such publications may be delayed, but such delay should not be excessive. If a sponsor requires exclusive rights to or interest in a discovery made under a grant or contract, this request will need to be reported to and approved by the Board of Trustees.
The Miami University Proposal Approval Form will be used to secure University approval for patent agreements with outside funding agencies at the time of acceptance of a proposal. The Office for the Advancement of Research and Scholarship has the responsibility of coordinating the proposal approval process for the University and facilitating discussions involving the investigator, the department or division, the Associate Provost for Research, and representatives of the Finance and Business Services division.
Faculty, staff, and students may not independently enter into agreements concerning Miami University patent rights on inventions. Such agreements are appropriate only when the individual is acting as an independent consultant to a public or private agency or sponsor.
MUPIN 15.6.C.4: If after consultation, the Associate Provost for Research determines that it is in the best interests of the University to file a patent application, he or she will recommend to the Provost and the Vice President for Finance and Business Services that a patent application be filed. Depending upon the circumstances, the Associate Provost for Research may recommend that the application be filed by the University itself, by the sponsoring company on behalf of the University, or by a patent management firm such as Research Corporation on behalf of the University.
If, after consultation, the Associate Provost for Research determines that it is not in the best interests of the University to file a patent application, he or she will make that recommendation to the Provost and the Vice President for Finance and Business Services and also will inform the inventor of that recommendation. The inventor may then request the University to waive all or part of its rights in the invention to the inventor. The University shall respond to such a request within a reasonable time period, and, at its discretion, may waive all or part of its rights in the invention, i.e., assign title or grant an exclusive or partially exclusive license to the inventor. Grant of such a waiver by the University shall not be unreasonably denied. Any such assignment shall be subject to the sponsor’s rights or approval. The University will retain rights and benefits which are in the best interests of the University; as a minimum, these retained rights will include an irrevocable, nonexclusive,paid-up license to practice the invention for the University’s purposes.
MUPIM 15.6.C.5 Sharing of Royalties: Miami University’s policy is to share royalties generated by patents with the faculty, staff, and student creators of inventions according to the following model. Royalty provisions of this policy apply to “net royalties” received by Miami University from the patent. Net royalties are defined as gross royalties, minus the cost incurred in obtaining the patent, the cost of utilizing a patent management firm, and any litigation expenses.
The net royalties totaling up to $100,000 first received will be divided equally between the University and the inventors; for the second $100,000 a 60% University, 40% inventor split will be utilized; for the third $100,000 a 70% University, 30% inventor split; and for royalties in excess of $300,000 an 80% University, 20% inventor split will be utilized. If more than one inventor is involved, the University must receive in writing a statement signed by all inventors agreeing how the share of the royalties to be received by the inventors should be divided.
For additional information relating to intellectual property, inventions, patents, and royalty arrangements, please contact the Associate Provost for Research, Dr. James Oris or Mr. Reid Smith, Director of Technology Transfer and Business Partnerships.