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Miami University

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Office for the Advancement of Research and Scholarship

102 Roudebush Hall • Phone: 513-529-3600• Fax: 513-529-3762

Inventions/ Patents/ Technology Transfer

CONTENTS

  1. What Are Patents, Trademarks, Servicemarks, and Copyrights? (Information from the U.S. Patent and Trademark Office)
  2. Overview, from MUPIM
  3. Requirements and Guidelines for University faculty, staff and students to report Discoveries and Inventions
  4. University Decisions as to Patenting
  5. Sharing of Royalties
  6. General Information on Patents and Discoveries
  7. Ohio Law on University Intellectual Property

Downloads:

1. What Are Patents, Trademarks, Servicemarks, and Copyrights? (Information from the U.S. Patent and Trademark Office)

2. Overview, from the Miami University Policy and Information Manual (MUPIM, Section 15.6)

MUPIM  15.6.A General:  In the course of research, teaching, and service activities at Miami University, faculty, staff, and students sometimes create intellectual property which may be protected by copyright, patent, or other means. Miami University seeks to establish an environment in which the creation of intellectual property is suitably recognized as an academic achievement and in which the benefits of intellectual property to the creators, the University, and the general public are optimized.

It is important that the University and the creators of intellectual property assist each other in identifying, evaluating, and protecting this property. The policy in the Miami University Policy and Information Manual outlines the procedures for handling of intellectual property in ways which will be beneficial to the creators, the University and the public, and also describes the rights and responsibilities of the University and the creators of the intellectual property.

15.6.B Copyrights: The right of ownership by a faculty member, staff member, or student to his or her own writings,productions, art, videotapes, computer programs, or other works is recognized by the University.Thus, the individual generally is vested with the copyright privilege and receives all royalties which result.

There are exceptions to this general rule, however, and the University will claim ownership:

  1. if called for in an external grant or contract, or specified in the terms of a gift, under which the copyrightable material was produced.
  2. if the faculty member, staff member, or student creates a copyrightable work in the course of performing an explicit University assignment or commission to create such a work.

Situations also may arise in which faculty, staff, or students wish to include in copyrighted commercial products materials generated by Miami University support services. In such cases, in return for unrestricted outside use of the material, the University is entitled to seek reimbursement for development and production costs. The amount of possible reimbursement shall be reasonable and come from, and not exceed a portion of, royalties available to the faculty member, staff member, or student.

15.6.C Patents:

15.6.C.1 General: In accord with the revised code of the State of Ohio, Section 3345.14, the University claims all rights to discoveries or inventions, including associated patents, resulting from research or investigation conducted in any facility of the University. The University also has the rights optional discoveries or inventions resulting from research or investigation financed in whole or impart by the University, or by an agent outside the University under a contract with or grant to the University.

The revised code of the State of Ohio permits the Board of Trustees to retain, assign, license, transfer, sell, or otherwise dispose of rights to, interests in, and income from any such discoveries, inventions, or patents to any individual, firm, association, corporation, or governmental agency, or to any faculty member, staff member, or student of the University.

It is the intent of the University not to claim rights in an invention resulting from work not supported by the University or its sponsors or to which the University’s contribution is negligible. Therefore, except as provided above, faculty, staff, and students of the University are entitled to apply for, hold, and dispose of patents to their own discoveries, inventions, and developments free from any claim or interest of the University.

3. Requirements and Guidelines for University faculty, staff and students to report Discoveries and Inventions

MUPIM 16.6.C.2:  When an inventor associated with the University believes an invention or discovery might be patentable, a written disclosure of the invention or discovery should be submitted to the Associate Provost for Scholarship and Teaching. The written disclosure should bear the endorsement and comments of the department chair or unit supervisor, and divisional dean or vice president. It should include a statement of the circumstances under which the invention was made, and a statement as to its commercial possibilities.

See Section 15.6 on Intellectual Property of the Miami University Policy and Information Manual (MUPIM) for additional details.

INTERNAL INTELLECTUAL PROPERTY PROCESS
IDEA or INVENTION => DISCUSSION WITH ASSOCIATE DEAN FOR RESEARCH => INVENTION DISCLOSURE => PATENT DECISION

The Associate Dean 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 Dean 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 Dean 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:

For an Invention Disclosure Form, select one in either MS Word format or regular pfd format (to print and fill out).

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 Dean 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.

4. University Decisions as to Patenting

MUPIN 15.6.C.4:  If after consultation, the Associate Dean 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 Dean 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 Dean 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.

The Associate Dean for Research through the Provost and the Vice President for Finance and Business Services will recommend that the Board of Trustees take appropriate action.

5. Sharing of Royalties

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.

Royalties accruing to the University under this Patent Policy will be used by the University to support faculty research and patent development.

6. General Information on Patents and Inventions

  1. US Patent and Trademark Office
  2. US Copyright Office
  3. Web resources via the Miami University Library

7. Ohio Revised Code - Section 3345.14 outlines Ohio Law on University Intellectual Property

For additional information relating to intellectual property, inventions, patents, and royalty arrangements, please contact the Associate Dean for Research.