Maryland's Public System of Higher Education

1. 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.

2. Purpose, Scope and Authority
1. 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.
2. 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.
3. 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.
4. 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.
5. 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.


3. 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.

1. 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.
2. Scope of Employment. All activities related to the appointment for which an individual receives compensation from the University.
3. 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.


4. 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.

5. COPYRIGHT
1. 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.

1. 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.
2. 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

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

C. Responsibilities of University

1. Timely Evaluation. The University shall act with reasonable promptness and in good faith on all inventions disclosed to it. Exploitation by the University may or may not involve statutory protection of intellectual property rights, such as filing for patent protection, registering the copyright, or securing plant variety certification. The University may at any time decide either not to pursue or to abandon the pursuit of patenting and/or commercialization of intellectual property in which it has an interest.
2. Timely Information. The University shall routinely inform inventors in a timely manner about its substantive decisions regarding protection, commercialization and/or disposition of intellectual property which inventors have disclosed. However, specific terms of agreements with external parties which constitute proprietary business information subject to confidentiality restrictions may be withheld.
3. Assignment of Ownership. The University shall notify inventors promptly when it decides either not to pursue or to abandon the pursuit of patenting or commercialization of an invention. The University may assign ownership to the inventors as allowed by law, subject to the rights of sponsors and to the retention of a license to practice for University purposes. The minimum terms of such licenses shall grant the University the right to use intellectual property in its internally administered programs of teaching, research, and public service on a perpetual, royalty-free, non-exclusive basis. The University may retain more than the minimum license rights, and assignment or license may be subject to additional terms and conditions, such as revenue sharing with the University or reimbursement of the costs of statutory protection. The University shall execute promptly, upon written request by the creators, all contracts, assignments, waivers or other legal documents necessary to transfer to the inventors the University's interest in any invention which it has chosen not to pursue.
4. Sharing of Revenue. The University shall remit to the inventors their share of income from inventions as specified in Section IX.B. of this policy.

VII. OTHER TYPES OF INTELLECTUAL PROPERTY

1. Tangible Research Property. The University owns and may commercialize or license products that result from its operations.
2. Mask Works. The principles in Section VI.B. that apply to inventions and patents in this policy also apply to mask works.
3. Plant Varieties. The University owns and may protect or commercialize plant varieties according to the principles of Section VI.B.
4. Trademarks or Service Marks. Registration of trademarks or service marks, at the state or federal level, shall be approved by the CEO or designee.
5. Trade Dress. The University owns and may commercialize or license trade dress associated with its operations.

VIII. INTERINSITUTIONAL COLLABORATIONS

1. Joint Appointments. The University providing the primary appointment is the owner of intellectual property created by a person with a joint appointment. The owning University shall promptly inform the other University about steps taken with regard to this ownership. Such information shall include at minimum copies of the invention disclosure form, documents associated with filing for statutory protection, assignment of rights, and license agreements. If the owning University decides not to proceed, the secondary University shall have the right of first negotiation to develop the work. Though ownership resides with the primary appointing University, revenue shall be shared according to the principles stated below, in Section IX.E.
2. Joint Creators

0. Early Notification. As soon as collaborators from different Universities recognize that their efforts are likely to result in the creation of intellectual property and preferably before the work begins, they shall inform their respective Universities that an agreement is needed.
1. Agreements Govern. In these instances, signed agreements shall determine ownership of intellectual property, responsibility for protecting it, and distribution of revenue resulting from its development. USM universities are encouraged to negotiate standard bilateral agreements within the framework of this policy.
2. Disputes. In the absence of an agreement, either CEO may refer the dispute to the Chancellor for resolution.

IX. REVENUE SHARING

1. Copyright. The University shall share with creators revenue it receives from copyrights of their work as provided in this section.

1. Exclusions.

1. Directed Effort. Revenue generated by the University as a result of directed effort by staff members is excluded from sharing. However, in these cases, the University may elect to share net revenue, by written agreement or University policy, up to fifty percent.
2. Contract. When a third party contract dictates apportionment of revenue different from that specified in this policy, the terms of the agreement govern.
3. Research Support. If the University accepts research support in the form of a sponsored research agreement or restricted grant as part of the consideration for an intellectual property license, the creators shall have no entitlement to receive a share as personal income.
4. Tuition. Revenue received as tuition by the University is excluded.

2. Deductions from Gross Revenue. The University shall make the following deductions from gross revenue before distributing net revenue (Section IX.A.3).

1. Creators' Share. Ten percent of gross revenue shall be distributed to creators until the cumulative total reaches the limit that was in effect during the fiscal year in which the University received the first revenues. The creators' share of gross revenue shall be limited in FY2001 to $6500. The USM Office of Administration and Finance shall establish a new limit annually on July 1 by adjusting the previous limit by the Consumer Price Index.
2. Project Specific Costs. Revenues received from a work shall be applied to reimburse any specific, incremental expenses incurred by the University in obtaining and maintaining the copyright, and in developing, marketing, licensing and defending the work.
3. General Costs. The University may deduct a portion of gross revenue to cover the cost of developing, obtaining, managing and defending copyrights.

3. Distribution of Net Revenue.

1. Creators' Share. The University shall pay creators fifty percent (50%) of the net revenue it receives from copyrights unless applicable laws, regulations, provisions of grants or contracts, or signed agreements with creators provide otherwise.
2. University's Share. Each University shall establish distribution guidelines for the balance of the net revenue. Net revenue received on account of copyrighted work shall be dedicated to research, scholarship, creative work, and related academic activities.
3. Timely Distribution. The University shall distribute accrued revenues due creators under this policy at least twice a year.

B. Patents. The University shall share with inventors revenue which it receives from their inventions as provided in this section.

0. Exclusions

1. Contractual Obligations. When a third party contract dictates apportionment of revenue different from that specified in this policy, the terms of the agreement govern.
2. Research Support. If the University accepts research support in the form of a sponsored research agreement or restricted grant as part of the consideration in an intellectual property license, the inventors shall have no entitlement to receive a share as personal income.

2. Deductions from Gross Revenue. The University shall make the following deductions from gross revenue before distributing net revenue (section IX.B.3).

1. Inventors' Share. Ten percent of gross revenue shall be distributed to the inventors until the cumulative total reaches the limit that was in effect during the fiscal year in which the University received the first revenues. The inventors' share of gross revenue shall be limited in FY2001 to$6500. The USM Office of Administration and Finance shall establish a new limit annually on July 1 by adjusting the previous year's limit by the Consumer Price Index.
2. Project Specific Costs. The revenues received from a patent or invention shall be applied to reimburse any specific, incremental expenses incurred by the University in obtaining and maintaining the patent and in developing, marketing, licensing and defending the patent or licensable invention.
3. General Costs. The University may deduct a portion of gross revenue to cover the cost of developing, obtaining, managing and defending patents.

3. Distribution of Net Revenue.

1. Inventors' Share. The University shall pay inventors fifty percent (50%) of the net revenue it receives from their inventions unless applicable laws, regulations, provisions of grants or contracts, or signed agreements with inventors provide otherwise.
2. University's Share. Each University shall establish distribution guidelines for the balance of the net revenue. Net revenue received on account of an invention shall be dedicated to research and to the promotion of patenting and patents.
3. Timely Distribution. The University shall distribute accrued revenues due inventors under this policy at least twice each year.

C. Tangible Research Property, Mask Works, and Plant Varieties. When tangible research property, mask works, or plant varieties are licensed by contract, revenue distribution follows patent policy revenue distribution, Section IX.B

D. Trademarks, Service Marks and Trade Dress

0. Creators' Share. Revenue received from commercialization of a mark or trade dress that is related to an intellectual property license shall be shared with creators of the associated property as specified in Section IX.B. Except as provided herein or unless subject to prior written agreement between the creators and the university, the university will not share the revenue from commercialization of a mark or dress with the individuals who created the mark or dress.
1. University Ownership. Revenue received from commercialization of a mark or trade dress licensed independently and not directly related to an intellectual property license shall be assigned to the University.

E. Joint Appointment. If a creator is affiliated with and paid salary by more than one University, the University's share of net revenue shall be divided between the Universities according to the proportionality of salaried appointment. Only the University owning the intellectual property receives gross revenue.

F. Joint Creators. If there are joint creators, the net income shall be divided equally among them absent a mutual agreement to the contrary. If joint creators are from different Universities, the University's share of net revenue shall be determined by signed agreements as provided in Section VIII.B.2.
G. Equity. For purposes of distribution, equity shall be treated as net proceeds, not gross.

0. Distribution Shares. Equity in a commercial venture received as payment for intellectual property rights shall be shared equally between the University and the creators. In the case of multiple creators, their half of the equity shall be divided equally among them, absent specific agreement to the contrary.
1. Timely Distribution. As soon as practicable after the University receives equity, the University shall assign ownership. The University and creators shall have independence in their exercise of conversion privileges within the constraints of law, policy, specific exemption under Maryland law from the State Ethics Law, and contractual agreements.

X. ADMINISTRATION

1. Implementation Procedures. Each University shall develop procedures for implementing this policy, shall designate a contact person for questions about intellectual property, and shall prepare its own intellectual property policy. At a minimum, that policy must deal with joint creators from different units within the University, stipulate division of revenue within the University, establish the process for determining what Resources are Usually and Customarily Provided, and set guidelines for Fair Use of materials protected by copyright. The University shall provide the Chancellor with a copy of the policy for review and comment prior to final adoption or subsequent revision.



2. Authority to Subcontract. The University may enter into contracts with third parties in connection with the development, administration, and protection of its intellectual property.



3. Resolution of Disputes. The Chancellor may resolve disputes about intellectual property that may arise under this Intellectual Property Policy.



4. Special Cases. The Board of Regents recognizes that special cases will arise which are not specifically covered by this policy or which may justify waivers of this policy. Such cases may be submitted to the Chancellor or designee for resolution. These decisions shall be reported to the Intellectual Property Committee.



5. Intellectual Property Committee.

0. Membership. The Chancellor shall appoint one representative from each institution from nominees submitted by the presidents. Members are appointed for a three-year term and may be appointed to one successive term. The Vice Chancellor for Academic Affairs shall be an ex-officio member of the committee and shall serve as its chair.
1. Responsibilities. The Intellectual Property Committee advises the Chancellor on matters pertaining to intellectual property. The Intellectual Property Committee shall convene at least once a year to review this policy and recommend policy revisions to the Chancellor. The Committee shall also meet at the call of the chair. A University chief executive officer or the Chancellor may refer to the committee for recommendation to the Chancellor appropriate matters such as questions not covered by policy, suggestions for revisions to the policy, and policy waivers. The Chancellor may ask the Committee for advice on the resolution of disputes over intellectual property.
2. Creator's Right to Participate. When the Committee is considering a particular work product, the creator(s) and/or a representative designated by the creator may make written and oral presentations to the Committee.

Glossary