5.94.20 Intellectual Property and Patents
New Mexico State University recognizes that faculty and staff members create commercially valuable intellectual property as part of their teaching, scholarship, research, and service duties. University administration strive to foster a work environment that will facilitate the creation and commercialization of intellectual property by providing advice and assistance to those with intellectual property, by entering into cost and benefit sharing intellectual property agreements with faculty and staff, and by assuring compliance with such agreements.
A. Definitions: When used in this section the following definitions apply:
- Copyright: A copyright is the intangible property right granted by federal statute for an original work fixed in a tangible form of expression. Copyrights provide 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.
- Earnings: “Earnings” refer to the monetary proceeds received by the university from the 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 for 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: Intellectual property includes, but is not limited to, books, articles, plays, films, audio and video works, written lectures, works of art, musical compositions, laboratory manuals, demonstration devices, computer programs, chemical compounds, new materials or processes, and instruments.
- Intellectual Property Office: The Intellectual Property Office is charged with the responsibility of receiving and processing intellectual property disclosures, obtaining intellectual property protection, maintaining and enforcing intellectual property, and commercializing and distributing the intellectual property.
- Intellectual Property Officer: The Vice President for Economic Development (VPED) serves as the university’s intellectual property officer.
- Originator: “Originator” refers to the person or persons primarily responsible for developing the Intellectual Property.
- Patent: A 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: Significant use shall mean use of university resources which imposes on the university costs or liabilities that otherwise would not be incurred, except for incidental use addressed by Policy 3.75.
- Trademarks: Trademarks are distinctive symbols, logos, pictures, sounds 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.
B. Ownership of Intellectual Property: Ownership of intellectual property shall be determined as follows:
- Personal Resources: Intellectual property developed by faculty, staff, or students (1) outside normal university working hours and (2) without significant use of university resources belongs to the originator.
- University Resources: Intellectual property developed with significant use of university resources by employees, students or other personnel, belongs to the university. The university or its assignee will either (1) protect such intellectual property and share the earnings with the originator as specified in Part C below, or (2) return or assign rights to the originator.
- Consulting Activities: Intellectual property developed by a member of the faculty (1) during that person’s allowed consulting time and (2) without the significant use of university resources, belongs to the originator. 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.
- Instructional Materials: Intellectual property developed for any course offered by the university but without significant use of university resources belongs to the originator.
- Scholarly and Artistic Works: Intellectual property developed by a member of the faculty engaged in scholarly or artistic activity without significant use of university resources belongs to the originator.
- Student Work: Intellectual property developed by a student without significant use of university resources belongs to the originator.
- Grants and Contracts: Ownership of intellectual property developed as a result of projects funded by a contract or grant.
C. Distribution of Earnings from Intellectual Property: Net earnings from intellectual property owned by the university will be shared with the originator. After the repayment of all costs incurred by the university or its assignee to protect, manage, and commercialize (including legal, management and marketing fees), further earnings will be divided as follows:
- Total Distribution to Originator: Annually, the originator, or originator’s heirs, will receive not less than fifty percent (50%) and the university will receive the remainder.
- Multiple Originators: Where more than one originator is involved, the originator’s share of earnings will be divided among the originators as agreed upon by them in writing.
- Distribution by University: Earnings received by the university will be used to promote creative endeavors. 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 President for Research.
D. Managing Intellectual Property Transactions:
Unless otherwise defined or limited by contract, grant or consulting agreement, distribution of shared earnings from intellectual property will follow the guidelines detailed in Distribution of Earnings from Intellectual Property above.
- Intellectual Property Agreement: In accordance with federal regulations, all employees of the university engaged in federally-funded research will sign the Intellectual Property Agreement.
- Responsibilities of the Intellectual Property Office: The Intellectual Property Office will receive and process disclosures of originators concerning intellectual property; notify the appropriate dean or director, if applicable, regarding the 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. The originator is expected to cooperate with the Intellectual Property Office concerning all of these activities, including signing all necessary papers, as requested.
- List of Intellectual Property: The Intellectual Property Office will maintain a current list of patents, copyrights and trademark registrations which have been obtained through that office. This list will be available to all interested parties.
- Disclosure of Intellectual Property: When intellectual property is developed within the scope of the originator’s regularly assigned duties, with significant use of university facilities, or under the sponsorship of a contract or grant, notice must be submitted to the Intellectual Property Office by the originator. The Intellectual Property Office shall recommend to the university whether to pursue legal protection for the intellectual property.
- University Assistance: Intellectual property belonging solely to the originator may be submitted to the Intellectual Property Office to explore the feasibility of the university assisting with the protection and commercialization of the intellectual property. The university will require some consideration for such assistance, such as an assignment, a license (with the right to sublicense), or the right to receive royalties or other earnings, as mutually agreed upon between the parties. The originator and the university must negotiate and sign a written agreement before the university will assist the originator.
- 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/ 96-157 (35 U.S.C. 200). This law allows grantees and/or contractors to take title to inventions made in the course of their federally-funded research. To enjoy the full benefits of this law, the Intellectual Property Officer will:
- Inform the sponsoring federal agency of an invention within two months of disclosure of invention to the Intellectual Property Officer.
- Elect within 12 months of disclosure whether the university wants title rights.
- File a patent application within two years of electing title or by the expiration of the patent filing deadline of the U.S. Patent and Trademark Office.
- Grant a royalty-free license to the federal government within 6 months after filing a patent application.
- Provide the federal government with annual reports on utilization of federally supported inventions administered by the university.
- Secure signed intellectual property agreements from employees working on federally assisted research projects.
- Dispute Resolution: Disagreements between the originator and the university regarding ownership or other issues relating to intellectual property may be submitted, through the Intellectual Property Office, to an ad hoc Special Dispute Resolution Committee.
- The committee will consist of three members: one designated by the originator, one by the appropriate dean or director, and one by the Intellectual Property Officer. The members shall select one member to serve as chair.
- The committee chair shall provide the parties at least five business days’ notice of the hearing date and time. The committee will be convened within 15 business days from the date the request for a hearing is submitted by the aggrieved party.
- The committee shall ensure a fair hearing, and may set rules as needed to maintain order and decorum during the hearing process.
- To ensure impartiality, the committee members shall not communicate with either party, except through the chair to both parties jointly, or during the hearing with both parties present.
- The committee members shall maintain confidentiality, and shall not discuss the matter with third parties, except for university officials with a legitimate need to know.
- The committee will review the documentation provided by each party, hold a hearing, and render a written decision.
- The committee’s decision shall be issued to the parties within 15 working days from the date of the hearing with a copy to the Office of the University General Counsel.
- The committee’s decision may be appealed to the Faculty Grievance Review Board. (See Policy 4.05.50)