Printed on: 10/22/2018. Please go to http://policy.umn.edu for the most current version of the Policy or related document.
ADMINISTRATIVE POLICY

Reporting Inventions or Software Arising from Research

Responsible University Officer(s):

  • Vice President for Research

Policy Owner(s):

  • Executive Director, Office for Technology Commercialization (Interim)

Policy contact(s):

Date Revised:

May 23, 2017

Effective Date:

Sep 1, 1998

POLICY STATEMENT

Intellectual property that is an invention or software created by University employees, students, post-doctoral or other fellows in the course of their research; or created by individuals, including students, or post-doctoral or other fellows, using substantial University resources, is owned by the University subject to the terms of written agreements (including grants, contracts, and cooperative agreements with the federal government ) between the University and third parties under which the University, solely or in collaboration, conducts research or other activities.

All such persons must report the creation of an invention to the Office for Technology Commercialization to enable the University to exercise its rights as owner of the invention and to ensure that its obligations to third parties and the federal government are satisfied. Researchers must follow the procedure: Reporting Inventions or Software to the University and Sponsors to make these reports.

All such persons may report the creation of any software to the Office for Technology Commercialization to enable the University to license the rights to an external organization or person. 

Excluding obligations to sponsored research funders, when all software contributors agree, faculty may distribute software under a commonly adopted open source license in a manner that best serves the University’s mission and their academic discipline.  Faculty do not have any right to assign, license or transfer the patent rights in software.  In distributing under an open source license, faculty must take affirmative steps to ensure that the patent rights in software are not affected, in any way, by the terms of the license.  An open source release of software must be a.) public and b.) in a manner that reasonably maximizes distribution of the software.  The Office for Technology Commercialization is available to assist with open source license selection, license compatibility, external ownership and other licensing concerns.

All such persons planning to release software under an open source license which integrates with the Office of Information Technology enterprise infrastructure (including logins, server IP addresses, data queries, etc.) must first report the software to the Office for Technology Commercialization and such software will be subject to a security assessment and requires approval from the Office of Information Technology. 

Exclusions:

Copyrighted academic works, as defined in Board of Regents Policy: Copyright, are not covered by this policy.

REASON FOR POLICY

To comply with Board of Regents Policy: Commercialization of Intellectual Property Rights. This policy protects the University's intellectual property (i.e., inventions or software), and helps ensure that the University (and, as applicable the individual) is complying with reporting requirements based on government funding and external sponsored research agreements. The University and the sponsor must be notified in a timely manner in order to exercise their legal rights to protect or market the intellectual property.

PROCEDURES

FORMS/INSTRUCTIONS

APPENDICES

FREQUENTLY ASKED QUESTIONS

CONTACTS

SubjectContactPhoneFax/Email
Primary Contact Rebecca Gerber 612-626-5469 gerb074@umn.edu
Inventions or software arising from research, Intellectual Property (IP) Office for Technology Commercialization 612-624-0550 umotc@umn.edu

DEFINITIONS

Copyright
A form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of "original works of authorship."
Intellectual Property (IP)
Refers to creations of the mind. For example: inventions and discoveries; literary, artistic and other creative works; and symbols, names, images, and designs used in commerce.
Patent
A grant of property right by the U.S. government to the inventor giving the owner of the patent the right to exclude others from making, using, offering for sale, or selling the invention in the U.S. or importing it to this country. (35 United States Code 101) Multiple types of patent applications can be filed including utility, plant, and design patents.
Trademark
Any word, name, symbol, device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.

RESPONSIBILITIES

Researcher
  • Complete an Intellectual Property Disclosure Form (IPDF) and submit to the Office for Technology Commercialization (umotc@umn.edu) prior to any public disclosure of the invention or software, such as a poster, public talk, or paper submission.
  • Provide information on the Proposal Routing form if a sponsored project has previously or is anticipated to result in patentable results. Provide invention or software information when requested to do so by Sponsored Projects Administrator or for a sponsor who requires submission of documentation of invention disclosures or patent filings or licensing.
Office for Technology Commercialization (OTC)
Assess inventions and software for their commercial potential, seek IP protection for inventions where it is warranted, and then market and license University IP to commercial partners who can develop it into products and services. Conduct a commercial and patentability assessment of the invention or software. Work with researchers to determine the best commercial strategy for the technology. Prepare and have executed inter-institutional agreements and out-going material transfer agreements. For federally-sponsored and other sponsored projects where there exists an obligation to report IP to the sponsor, OTC follow relevant guidelines.
Sponsored Projects Administration (SPA)
Negotiate terms and conditions of contracts and grants with sponsors, including agreements to obtain or share materials (incoming material transfer agreements), collaborative research relationships, data use agreements and nondisclosure agreements. Prepare invention reports to submit to federal sponsors at the conclusion of the project.

RELATED INFORMATION

HISTORY

Amended:
May 2017 - Comprehensive Review, Minor Revision: Clarification of who may report software, contacts updated.
Amended:
December 2012 - Comprehensive Review, Minor Revision for clarity. Title updated to Reporting Inventions or Software Arising from Research.
Amended:
February 2003 - Updated Related Information and definitions section to link to Intellectual Property Policy and related administrative procedures rather than the superceded Patents and Technology Marketing Policy.
Effective:
September 1998
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