Reporting Inventions or Software Arising from Research

Responsible Officer
Michael Oakes
Vice President for Research (Interim)
Owner
Rick Huebsch
Executive Director, Office for Technology Commercialization (Interim)
Primary Contact
Rebecca Gerber
Associate Director, Technology Commercialization
Last Revised
Effective Date

Policy Statement

This policy describes University employees’ and others’ duty to disclose the development of software and patentable inventions emanating from research activities and their right to release software under an Open-Source License.

University Ownership. 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.

Duty to Report. All such persons must report the creation of an invention prior to any public disclosure to 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 Administrative 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 Technology Commercialization to enable the University to license the rights to an external organization or person.

 Except when in conflict with obligations to sponsored research funders, software may be distributed under a commonly adopted open-source license only when:

  • all contributors agree,
  • the distribution will be public and easily accessible; and
  • the faculty determine that open-source distribution is an appropriate way to maximize the adoption or impact of the software.

Faculty do not have any right to assign, license or transfer the patent rights in software. When distributing software under an open-source license, faculty must ensure that existing patent rights or patent applications related to the software are not affected, in any way, by the terms of the license. Faculty needing assistance with open source license selection, license compatibility, external ownership or other licensing concerns may contact Technology Commercialization.

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

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. This policy also reflects the University’s support of open-source distribution of software as a means to disseminate faculty scholarship.

Contacts

Subject Contact Phone Fax/Email
Primary Contact Rebecca Gerber 612-626-5469 [email protected]
Inventions or software arising from research, Intellectual Property (IP) Office for Technology Commercialization 612-624-0550 [email protected]

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.
Open-Source License
License to distribute source code software without payment or signature.
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.

Responsibilities

Researcher
  • Complete an Intellectual Property Disclosure Form (IPDF) and submit to Technology Commercialization ([email protected] or through the online portal) prior to any public disclosure of the invention, such as a poster, public talk, or paper submission, unless the invention is software that is to be distributed under an open source license. Software to be distributed commercially must be reported to Technology Commercialization.
  • Provide information on the Proposal Routing Form (PRF) 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.
Technology Commercialization (Tech Comm)
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, Tech Comm will follow relevant guidelines. Work with OIT should any technologies integrate with the OIT enterprise infrastructure. 
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:
January 2022 - Comprehensive Review, Minor Revision: verbiage clarification to software reporting section, added headers / introductory statement / Open-Source License definition, Tech Comm name change.
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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