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Institutional Policies

Policy RSCH-OTD-001

logo of The University of Southern Mississippi  
Responsible University Administrator: Vice President for Research
Responsible Officer: Assistant Vice President for Research, Tech Transfer & Corporate Relations
Origination Date: 11/9/16
Current Revision Date: N/A
Next Review Date: 11/03/18
End of Policy Date: N/A
Policy Number: RSCH-OTD-001
Status: Effective

 

INTELLECTUAL PROPERTY POLICY


 


Policy Statement


The University of Southern Mississippi is dedicated to the creation and dissemination of knowledge, integrating students at all levels through excellence in teaching, research, creative activities outreach and service. The transfer, dissemination, and application of knowledge to the public is core to the mission, vision, and values of the University. Embodied in the transfer of knowledge to the public is the goal to encourage the creation and development of novel and useful devices, methods, and processes, the publication of scholarly and creative works, development of software, and the designs that identify all of the aforementioned.

The University of Southern Mississippi Intellectual Property Policy is designed to facilitate and enable the activities leading to knowledge and technology development. One of the primary objectives of this policy is to encourage the practical application of academic and research activities that will enhance the professional growth of the faculty, staff, and students, the reputation of the University, and the partnerships created on a local, state, national or global level.

Patentable materials, copyrighted materials, trademarks, and software, which are defined later as Intellectual Property, often are created as a result of the activities of USM faculty, staff and students through the use of University resources. It is paramount that USM use its available resources to see that the utilization of such inventions and materials are available for the public benefit and to use reasonable efforts to facilitate their development and marketing. In addition, the rights and privileges of inventors or creators must be preserved so their academic and research objectives and pursuits, as well as those of other faculty, staff, or students, may be further encouraged and stimulated.

The development, dissemination, and transfer of new knowledge historically have been the responsibility of the University mostly through teaching and publications. More recently, universities have also acknowledged the importance of technology-based research and development to the overall mission of the University. Implicit in this awareness is the understanding that universities have the responsibility not only to bring new knowledge into use by the public, but also to consider that such knowledge or technology sometimes has commercial value and should be treated as a financial asset to be used, conserved, or applied in such a way as to generate appropriate financial return to the inventor, the University and when applicable, the licensee of the technology. The objectives of this policy, then, are:

•        To develop a framework for encouraging research, scholarship, and a spirit of entrepreneurship within the University;

•        To provide incentives and assistance to inventors to develop and commercialize technology for the benefit of the inventor, the University, and the public;

•        To safeguard innovative technology from unauthorized use; and

•        To provide a framework to determine the commercial value of new technologies, bring them to public use, and provide for the equitable distribution of income including royalties, to the inventor, the University and other applicable parties.

Reason for Policy/Purpose


With the passage of the Bayh-Dole Amendments, Public Law 96-517, entitled “The Patent and Trademark Amendments Act of l980,” the federal government facilitated the retention of intellectual property, particularly inventions, by universities. In this act, the federal government gives nonprofit organizations, including universities, the right to retain title to inventions they have made in the performance of government grants and contracts. The act reflects Congress’ intention that these organizations use the patent system as a vehicle to “effectuate the transfer of government-funded inventions to the public.”

This policy is based on Section 807 of the Policies and Bylaws of the Board of Trustees of the Institutions of Higher Learning of the State of Mississippi which authorizes each member institution to develop policies for the management of its unique intellectual properties in each institution’s unique environment.

Who Needs to Know This Policy


All members of The University of Southern Mississippi community including employees, students and visitors.

Website Address for this Policy


usm.edu/institutional-policies/policy-rsch-otd-001

Definitions


1.1.       “University” or “USM” means The University of Southern Mississippi.

1.2.       “Intellectual Property” means any Patentable Materials, Copyrighted Materials, Trademarks, Software, art and creative endeavors, know-how, and Trade Secrets, whether or not formal protection is sought.

1.3.       “Patentable Materials” means items that reasonably appear to qualify for protection as defined in 35 U.S.C. §101 or other protective statutes whether or not patentable thereunder.

1.4.       “Copyrighted Materials” means the following:

1.4.1.     Books, journal articles, textbooks, glossaries, bibliographies, class notes, study guides, laboratory manuals, reports, syllabi, tests, and proposals;

1.4.2.     Lectures, musical or dramatic compositions, unpublished scripts, works of art;

1.4.3.     Films, filmstrips, charts, transparencies, and other visual aids;

1.4.4.     Video and audio tapes or cassettes;

1.4.5.     Live video and audio broadcasts;

1.4.6.     Programmed instructional materials;

1.4.7.     Mask works;

1.4.8.     Other materials or works, other than software, that qualify for protection under the copyright laws of the United States (17 U.S.C. § 102), whether or not registration with the US Copyright Office has been applied for.

1.5.       “Software” means one or more computer programs existing in any form, along with any associated operational procedures, manual, or other documentation, whether or not protectable or protected by patent or copyright. The term “computer program” shall mean a set of instructions and statements of related data that, in actual or modified form, is capable of causing a computer or computer system to perform specified functions.

1.6.       “Trademarks” means all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes associated with Intellectual Property developed as a result of research conducted by USM personnel.

1.6.1.     The trademarks, service marks, symbols, designs, slogans, seals, and logotypes representing USM shall not be subject to the provisions of this Intellectual Property Policy.

1.7.       “Trade Secrets” means information including, but not limited to, technical or non- technical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers that:

1.7.1.     derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper and legal means by, other persons, who can obtain economic value from its disclosure or use; and

1.7.2.     is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

1.8.       “Plant Germplasm and Related Plant Materials” means plant varieties, germplasm, lines, cultivars, strains, accessions, cells, DNA sequences, and other living plant materials capable of reproduction. Plant Germplasm and Related Plant Materials may be reproduced and propagated sexually by seed [including apomixes] or asexually by vegetative means [cuttings, scions, tissue culture, bulbs, tubers, etc.].

1.9.       “Plant Intellectual Property Protection” means a form of intellectual property associated with Plant Germplasm and Related Plant Materials that can be protected through plant variety protection (PVP), PVP with TITLE V Protection, plant patent, utility patent, or trade secret.

1.10.   “Scholarly and Creative Works” means certain copyrightable materials such as traditional academic publications, professional papers published in scholarly journals or books, research proposals, research articles, newly created texts published in journals or books, class notes, classroom presentations and instruction, research monographs, paintings, drawings, sculpture, musical compositions and performances, choreographies, dramatic works and performances, poetry, and creative fiction and nonfiction.

1.11.   “Nominal Use of University Resources” means use that is customary or usual given the employee’s appointment and academic assignments. For example, the use of office, computer, photocopier, telephone, office supplies, secretarial assistance, and other assigned resources in the ordinary support of his or her responsibilities and assigned activities is considered to be nominal. USM personnel may make such Nominal Use of USM resources and devote office time in carrying out a range of professional activities in the course and scope of employment.

1.12.   “Substantial Use of University Resources” means use of USM facilities, equipment, personnel and an employee’s time beyond nominal (or customary) as described above. Substantial Use of resources occurs when creation of the work or Intellectual Property in question requires use of USM resources beyond those allocated to individuals in support of assigned responsibilities and activities within their respective departments, centers, institutes or colleges. Such usage may occur as a result of actions of the personnel involved, may occur when specific assignments are given to personnel, or may occur in situations where contracts or other obligations are involved.

1.12.1. It is the responsibility of the dean, director, or equivalent supervisor to evaluate situations and determine whether or not Substantial Use of resources has occurred. Faculty members or other employees also have an obligation to notify their supervisors promptly when they believe their work will involve more than Nominal Use.  Examples include, but are not limited to, the following:

1.12.1.1.       Greater than customary or Nominal Use of University resources such as equipment, production facilities, or specialized computing resources in direct support of development of the work in question;

1.12.1.2.       Extraordinary University funding in support of the work’s creation, publication, manufacture or production;

1.12.1.3.       Direct assignment or commission from the University to undertake a creative project as a part of the developer’s regular appointment;

1.12.1.4.       Substantial Use of funding from gifts to the University to support creation of the work(s) involved;

1.12.1.5.       Production of the works under specific terms of a sponsored research grant or contract;

1.12.1.6.       Use of specifically designated University funds to support media production.

“University of Southern Mississippi Research Foundation” or hereinafter “USMRF” is a 501(c)(3) company organized to facilitate the unique and important relationships between USM and industrial affiliates. The corporation is designed to take advantage of opportunities not otherwise available to state universities (i.e. equity positions in start-up companies). 


Policy/Procedures


2.      INTELLECTUAL PROPERTY ADVISORY COMMITTEE

2.1.       An Intellectual Property Advisory Committee will arbitrate and recommend final decisions concerning ownership of Intellectual Property, and assist in mediating and resolving any disputes between the University and inventors/developers. This committee shall be an ad hoc committee.

2.2.       A majority of the committee will be composed of faculty. Members of the ad hoc intellectual property advisory committee will be appointed by the Vice President for Research. The committee will include no fewer than five (5) and no more than nine (9) experienced faculty, administrative and professional staff members, one of whom shall be designated by the Vice President for Research to serve as Chair. Care will be taken to include representation from areas with major, constant involvement with intellectual properties. The Chair may add additional non-voting members as necessary. The USM Director of the Office of Technology Development (hereinafter referred to as “OTD”) and the Assistant Vice President for Research, Technology Transfer and Corporate Relations will serve as ex officio, non-voting members of this committee.

 

3.      INTELLECTUAL PROPERTY POLICY APPLICABILITY

3.1.       This policy shall be applicable to all full or part-time tenured, tenure track, research, instructor-and teaching-track, and  adjunct faculty; visiting faculty, visiting scientists, staff; and other employees of the University of Southern Mississippi and to students as set forth in Section 4.0.

 

4.      ASSIGNMENT OF RIGHTS

4.1.       If any Intellectual Property is determined, in accordance with this policy, to be owned by USM, the developer/creator shall, if necessary, execute an assignment of rights, wherein they assign all rights, title and interests to USM, with exceptions noted in Section 6.3. Formal execution of this assignment may be accomplished when disclosure is made with the OTD or when a patent application is filed.

4.2.       Generally, students of USM will be entitled to own their Intellectual Property made during their enrollment as a student of USM and, except as provided below, will not be required to assign his or her ownership to USM. By way of example, student financial aid including, but not limited to scholarships, grants, loans, tuition waivers, and educational fee reductions, generally available to USM students and unrelated to any provision of services by the student to the USM shall not be interpreted as compensation as a USM employee.

4.3.       However, students of USM shall be required to execute an assignment of rights for Intellectual Property when the Intellectual Property is developed using USM facilities or equipment not available to the general public; or if they develop the Intellectual Property whenever they:

4.3.1.     are employees of USM; or

4.3.2.     hold awards such as scholarships or fellowships through USM under which the funding organization has placed restrictions as to Intellectual Property developed during the course of the award; or

4.3.3.     are co-inventors/co-creators with a party or parties required to assign their Intellectual Property rights to USM; or

4.3.4.     utilize proprietary know-how provided by a party or parties required to assign their Intellectual Property rights to USM; or

4.3.5.     are assigned, directed, specifically funded, or commissioned by USM to develop the Intellectual Property. In the event that a student is required to assign his/her rights to USM pursuant to this paragraph, this policy shall be applicable.

5.      DETERMINATION OF RIGHTS IN INTELLECTUAL PROPERTY

5.1.       Sponsored Research Efforts. Grants or contracts between external sponsors and USM, under which Intellectual Property is produced, may contain specific provisions with respect to disposition of rights to such property. The sponsor (a) may specify that the materials be placed in the public domain, (b) may claim reproduction, license-free use, or other rights, or (c) may assign all rights to USM.

5.2.       University Assigned Efforts. Ownership of Intellectual Property developed as a result of an assigned University effort or a commission to undertake a creative project (as noted in 1.12.1.3), shall reside with USM. With respect to traditional academic publications (including class notes, manuscripts, syllabi, etc.), the general obligation to engage in Scholarly and Creative Works as a part of an employee’s core responsibilities in teaching, research, and service does not constitute a specific assigned University effort.

5.3.       Intellectual Property (other than Scholarly and Creative Works or Mediated Courseware) shall be considered as having been developed as a result of an assigned University effort whenever:

5.3.1.     The general scope of University employment, field of work, or duties includes education, research, service, investigation, or the supervision of research or investigation, and the Intellectual Property is conceived or first reduced to practice as part of, or as a direct result of such activities and relates to the general field of an inquiry to which the person is assigned; or

5.3.2.     The Intellectual Property is made or developed through the use of University financing, facilities, resources, or on University time; or

5.3.3.     The Intellectual Property involves the use of University information not then available to the public; or

5.3.4.     The Intellectual Property is conceived or first reduced to practice as part of, or as a direct result of, any effort normally associated with one's field of work, discipline and position, in education, research and service

5.4.       Scholarly or Creative Works. Scholarly or Creative Works (traditional academic publications, or creative activities, e.g. monographs, books, refereed papers, articles for publication in scholarly journals, textbooks for publication and sale by commercial publishers, art works, musical compositions, etc.) may result from usual activities of faculty and Nominal Use of University resources. Because there is no specific requirement for faculty to develop such Scholarly or Creative Works, although they may be incorporated into the regular recognition and rewards processes of USM because they are used throughout the academic community as a measure of the quantity and quality of the research and teaching effort, these works are not considered work for hire but professional activities wherein the copyright is vested with the creator(s) who is entitled to royalties or other income derived from such works.

5.5.       Intellectual Property Resulting from Activities Outside the Scope of Employment.

5.5.1.     Intellectual Property developed by University personnel outside their scope of employment or assigned University effort, on their own time, at their own expense will be the exclusive property of the inventor/creator provided that University facilities, equipment, supplies, personnel or other resources have not been used to develop the Intellectual Property.

5.5.2.     Intellectual Property derived directly from the private consulting services of University personnel, when consulting is done on their own time and at their own expense will be the exclusive property of the inventor/creator, provided that University facilities, equipment, supplies, personnel or other resources have not been used to develop the Intellectual Property.

5.5.3.     Prior to applying for a patent, making a public disclosure or contacting any entity or person outside the university, the inventor/creator must disclose the Intellectual Property to the University. The disclosure is to be filed with the OTD for review and transmittal to the Vice President for Research who will make a determination as to the respective rights of the University and inventor/creator in the Intellectual Property after consulting with the appropriate Dean, Director, or other Vice Presidents. To assist in making decisions regarding rights of the inventor/creator and University, the inventor/creator shall provide the following information to the OTD:

5.5.3.1.           The circumstances under which the Intellectual Property was discovered and developed.

5.5.3.2.           The inventor’s/creator’s official duties, as given on his or her job description/contract with the University or as assigned at the time of the development of the Intellectual Property.

5.5.4.     Any Intellectual Property not so disclosed by an employee while employed by the University is presumed to have been made within the scope of University employment and assigned University effort.

5.6.       Mediated Courseware. "Mediated Courseware" shall mean on-line course materials (course material distributed through electronic media) that meet all of the following criteria: 1) The courseware enables instructors to rely exclusively or substantially on non-classroom contact hours for instruction; 2) makes extensive use of technology, including but not limited to video conferencing, streaming media, and similar technologies; 3) potentially could permit students from other institutions and from across the state and nation to access courses offered by the University upon payment of a specified fee.

5.6.1.     Self-initiated Mediated Courseware. When employees develop mediated courseware, without a specific assigned University effort and with only Nominal Use of University resources, the ownership of the courseware shall remain with the employee and the following provisions shall apply:

5.6.1.1.           During the period of employment, the author(s) will not be entitled to charge the University a fee, apart from the salary compensation they otherwise receive, for using author-owned courseware in teaching by the author(s) at the University; and

5.6.1.2.           The mediated courseware shall not be sold, leased, rented or otherwise used in a manner that competes in a substantial way with the for-credit offering of the University unless that transaction has received the approval of the Provost.

5.6.1.3.           If the author(s) leaves the University, the University will have a nonexclusive, royalty free right to use, reproduce, adapt, modify, update, exhibit, display, sell and use in compilations all courseware created during the period of University employment of the author(s).

5.6.2.     University Assigned Mediated Courseware. When the University specifically assigns one or more employees to develop Mediated Courseware or it requires Substantial Use of University resources to develop the Mediated Courseware, the resulting courseware belongs to the University and the University shall have the sole right to make derivative works and to decide who will utilize the courseware in instruction. The University, at its sole discretion, will control the right to use, reproduce, adapt, modify, update, exhibit, display, sell, use in compilations and create derivative works from such courseware. Income derived from the commercialization of Mediated Courseware resulting from an assigned University effort will be distributed to the author(s) based on this Intellectual Property Policy, Section 5.6.

5.7.       Other Efforts. Ownership rights to Intellectual Property developed under circumstances other than those listed in Sections 5.1 through 5.6 shall be determined on an individual basis by the Intellectual Property Advisory Committee and approved by the President or his or her designee. The inventor’s or creator’s dean/director or supervisor shall make a recommendation as to ownership of the Intellectual Property to the Intellectual Property Advisory Committee through the appropriate vice president.

6.      ADMINISTRATIVE PROCEDURES

6.1.       Responsibility – Designation of Appropriate Vice President. The Vice President for Research will exercise responsibility for administration of the procedures and policies set forth in this policy. That responsibility shall be executed through establishment and utilization of the OTD, the Director of which reports to the Assistant Vice President for Research, Technology Transfer, and Corporate Relations, and the USM Intellectual Property Advisory Committee, which reports to the Vice President for Research.

6.2.       Intellectual Property Administration Organization. USM may utilize either the OTD or the USMRF as its Intellectual Property administration organization. The procedures for utilization of the USMRF shall be as follows:

6.2.1.     An Intellectual Property Administration Agreement shall be established between USM and the USMRF. This agreement will provide for the assignment of USM-owned Intellectual Property to the USMRF. The USMRF shall administer the Intellectual Property.

6.2.2.     The OTD, upon instruction from the Vice President for Research, shall transfer responsibility for the administration of the Intellectual Property to the USMRF.

6.2.3.     The USMRF is authorized to seek protection for potential licensing purposes for those Intellectual Properties transferred to it.

6.2.4.     The OTD is authorized to seek protection for potential licensing purposes for Intellectual Properties that are not transferred to the USMRF.

6.2.5.     Should a college, school, laboratory, center, or individual inventor/creator deem Intellectual Property protection necessary for purposes other than potential licensing, that unit must fund such protection.

6.3.       Disclosure of Intellectual Property.

6.3.1.     Patentable Materials and Software. Except as provided in 6.3.2 below, disclosure is required for all Patentable Materials, Software, Plant Intellectual Property and other Intellectual Property categorized as 5.1 (Sponsor Supported Efforts), 5.2 (University Assigned Efforts) or 5.7 (Other Efforts). USM personnel shall promptly provide the OTD with a disclosure statement describing their inventions, software, new materials, devices, and processes using forms provided by the OTD. USM personnel shall sign all documentation necessary to protect and commercialize the intellectual Property.

6.3.2.     Copyrighted Materials. For Copyrighted Materials that may be licensable to third parties, disclosure is required using forms provided by the OTD. Disclosures are not required for Copyrighted Materials categorized as “University Assigned Efforts” under Section 5.2 when such works are for public use or for internal use (e.g. instructional or research purposes) even though ownership resides with USM.

6.3.3.     Scholarly and Creative Works. Disclosures are not required for Scholarly and Creative Works categorized in Section 5.4 in which the copyright is vested with the creator, such as articles for publication in scholarly or professional journals.

6.4.       The University has a responsibility to inform a disclosing employee in a timely manner regarding its decision to pursue protection via patent, or other means, of disclosed materials, devices, processes, or other inventions. The University will notify the employee in writing of its intent to pursue or decline to pursue protection. Such notification will be provided within one hundred and eighty (180) days of a written request from the disclosing employee.

6.5.       Declination to pursue protection frees the disclosing employee to pursue independently protection of the material, device, process or other invention. When the University declines to pursue protection of the disclosed materials, devices, processes, or other inventions the disclosing employee may request that such Intellectual Property be assigned to the USMRF so that the employee may negotiate the terms under which the USMRF or the disclosing employee pursues protection.

6.6.       Confidentiality. Certain contractual obligations and governmental regulations require that information be maintained in confidence. Additionally, some works, such as computer software, may best be protected and licensed as trade secrets. Some inventions must be maintained in confidence for limited periods to avoid the loss of patent rights. Accordingly, the timing of publications and/or presentations is important, and USM personnel shall use their best efforts to keep the following items confidential:

6.6.1.     All information or material designated as confidential in a contract, grant, or similar document;

6.6.2.     All information or material designated or required to be maintained as confidential under applicable government statutes or regulations; and

6.6.3.     All information relating to Intellectual Property developed by USM personnel, which may be protected under this policy, until application has been made for protection.

6.7.       Collaboration. Collaboration between USM personnel and persons not employed or associated with USM, including researchers at other universities, federal agencies, or companies, can result in development of Intellectual Property that is jointly owned by USM and the other persons or their employers. Protection and commercialization of such jointly owned Intellectual Property could be difficult without extensive cooperation and agreement among the owners. Accordingly, USM personnel involved in collaborative activities that result in development of Intellectual Property shall advise the OTD of such activities.

6.8.       Distribution of Income – USM Owned Intellectual Property. Income derived from the commercialization of any USM-owned Intellectual Property shall be distributed as outlined below.

6.8.1.     First, all income will be used to reimburse out-of-pocket expenses incurred by USM or USMRF, as appropriate, during the commercialization process. Such expenses shall be documented incremental costs for:

6.8.1.1.           protecting (e.g. patent prosecution and/or copyright registration, patent/copyright maintenance);

6.8.1.2.           defending;

6.8.1.3.           marketing;

6.8.1.4.           licensing the Intellectual Property.

6.8.1.5.           enhancing the marketability or any other aspect of the Intellectual Property; and

6.8.1.6.           dealing with USMRF equity interest associated with the Intellectual Property.

6.8.2.     OTD at its discretion may hold the distribution of income to cover anticipated future expenses (i.e. patent prosecution). Specifically excluded are costs associated with generating the Intellectual Property (i.e. research costs).

6.8.3.     After all expenses have been reimbursed, all subsequent income from commercialization of USM-owned Intellectual Property shall be distributed as follows (Table 1):

6.8.3.1.           Table 1. Distribution of income (1) derived from commercialization of USM owned Intellectual Property.


Royalty Income (2)

First $5,000

$5,001 –$100,000

$100,000+ 

Inventor (or Creator) 100% 40% 30%
Office of VP for Research / Office of Technology Development 0% 40% 45%
Inventor’s/Creator’s College, Department, Center or Unit (3) 0% 10%  15% 
Research account of laboratory or project generating the Intellectual Property 0% 10% 10%


6.8.3.2.           Notes:

6.8.3.2.1.          Royalty income will first be used to reimburse out-of-pocket expenses by University as defined in § 6.8.1.

6.8.3.2.2.          As used herein, “Royalty Income” means the cumulative income received over the life of the patent or other Intellectual Property being licensed after expenses have been reimbursed.

6.8.3.2.3.          When there are multiple inventors/creators, distributions or royalty income to the College, Department, Center or Unit, shall be based upon the percent contribution to the Intellectual Property made by inventor(s)/creator(s) from each such College, Department, Center, or Unit. The inventors’/creators’ share shall be distributed among all inventors/creators in accordance with an agreement signed by all inventors/creators. The agreement, which may be stipulated on the invention or copyright disclosure form, shall be approved by the appropriate vice president prior to the submission of the patent application or final execution of a license agreement. The OTD or the USMRF will administer distributions to inventor(s)/creator(s) in accord with this section.

6.8.3.2.4.          In the case where there are no USM inventors/creators as a result of a donation or assignment of Intellectual Property by a third party or for any other reason, the College, Department, Center, or Unit that received the donation or supports further research and development on the Intellectual Property shall receive 50% of any subsequent income; the Office of the Vice President for Research shall receive 25%; and the OTD or the USMRF shall receive 25%. In the event that no further research is undertaken by a College, Department, Center, Institute or Unit, the Office of the Vice President for Research shall receive 50%; and the OTD or the USMRF shall receive 50%, provided, however, that if the donation was received by, or on behalf of, a College, Department, Center, or Unit then that College, Department, Center, Institute, or Unit will continue to receive 50% of any subsequent income, the Office of the Vice President for Research shall receive 25%; and the OTD or the USMRF shall receive 25%.

6.8.3.2.5.          When there are multiple inventors, distributions of Subsequent Income to the College, Department, Center, or Unit, shall be based upon the percent contribution to the Intellectual Property made by inventor(s) from each such College, Department, Center, Institute, or Unit. The percent contribution of the inventors shall be based upon the percent allocated to the inventor(s) under the inventors’ royalty sharing agreement.

6.8.3.2.6.          Distributions of Subsequent Income within the College, Department, Center, Institute or Unit will be recommended to the Vice President for Research, through each unit’s appropriate dean/director, by the appropriate department chair; provided however, that any distribution in excess of $1,000,000 per year shall be at the discretion of the President – each unit should establish a standard policy for administering royalty distributions within their unit prior to licensing the technology.

6.8.3.2.7.          The inventor’s(s’)/creator’s(s’) share shall continue to be paid to the inventor/creator even if the inventor(s)/creator(s) leave the University. In the event of the inventor’s/creator’s death, the royalty will be paid in accordance with the inventor’s/creator’s testamentary disposition (wills, trusts and similar mechanisms) or, in the absence of such disposition, as provided by law.

6.8.3.2.8.          Where any amount allocated to an individual inventor/creator cannot be distributed within five (5) years because of inability to locate such individual, or heirs, such amount shall be reallocated proportionately to the remaining inventors or to the Office of the Vice President for Research in the case where no inventors can be located.

6.8.3.2.9.          When there is a reasonable basis for believing that amounts subject to allocation and distribution under this Policy may be required to be refunded or otherwise expended, or that others may have a claim to such amounts, allocation and distribution may be delayed for a reasonable period required for resolution of the matter.

6.8.3.2.10.      Inventor(s)/creator(s) may arrange for their personal share of royalty income to be retained by USM or the USMRF (e.g., to support their research program).

6.8.3.2.11.      This share (distributed to OTD or USMRF) will be used to support the University’s Technology Development program. This support includes patenting and licensing expenses.

 

6.9.       USMRF Owned Intellectual Property. Income derived from the commercialization of any USMRF-owned Intellectual Property shall be distributed as outlined in Section 6.6 above or according to a distribution as agreed upon at the time of an assignment of USM Intellectual Property to the USMRF. The USMRF may acquire equity interests in a private business entity licensing USMRF Intellectual Property when traditional sources of licensing are not available.

 

7.      APPEALS AND CONFLICTS

 

7.1.       An inventor may appeal a decision or determination made pursuant to this policy by submitting an appeal in writing to the Vice President for Research within thirty (30) days of receiving notice of the decision or determination.

7.2.       The Vice President for Research shall assemble the Intellectual Property Advisory Committee. The committee will review the appeal and make a recommendation to the Vice President for Research who will render a decision in writing within thirty (30) days of receiving the recommendation from the Committee.

7.3.       The inventor may appeal the decision of the Vice President for Research to the President of USM, who will make the final decision and notify the inventors in writing.

 

8.      CHANGES IN POLICY

8.1.       This policy will be reviewed every four (4) years. This policy may be changed by the President on the recommendation of the Vice President for Research and the Intellectual Property Advisory Committee.

8.2.       In the event of conflict between this policy and the Intellectual Property Policy of the Board of Trustees of State Institutions of Higher Learning, the latter shall prevail.

 



Review


The Director of the Office of Technology Development/Assistant Vice President for Research, Technology Transfer, and Corporate Relations is responsible for review of this policy every four years (or whenever circumstances require immediate review).


Forms/Instructions


N/A

Appendices


N/A 

 


Related Information


Bayh-Dole Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980): https://www.gpo.gov/fdsys/pkg/CFR-2002-title37-vol1/content-detail.html

IHL Board of Trustees Policies and Bylaws: http://www.mississippi.edu/board/downloads/policiesandbylaws.pdf

35 U.S.C. §101: https://www.gpo.gov/fdsys/pkg/USCODE-2011-title35/pdf/USCODE-2011-title35.pdf

United States Patent and Trademark Office: https://www.uspto.gov/

17 U.S.C. §102: http://www.copyright.gov/title17/92chap1.html

United States Copyright Office: http://www.copyright.gov/

Office of Technology Development: https://www.usm.edu/technology-development

 


History


Amendments: Month, Day, Year – summary of changes


 

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Institutional Policies
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Hattiesburg, MS 39406

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601.266.4466