University of Maryland Intellectual Property Policy

The primary mission of universities is to advance, preserve, and disseminate knowledge. The University of Maryland has established this policy on intellectual property to: (1) assure that the benefits of University research and scholarship, which include intellectual property, are fairly and fully disseminated to benefit the public, (2) create an environment that encourages and recognizes the creative efforts of faculty, students and personnel, and (3) generate resources to support the University’s primary mission.

This policy governs the ownership and protection of Intellectual Property created by Personnel, Students and others at the University. The policy applies to all University units, Personnel and Students as well non-University visitors who make use of University facilities and resources.
This policy is considered a part of the conditions of employment for all employees and a part of the conditions of enrollment and attendance for all Students.

Applicable laws and regulations will take precedence over any conflicting language in this policy. The terms of authorized University contracts with third parties may take precedence, when applicable, over any conflicting language in the policy subject to compliance with Article IV.

The terms defined in this Article are given the following special meanings in this policy.

1. Administrative Works: All copyrighted works other than Traditional Scholarly Works that are created by Personnel in the performance of an administrative duty to the University or as a work for hire as defined under U.S. Copyright Law.
2. Author: Someone who contributes original expression to a copyrighted work as determined under U.S. copyright law.
3. Copyrighted Work: An original work of authorship fixed in any tangible medium of expression.
4. Creator: Anyone subject to this policy who is either (1) an Author or (2) an Inventor.
5. Gross Revenue: Consideration paid in cash or equity by a third party in exchange for specific rights in specific University-owned Intellectual Property. Gross Revenue does not include financial or in-kind support for research (e.g., sponsored research agreements, restricted or unrestricted grants and gifts), tuition income or reimbursement for patent costs of University-owned and University-licensed intellectual property.
6. Intellectual Property: Traditional Scholarly Works, Administrative Works, Inventions (whether or not patentable), Software, Research Data, Tangible Research Materials, Trademarks and Service Marks, and associated legal rights to the same.
7. Invention: Any potentially patentable new and useful process, machine, manufacture or composition of matter or any new and useful improvement to the same.
8. Inventor: Someone who makes an inventive contribution to the conception of ideas claimed in a potentially patentable Invention as determined under U.S. patent law.
9. Net Revenue: Gross Revenue in the form of cash, including liquidation of equity, received by the University from the commercialization of University-owned Intellectual Property less unreimbursed expenses incurred in the protection of such Intellectual Property.
10. Personnel: Someone who receives a salary or other consideration from the University for performance of services on a part-time or full time basis. University employees with an appointment of less than a full year (e.g., 9-month) shall be considered Personnel for actions undertaken during their period of appointment. Students who receive wages for working on a University-administered scope of work or project are Personnel when acting within the scope of that employment. Personnel also include University consultants, visitors and others using University resources.
11. Research Data: Recorded information, regardless of the form or medium of recordation, in the nature of (1) form, fit, or function of data; data relating to items, components, or processes that are sufficient to enable physical and functional interchangeability; data identifying source, size, configuration, mating, and attachment characteristics, functional characteristics, and performance requirements, data files, statistical data; (2) computer software data that identifies source, functional characteristics or performance requirements and (3) technical data of a scientific or technical nature that are commonly accepted in the relevant scientific community to validate research findings. Research Data do not include computer software source code, algorithms, processes, formulae, flow charts or financial, administrative costs or pricing, or management information related to contract or project management.
12. Significant University Resources: Gifts received by the University or an affiliated foundation or corporation, funds received by the University or an affiliated foundation or corporation under a contract or grant, direct or indirect support from other funds administered by the University or an affiliated foundation or corporation, assistance of Personnel or Students from outside one’s home department or unit; assistance of Personnel or Students in one’s home department or unit or specialists (e.g., graphic designers, instructional designers, multimedia and other specialists) beyond the level of support that is generally provided to Personnel in one’s home department or unit. In general, salary, office space, use of University Libraries, personal computers and facsimile machines that are customarily provided campus wide or are typically made available to all Personnel in one’s home department will not qualify as Significant University Resources.
13. Software: A computer program, including, without limitation, microcode, subroutines, and operating systems, source code, algorithms, processes, formulae, or flow charts, regardless of the form of expression or object in which it is embodied, together with users’ manuals and other accompanying explanatory materials.
14. Sponsored Research Agreements: Grants, contracts, cooperative agreements and other agreements under which research and development activities are carried out and that are executed and/or administered by the University or an affiliated University foundation or corporation.
15. Student: Someone enrolled in the University and fulfilling his or her academic and research requirements and responsibilities including, but not limited to, undergraduate, graduate, professional, non-degree, not-for-credit and visiting students.
16. Tangible Research Materials: Models, machines, devices, designs, cell lines, cultures, solid tissue, apparatus, instrumentation, circuits, antibodies, recombinant materials, laboratory animals, chemical compounds, compositions, formulations, and plant varieties.
17. Traditional Scholarly Works: Original copyrighted works authored by Personnel in connection with their teaching, research, and professional activities or scholarship or by Students in the performance of their academic requirements and activities, including course work, dissertations, and theses. Traditional Scholarly Works include but are not limited to courses, course syllabi, course materials, whether delivered on-line or in a traditional face-to-face setting, lecture notes, literary works, non-fiction books, textbooks, professional articles and presentations, musical scores and librettos, dramatic and choreographic works; photographic, graphic, sculptural and architectural works; films, other audiovisual works, sound recordings, models, and designs.
18. University: The University of Maryland, College Park.

1. Authority. The President has the authority to administer and interpret this policy as provided in Section IV.G of the University System of Maryland Policy on Intellectual Property (Policy IV-3.20, “USM IP Policy”). The President has delegated authority to the Vice President for Research to administer the provisions of the policy that affect research and commercialization activities.
2. Waivers. Subject to any legal or contractual limitations and only after any potential conflicts of interest have been properly managed, the President or his designee may waive any requirements of this policy when he /she determines that doing so would be in the best interest of the University. Waivers may be considered on a case-by-case basis upon the written request and approval of the principal investigator, all persons expected to participate in the underlying project, the department chair or unit head and the Dean of the School or College. All waiver requests must be submitted to the Vice President for Research for consideration through the Office of Research Administration (ORA) and/or the Office of Technology Commercialization (OTC) depending on the nature and scope of the request. Persons who join a project after a waiver has been granted must be advised of the waiver and agree to it as a condition of joining the project.
3. Retained Rights. Any transaction granting rights in University-owned Intellectual Property shall (1) retain for the University, at a minimum, a royalty-free, irrevocable right to use, practice, and reproduce the Intellectual Property in support of University research and educational purposes; (2) be consistent with applicable private use restrictions, including bond covenants; (3) be subject to the right of the United States government to use Intellectual Property created with Government funds and may (4) reserve other rights, including the right of the University to authorize other not-for-profit educational and research entities to use University Intellectual Property in support of their own non- commercial research and educational activities.
4. Amendments. This policy may be amended from time-to-time as appropriate or as required to comply with changes in applicable laws and regulations in accordance with University policy and practices and subject to prior approval by the President and Chancellor.
5. Intellectual Property Committee. The Vice President for Research shall, in consultation with the University Senate, appoint a University Intellectual Property Committee. The Committee shall be an advisory committee constituted with a majority of faculty members, a minimum of two Students, and representatives from non-academic University departments that are involved in Intellectual Property issues (e.g., University Libraries, Research Administration, Technology Commercialization and the Office of the Senior Vice President and Provost). A representative of the Office of General Counsel shall serve as an ex-officio member of the Committee. The President, Vice President for Research and/or Provost may consult the Committee on Intellectual Property matters, ask it to review and recommend revisions to this policy, and request its advice on the resolution of disputes arising under or regarding matters not addressed by this policy. When the Committee considers this policy’s application in order to provide advice about specific Intellectual Property, the Creator(s) of the Intellectual Property may make a written and/or oral presentation to the Committee.
6. Reporting. The Vice President for Research shall report annually to the President and Senior Vice President and Provost on Intellectual Property activities at the University. The report shall include data for the preceding year on disclosures, waivers, releases of Intellectual Property to the public domain, patent applications, patent awards, licenses, and start-up companies distinguishing, when appropriate, between Maryland-based companies and those outside the State, as well as revenue and expenditures associated with the University’s technology transfer program, and suggested changes to the policy. In turn, the President shall report annually to the Chancellor and the Board of Regents as required by Article XIII of the USM IP Policy.

1. Traditional Scholarly Works
   1. Personnel. Personnel who author Traditional Scholarly Works shall hold copyright in those Copyrighted Works subject to the following conditions and exceptions:
      1. Reservation of Rights. The University reserves the right at all times to exercise copyright in Traditional Scholarly Works as authorized under United States Copyright Law.
      2. Exceptions. The University holds copyright in Traditional Scholarly Works created by Personnel when:
         1. the Works are required as deliverables under or created in the performance of any contract to which the University is a party; or
         2. not holding copyright would result in a breach by the University of a contractual obligation to a third party or would be contrary to law, regulation or USM Board of Regents’ policy; or
         3. the Works are commissioned by the University or created in connection with a duty specifically assigned by the University to the Creator; or
         4. the Works are created for University purposes with the support of Significant University Resources; or
         5. Personnel create the Works for personal purposes using Significant University Resources without prior written approval by the chair or head of the Creator’s department or unit.
   2. Students. Students shall hold copyright in Traditional Scholarly Works they author in connection with their University academic and research activities subject to the following conditions and exceptions:
      1. Reservation of Rights. The University reserves the right at all times to exercise copyright in Traditional Scholarly Works created by Students as authorized under United States Copyright Law.
      2. Exceptions. The University holds copyright in Traditional Scholarly Works created by Students when:
         1. the Works are created by Students in their capacity as Personnel; or
         2. the Works are required as deliverables under or created in the performance of any contract to which the University is a party; or
         3. not holding copyright would result in a breach of a University contractual obligation to a third party or would be contrary to law, regulation, or USM Board of Regents’ policy; or.
         4. the Works are created outside the scope of their academic and research activities using Significant University Resources without the prior written approval of the department or unit that controls the resources.
2. Collaborative and Joint Works. When people collaborate to author a Copyrighted Work, it often results in a “joint work” in which the Creators jointly hold nonexclusive rights to use the Work. Personnel and Students who collaborate with each other or with non-University third-parties (e.g., volunteers, visitors) to create Copyrighted Works are encouraged to agree, in writing, on the disposition and ownership of copyright in the Works prior to commencing their collaboration.
3. Administrative Works
   1. The University holds copyright in Administrative Works.
   2. The University may allow Personnel and Students access to and use of Administrative Works under appropriate terms.
4. Inventions, Software, Research Data and Tangible Research Materials
   1. University. The University owns all rights, title and interests, including Intellectual Property rights, in Inventions, Software, Research Data and Tangible Research Materials that are created, conceived or reduced to practice by Personnel or Students:
      1. when not owning title and rights in the Inventions, Software, Research Data or Tangible Research Materials would result in a breach of a University contract with a third party or would be contrary to law, regulation or USM Board of Regents’ policy; or
      2. in the performance of Sponsored Research activities and other research or creative activities administered by the University, supported by funds controlled or administered by the University or an affiliated foundation or corporation of the University or under a contract requiring University ownership; or
      3. for personal purposes using Significant University Resources without prior written approval by the chair or head of the Creator’s department or unit that controls those Resources.
   2. Personnel. Personnel shall own all rights, title and interests, including Intellectual Property rights, in Inventions, Software, Research Data and Tangible Research Materials they create, conceive or reduce to practice that are not owned by the University under Section V.D.1.
   3. Students. Students shall own all rights, title and interests, including Intellectual Property rights, in Inventions, Software, Research Data and Tangible Research Materials they create, conceive or reduce to practice in the performance of their academic and research activities whether or not they use Significant University Resources provided they are not owned by the University under Section V.D.1.
5. Course Research Projects
   1. Under certain limited circumstances, Students may be asked as a condition of participating in a course research project to assign or license their rights in Intellectual Property they create in performing the project that they would otherwise own under this policy to the University or a third party that sponsors the course research project. In such circumstances, course instructors must give Students who object to making such an assignment or granting such a license the option to participate in an alternative project, without penalty, that does not require the assignment or licensing of their Intellectual Property rights.
   2. When Students are granted access to proprietary data or information of a third party in connection with academic course work, the use and protection of such proprietary information shall be governed by an agreement entered into by and between the third party and the University and not the third party and Students.
6. Trademarks and Service Marks
   1. The University owns all trademarks and service marks used to identify the University, its programs, goods or services.
   2. The University will develop guidelines for:
      1. the management, registration and protection of University trademarks and service marks, their commercialization, and the distribution of any resulting revenue; and
      2. the use of University trademarks and service marks by Personnel, Students, student organizations and departments and units of the University in connection with University-sponsored or University-supported activities.
7. Acquisition of Intellectual Property. The University may acquire title to or rights in Intellectual Property by assignment, license, gift, bequest, and any other legal means. The appropriate administrative offices, often reflecting the purpose of the acquisition, must be consulted and applicable processes must be followed prior to any such acquisition.

1. Protection of University Interests. Personnel and Students agree to assign and do hereby irrevocably assign to the University all rights, title and interests, including Intellectual Property rights, in Intellectual Property that the University owns under this policy. Personnel engaged in consulting and other activities with third parties must ensure their activities and agreements with such third parties regarding the use of University- owned Intellectual Property do not conflict with this policy or other University commitments and do not undermine or compete with the University’s rights in
   University-owned Intellectual Property.
2. Duty to Disclose and Cooperate. Personnel, Students and other persons who create Intellectual Property that the University owns under this policy have an obligation to complete and submit to the OTC an Intellectual Property disclosure of such Intellectual Property and to cooperate with the OTC’s Intellectual Property management efforts.
3. OTC Responsibilities. The OTC has day-to-day responsibility, on behalf of the University, to make determinations of ownership of Intellectual Property and to manage, protect and commercialize University-owned Intellectual Property and/or otherwise make it available for the benefit of the public. The OTC works in consultation with Creators, reports to the Vice President for Research, and is supported by the Office of General Counsel.
4. Retention and Use of Research Data and Tangible Research Materials. The University must maintain possession of all Research Data, Tangible Research Materials and related information the University owns under this policy in order to meet its legal and contractual obligations.
   1. The director of the lab or unit or the principal investigator of the project through which such Data and Materials originate will serve as custodian of those Data and Materials on behalf of the University and shall be responsible for complying with all University policies and terms in Sponsored Research Agreements regarding the management and public release of Data and Materials to the relevant scientific community or the public.
   2. Students have a right to publish in their dissertations or theses University-owned Research Data and information about University-owned Research Data and Tangible Research Materials that they create or collect individually or jointly with others. The custodian of University-owned Research Data and Tangible Research Materials may, at the request of Students who participate in the creation or collection of University- owned Research Data and Materials, allow them to publish the Data and information about the Data and Materials outside of their dissertations or theses and/or to receive a copy of such University-owned Research Data and Tangible Research Materials under appropriate terms set forth in a written agreement.

1. Distribution of Net Revenue. The University will distribute Net Revenue as follows:
   1. Fifty percent (50%) to the Creators; and
   2. Twenty-five percent (25%) to the Creators’ department or unit; and
   3. Twenty-five percent (25%) to the OTC or as otherwise designated by the Vice President for Research.
2. Distribution to Multiple Creators. In the case of multiple Creators and/or multiple departments, Net Revenue will be divided and distributed between or among them to reflect their relative intellectual contributions to the creation of the Intellectual Property, as specified in the written Intellectual Property Disclosure submitted to the OTC. When the Intellectual Property Disclosure does not differentiate the level of contribution made by Creators, Net Revenue will be distributed equally between or among Creators and departments.
3. Review. The revenue distribution provisions shall be reviewed at least every five years and may be modified in accordance with this policy.
4. Equity. Consideration for a license may include equity in a business. If equity is liquidated, the proceeds shall be treated and distributed as Net Revenue under Article VII. Equity will be held, liquidated, or directly distributed to Creators (to the extent permitted by law) at the discretion of the University. Neither the OTC nor Creators will control the timing or terms of the liquidation of such equity received by the University. The Office of the Vice President for Administration and Finance, in consultation with the Office of the Vice President for Research, will hold and manage the disposal of equity held by the University. Equity holding and trading is subject to applicable laws and policies, including those that regulate securities, ethics, and conflicts of interests.
5. Revenue Received from Commercialization of Administrative Works. In those rare circumstances when Administrative Works have commercial potential, the department or unit where the Administrative Works originated will submit an Intellectual Property disclosure to the OTC. The OTC shall determine whether or not to commercialize the Works and how resulting revenue, if any, shall be distributed in consultation with the department chair or unit head.
6. Alternative Distribution. Requests to distribute revenue other than as set forth in this Article VI will be processed as waiver requests under Section IV.B.

1. Assignment
   1. The OTC may assign the University’s rights in specific University-owned Intellectual Property to all the Creators of that Intellectual Property when the OTC determines, in its sole discretion, assignment is in the best interest of the University, subject to compliance with applicable laws and federal regulations and University policies.
   2. Any assignment to Creators of University-owned Intellectual Property shall be conditioned on their reimbursement to the University of all out-of-pocket expenses incurred by the University prior to the date of the assignment and payment of a royalty or other consideration.
2. Licensing University-Owned Intellectual Property to Personnel Start-ups
   1. The OTC may, in its sole discretion and at the request of one or more Creators of University-owned Intellectual Property, license that University–owned Intellectual Property to a business entity in which one or more Creators has an ownership or other financial interest. In making a decision, the OTC shall take into account the entity’s technical and business acumen to commercialize the Intellectual Property and the demonstrated compliance of Creators with University conflict of interest and facility use policies and State Ethics laws.
   2. The OTC will attempt to consult with all Creators before executing any license under this Section, but need not obtain their approval. All Creators, regardless of whether they have an ownership/financial interest in the company, will share in any revenue received by the University in accordance with Article VI. Creators with an ownership or financial interest in the company shall recuse themselves from directly negotiating the terms of the company’s license with the OTC in the light of the conflict of interest that would create.

This policy will be effective beginning January 10, 2018 (“Effective Date”) and will apply to all Intellectual Property disclosed to the University on or after the Effective Date, unless otherwise agreed by the University and all Creators of the Intellectual Property (or the heir or assignee of any Creator’s share of Revenue).

Unless otherwise agreed in writing by Creators of Intellectual Property (or the heir or assignee of an individual Creator’s share of revenue) and the University: (1) the former University of Maryland Intellectual Property Policy (IV-3.20A approved by the President on March 13, 2003 and approved by the Chancellor on July 18, 2005) applies to all Intellectual Property disclosed to the University from May 1, 2005 through January 9, 2018; (2) the former University of Maryland Interim Intellectual Property Policy applies to Intellectual Property disclosed to the University from July 1, 2002, through April 30, 2005; (3) the former University System of Maryland Patent Policy applies to inventions that were disclosed to the University from May 31, 1990 through June 30, 2002; (4) the former University System of Maryland Copyright Policy applies to copyrighted works that were disclosed to the University from May 31, 1990 through June 30, 2002, and (5) the University of Maryland College Park Procedures on Patent and Technology Transfer applies to copyrighted works and inventions that were disclosed to the University from May 31, 1990 through June 30, 2002.

The Patent Policy is available online at http://www.usmh.usmd.edu/Leadership/BoardOfRegents/Bylaws/SectionIV/IV300.html.

The Copyright Policy is available online at http://www.usmh.usmd.edu/Leadership/BoardOfRegents/Bylaws/SectionIV/IV310.html.

Copies of the 2005 Intellectual Property Policy, the Interim Intellectual Property Policy, and the College Park Procedures on Patent and Technology Transfer are available from the OTC or Office of General Counsel.