E70: Intellectual Property Policy

Policy

Foreword

In the course of conducting their university-administered activities, the faculty, staff, and students of The University of New Mexico (UNM) often create intellectual property that may be protectable by patent, copyright, or other means. UNM wants a policy that encourages the treatment of such property in ways beneficial to the creators of such works, as well as to the University and to the public. To these ends, UNM and the creators should assist each other in identifying, evaluating, protecting, and exploiting such property. Such efforts will also help in recognizing the creation of intellectual property as a significant academic achievement.

Accordingly, this Policy seeks to recognize such achievements; to provide advice and assistance to faculty, staff, and students; to promote a clear understanding of legal relationships; and to realize and optimize the benefits of potentially valuable intellectual property to the creators as well as to UNM. A feature of this Policy is to encourage creators to perform key roles in the utilization of intellectual property.

This Policy governs the ownership, protection, and transfer of Scholarly/Artistic Works (as defined in Section 2.2) and Technological Works (as defined in Section 2.3) created by UNM faculty, staff, and students. Inventors and authors are referred to in this Policy as creators. It is the purpose of this Policy to encourage, support, and reward scientific research and scholarship, and to recognize the rights and interests of creators, UNM, and the public.

However, UNM's commitment to teaching and research is primary and this Policy does not diminish the right and obligation of faculty, staff, and students to disseminate research results for scholarly purposes. The latter is considered by UNM to take precedence over the commercialization of Scholarly/Artistic and Technological Works.

Summary

This summary of the Intellectual Property Policy is intended only as an aid to reading the Policy. Wording in the summary should not be relied upon as a substitute for the Policy.

1. The Policy applies to all UNM faculty, staff, and students, hereafter referred to as creators. (See Article 1.)

2. UNM's commitment to teaching and research is primary, and the right and obligation of creators to disseminate research results for scholarly purposes takes precedence over the commercialization of Scholarly/Artistic and Technological Works.

3. Faculty members working with students on research projects must inform students in advance of the terms of this Policy and of any obligations of nondisclosure or confidentiality.

4. All inventions, tangible research results, and artistic and literary works are subject to this Policy and to federal and state laws and regulations governing intellectual property. (See Sections 2.2 and 2.3.)

5. All Scholarly/Artistic Works are owned by creators unless they were created with substantial directed investment of UNM facilities or funds or capitalize on affiliation with UNM. (See Section 2.2.)

6. Technological Works (inventions and tangible research results) that are owned by UNM under this Policy are:

• those created using UNM facilities or funds;

• and those created without UNM facilities or funds but within the scope of the creators' employment (determined by the creators' recent teaching, research, or other UNM activities).

Exception is made for inventions and tangible research results that were assigned by creators to an outside entity pursuant to a consulting agreement that is consistent with other University policies (including conflict of interest) and that has received prior approval by the creators' department chair and dean or unit director. (See Sections 2.3, 2.4, and 2.5.)

7. The Policy is administered by the Provost or the Executive Vice President for Health Sciences (EVPHS) for their respective reporting units. (See Article 3.)

8. Royalties from commercialization by UNM Rainforest Innovations (UNMRI) (the main commercialization arm of UNM) of inventions, tangible research results, and other types of intellectual property are allocated (see Section 2.6):

40% equally among the creators
40% to UNMRI.
20% to UNM.

9. Standard procedures for review are described in Article 4.10. Appeal of UNM ownership is covered in Article 5.

1 Scope

This Policy applies to all UNM faculty, staff, and students (hereafter referred to as creators). Reference to this Policy should be made in the University Administrative Policies and Procedures Manual (UAPPM) as well as in the UNM Pathfinder. Faculty members working with students on research projects must inform students in advance of the terms of this Policy and of any obligations of nondisclosure or confidentiality.

2. Rights in Scholarly/Artistic and Technological Works

2.1 Commercialization

The term "commercialization" shall mean the entire process of gaining commercial value for intellectual property, from seeking intellectual property protection to licensure of, granting of access to, or sale of said intellectual property.

2.2 Scholarly/Artistic Works

2.2.1 Scholarly, artistic, literary, and musical works in any medium are collectively referred to as Scholarly/Artistic Works. This category includes all materials developed by faculty and other personnel directly involved in instruction.

2.2.2 All rights in Scholarly/Artistic Works are owned by the creators, with three exceptions:

1. Works created by pre-arranged contractual obligation with substantial directed investment of UNM facilities or funds (exclusive of creators' salary) or in the performance of a written UNM work assignment or commission to create such a work. All rights in such works are owned by UNM.

2. Works that capitalize on an affiliation with UNM by explicit labeling of the work to gain a market advantage, beyond the noting of the creator's affiliation. Such uses of the UNM name, seal, or logo are regulated by UAP Policy 1010: University Graphic Identification Standards (see also Section 2.5). All rights in such works are owned by UNM.

3. Works created under a sponsored agreement that requires rights to be relinquished to the sponsor.

2.3 Technological Works and Technical Information

2.3.1

The term Technological Works means all inventions, discoveries, and other innovations that are protectable by patents, copyrights, mask works, or other means. Innovations include, for example, computer programs, integrated circuit designs, databases, and other technical creations.

2.3.2

The term Technical Information means all tangible and intangible research results, including data, graphs, charts, lab notebooks, technical drawings, biogenic materials, and samples.

2.3.3

All rights in Technological Works and Technical Information created by UNM creators with the use of UNM facilities or funds administered by UNM are owned by UNM, with income from commercialization of Technological Works distributed in accordance with this Policy.

2.3.4

All rights in Technological Works and Technical Information created by creators without the use of UNM facilities (with the exception of the university libraries) or funds administered by UNM, but that fall within the creators' scope of employment (see Section 2.3.5) at UNM are owned by UNM. However, UNM ordinarily will assert no ownership rights or interests in the following two instances:

1. Technological Works and Technical Information created pursuant to outside employment (see Faculty Handbook Policy C130: Outside Employment and Conflicts of Commitment) under a consulting agreement between a faculty member and an outside entity in which Technological Works and Technical Information are assigned to said entity. The consulting agreement must be consistent with UNM policies, including conflict of interest policies, and must be disclosed in writing and agreed to by the creators' chair and dean or unit director in advance of execution of the consulting agreement. (Contracts in existence at the time of adoption of this Policy must be disclosed within sixty (60) calendar days.)

2. Technological Works and Technical Information created pursuant to independent research or other outside activity that is consistent with UNM policies, including conflict of interest policies, and that was disclosed in writing and agreed to by the creators' chair and dean or unit director at the beginning phase of this research activity.

2.3.5

For purposes of this Policy, factors considered in determining the scope of a creator's employment normally shall include the relationship of the Technological Works and Technical Information to that creator's recent teaching, research, and other UNM activities, as well as activities stipulated in any appointment contract.

2.3.6

Disagreements concerning ownership can be appealed as described below in Article 5.

2.4 UNM Intellectual Property (UNM IP)

For purposes of this Policy, UNM IP means Scholarly/Artistic Works, Technological Works, or Technical Information deemed to be owned by UNM. (See Sections 2.2 and 2.3.)

2.5 Use of UNM Name, Logos, or Trademarks

Commercial use of the University's name, seal, logos, or trademarks requires prior written approval from UNM University Communications and Marketing. (See UAP Policy 1010.)

2.6 Costs, Royalties, and Other Commercialization Income

2.6.1

In the case of collaborations between UNM and outside entities, the provisions of Section 2.6 are applicable only to the ownership interests of UNM.

2.6.2

UNM and/or UNMRI shall normally bear the costs they have elected to incur in securing protection for intellectual property (including evaluation, prior art searches, preparation, filing, and prosecution of any patent application, and issuance and maintenance of patents issuing therefrom) and commercializing said property, until said property is licensed, assigned, or otherwise commercialized.

2.6.3

Prior to distribution of royalties (which, for purposes of this policy, are deemed to mean all income received by UNM or UNMRI for a license of UNM IP, but does not include payments for research, development, or reimbursement of patent costs), UNMRI shall be reimbursed for all unreimbursed or non-contractually reimbursable costs incurred in securing intellectual property protection and any litigation costs.

2.6.4

Royalties received by UNM from commercialization of UNM IP by UNMRI shall be divided as follows:

• Forty percent (40%) to be divided equally (unless otherwise unanimously agreed to and represented on the submitted invention disclosure form) among the creators;
• Forty percent (40%) to UNMRI; and
• Twenty percent (20%) to the University to be invested and administered by the Vice President for Research (on main campus) or the Vice President for Research (at the Health Sciences Center (HSC)), generally, in amounts consistent with the source(s) of the UNM IP. Accrued revenues will be used, in consultation with faculty, to support UNM units involved in ongoing research and educational pursuits relevant to commercialization efforts or will otherwise be administered as required by sponsor(s).

2.6.5

In any case where royalties shall be represented by shares of stock or other intangible assets, these assets shall be held in the name of UNM or UNMRI and managed by them. At the discretion of the managing unit (UNM or UNMRI), such stock or other intangible assets may be divided prior to liquidation and distributed in the proportions specified in Section 2.6.4.

2.7 Duties of Creators

2.7.1

All provisions of Section 2.7 apply to individual efforts of creators and to collaborative efforts with outside entities.

2.7.2

UNM's commitment to teaching and research is primary, and the right and obligation of creators to disseminate research results for scholarly purposes take precedence over the commercialization of Scholarly/Artistic and Technological Works.

2.7.3 Disclosure and Reporting Requirements Imposed by Agreements Sponsoring and Facilitating Research

Sponsored research agreements often carry requirements that any inventions or other intellectual property created in the performance of the agreement must be reported to the sponsor. Such agreements often also impose other requirements pertaining to commercialization of such intellectual property. Upon execution of any sponsored research agreement, the Office of Research Services, or the HSC Sponsored Projects Office, as appropriate, shall inform the principal investigator of any such requirements pertaining to intellectual property resulting from the work. In addition to sponsored research agreements from industry and government, other agreements facilitating research may impose intellectual property disclosure requirements, such as grants, equipment loan and transfer agreements, and material transfer agreements.

When UNM IP results from work under an agreement creating reporting obligations to sponsors or other third parties, then the Principal Investigator shall be responsible for ensuring disclosure of the UNM IP to UNM by submitting a Copyright or Invention Disclosure Form to UNMRI. Such disclosures shall be made as soon as possible and at least within two (2) months of creation.

UNM, and in some cases, UNMRI shall in turn report UNM IP to research sponsors and other third parties as required by federal and state laws and regulations, and by third party agreements of which UNM or UNMRI has been made aware.

2.7.4. Voluntary Disclosure

If the invention is not subject to third party disclosure obligations, then the creators have the choice as to whether to disclose the UNM IP to UNM or to UNMRI. Any disclosures shall be made on forms provided by UNM or UNMRI. Creators may consult with either the Office of University Counsel (OUC) or UNMRI as to the advisability of disclosure. Creators who choose not to disclose their UNM IP have no obligation to participate in the commercialization process outlined herein. Creators who chose to disclose thereby agree to participate in the commercialization process outlined herein.

Creators may not commercialize UNM IP created by them except by following the procedures outlined herein.

2.7.5

During as well as after their association with UNM, creators of UNM IP shall assist and cooperate with efforts by UNM and UNMRI to secure intellectual property protection and to pursue commercialization by executing all appropriate legal documents, including assignments, to perfect UNM's legal rights.

2.7.5.1 Creators shall make available to UNM and UNMRI all Technical Information necessary to support intellectual property protection.

2.7.5.2 Creators may, at their discretion, retain a copy of any Technical Information to use in scholarly pursuits.

2.7.6

In the event UNM or UNMRI takes legal action against a creator who refuses to execute necessary documents pertaining to disclosed UNM IP or otherwise fails to act in accordance with this Policy, any costs reasonably and necessarily incurred by UNM and/or UNMRI as a direct result thereof shall be deducted from that creator's share of royalties.

3 Administration of the Intellectual Property Policy

3.1 Provost of the University

The Provost, or designee, shall be responsible for the interpretation, implementation, and enforcement of this Policy on main campus and branches; the EVPHS, or designee, shall be responsible for the interpretation, implementation, and enforcement of this Policy on the Health Sciences Center campus. The Provost and/or EVPHS shall be responsible for University relations in areas where this Policy affects the University community, governmental authorities, private research sponsors, industry, and the public.

3.2 Office of University Counsel (OUC)

3.2.1

The OUC shall provide legal advice to the University on issues related to UNM IP.

3.2.2

The OUC is authorized with the prior approval of the Provost, EVPHS, and the RPC, to promulgate and publish information and procedures to implement this policy.

3.3 UNM Rainforest Innovations, or UNMRI (formerly known as Science & Technology Corporation @ UNM or STC.UNM)

3.3.1

UNM Rainforest Innovations (UNMRI) was granted by UNM a right to take assignment of UNM IP pursuant to a Memorandum of Agreement (MOA) between UNM and UNMRI, for the purpose of active support by UNMRI for commercialization of UNM IP. The mission of UNMRI is to serve the University of New Mexico by facilitating University inventors' commercialization of UNM IP, increasing UNM's non-governmental sponsored research, and contributing to economic development in New Mexico.

3.3.2

UNMRI, among other duties as described in the MOA, pursues the licensing of UNM IP by assessing the market for the IP, selecting the best means to commercialize the IP, negotiating commercialization agreements, overseeing commercialization activity, and receiving and distributing royalties to creators and UNM in accordance with this Policy.

3.3.3

The full text of the MOA can be obtained from UNMRI or the OUC.

4 Review of Disclosures and Commercialization

UNM and UNMRI shall expedite processing of reviews of disclosures and commercialization decisions.

4.1 Review of Disclosures

The specific implementation of the items under Article 4 will be determined under written regulations agreed upon by UNMRI and UNM.

4.1.1

UNM or UNMRI may require creators to consult with UNMRI prior to publishing for a reasonable period not to exceed ninety (90) calendar days from the date of disclosure, in order to enable a sponsor or UNM or UNMRI to evaluate a UNM IP and determine whether to pursue any form of intellectual property protection. In some cases, UNMRI may require creators to refrain from publishing certain materials within the said 90-day period. UNM and UNMRI shall cooperate in accelerating commercialization review to enable creators to publish their work in theses and dissertations or to pursue patent protection in cases of statutory bars.

4.1.2

When the OUC has accepted an appropriately completed disclosure as specified in Section 2.7.3, the OUC shall forward a copy to UNMRI within one (1) week. The creators may submit disclosures directly to UNMRI, in which case UNMRI shall forward a copy to the OUC within one (1) week of receipt.

4.1.3

UNMRI shall make a written determination as to whether or not commercialization is to be pursued within 120 calendar days from the date of disclosure of the IP to UNMRI.

(a) If UNMRI determines to pursue commercialization, it will make a decision about intellectual property protection within the 120 days from the date of disclosure delineated above.

(b) UNMRI may find the work described in the disclosure to be of significant interest, but insufficiently developed or documented for commercialization. In that case, UNMRI may recommend that the disclosure be returned to the creator(s), with suggestions for further development or requests for additional documentation. The creator(s) may then submit a new disclosure on the more fully developed or documented work.

(c) In certain cases, UNMRI may determine that a disclosure should be held in abeyance because further similar inventions are anticipated within nine (9) months. In such cases, UNMRI may delay processing the disclosure for up to nine (9) months, or even longer with the consent of the creator(s).

4.1.4

If no determination is made by UNMRI within the deadline, the creator(s) shall have the option of extending the deadline or of sending a written letter to UNMRI requesting a determination within ten (10) UNM business days. If UNMRI does not respond within this period or responds that it will not pursue commercialization UNM shall release the intellectual property to the creator pursuant to Section 4.4.2.

4.1.5

If, at any step during the process, both UNM and UNMRI determine not to pursue the commercialization of a particular UNM IP, UNM shall release the intellectual property to the creator, subject to sponsor approval.

4.1.6

If UNM or UNMRI shall have expended funds for prior art search and patent prosecution, reimbursement shall be in the manner described in Section 2.6.2 and 2.6.3.

4.2 Reporting

Within twelve (12) months of a complete disclosure, and at 18 months and 24 months, respectively thereafter, UNMRI shall provide to UNM and to each creator whose disclosure is in the hands of UNMRI a report detailing the current state of commercialization of the disclosure, including patenting, marketing, and licensing efforts. Any UNM creator may request and obtain from UNMRI access to UNMRI's current activity related to the disclosures for which they are the creator or co-creator.

4.3 Commercialization

In the event UNMRI has not made a reasonable effort to commercialize the UNM IP within two (2) years of its decision to commercialize (as per Section 4.1.3), UNM or the creator(s) may request UNMRI to return the UNM IP to UNM. If the UNM IP is returned to UNM, UNM and the creator(s) will attempt to commercialize the UNM IP within a mutually agreeable period; if these efforts are unsuccessful, the creator(s) may require that the UNM IP be released to them, subject to sponsor approval.

4.4 Filing Deadlines

4.4.1

At least 90 calendar days in advance, UNMRI shall advise UNM and the creator(s) of Technological Works of the following three (3) deadlines:

• A statutory bar to filing a U.S. patent application or provisional application;
• Initiation of filing for foreign patent rights under the Patent Cooperation Treaty (PCT); and
• Entry into national status under the PCT. Any exceptions in meeting the 90-day deadline shall be promptly communicated by UNMRI to OUC and the creators.

4.4.2

In the event UNMRI does not intend to continue commercialization efforts and does not commit itself to meeting the above deadlines, UNM shall release the intellectual property rights to the creator(s), subject to sponsor approval, within 30 days of UNMRI's notification to UNM.

5 Appeal of University Ownership

5.1

In the event a creator does not believe UNM is entitled to the rights in a Work, the creator may seek a determination or a waiver of UNM's interests in said Work. The OUC will provide the creator with a Determination of Rights Form which must then be completed and returned to the OUC, with all documents supporting the creator's claim. The OUC will forward a copy of the Form and supporting documentation to UNMRI for comments.

5.1.2

The OUC shall forward the Determination of Rights Form with attachments and the OUC's and UNMRI's written comments (the "Record") to the Vice President for Research or HSC Vice President for Research, as appropriate, who will form a three (3) person advisory committee in consultation with the President of the Faculty Senate, or designee. At least two (2) advisory committee members shall be tenured faculty. One of the tenured faculty members shall chair the committee. Committee members should be selected on the basis of relevant research background and experience. The creator shall be notified of the proposed committee membership and may object in writing to any of the proposed appointees on the grounds that the person, or the committee as a whole, does not meet the criteria stated above. The Vice President for Research or HSC Vice President for Research, as appropriate, in consultation with the President of the Faculty Senate, or designee, will determine whether the objection has merit, and, if so, will make appropriate substitution(s). In the case of disagreement regarding appointments, the Vice President for Research or HSC Vice President for Research, as appropriate, will make a final decision on the matter.

5.1.3

The advisory committee will endeavor to review the Record and hear all evidence within thirty (30) calendar days of receipt of the Record and will issue a written recommendation to the Vice President for Research campus or HSC Vice President for Research, as appropriate, within thirty (30) calendar days of hearing the last evidence. The committee will keep written minutes of all its meetings.

5.1.4

The Vice President for Research or HSC Vice President for Research will issue an ownership determination within thirty (30) calendar days of receiving the advisory committee's recommendation.

5.1.5

Participation in an appeal of ownership as described herein does not prevent the creator from pursuing other remedies.

5.1.6

The creator may appeal the ownership determination made by the VP for Research or the HSC VP for Research to the Provost or EVPHS (based on the department of the creator(s)) by written request to the Provost or EVPHS within ten (10) UNM business days of receiving notice of the ownership determination. The Provost/EVPHS will meet with all interested persons. Within sixty (60) calendar days of receiving the creator's written request, the Provost/EVPHS will make a final decision.

5.1.7

If the dispute involves rights in Works being claimed by the Provost/EVPHS, only the President shall have authority to review the ownership determination and make a final decision.

5.1.8

If the dispute involves rights in Works being claimed by the President, only a designee of the Board of Regents shall have authority to review the ownership determination and make a final decision.

5.1.8.1

Nothing in this section is in derogation of the Regents' discretionary right of review.

5.1.9

All materials produced by the creator and UNM under this section shall be retained as a permanent UNM record. This record shall be made available by the OUC to any party upon consent of the owners of the intellectual property.

5.2 Determination of Inventorship or Authorship among Creators

In the event individuals believe they are creators of UNM IP, and have not been adequately acknowledged as such at any point in the protection and commercialization process, they may petition UNM or UNMRI to assess their claim. The OUC will provide the petitioners with a Determination of Inventorship/Authorship Form which must be completed and returned with any relevant attachments for review. UNM or UNMRI will seek the opinion of outside patent counsel for determination. Any further inventorship or authorship dispute among creators shall fall outside the scope of this policy.

6 Related Provisions

6.1 Flexibility

UNM may accept, on terms beneficial to UNM, a voluntary assignment of a Scholarly/Artistic or Technological Work. It may waive, assign or grant (subject to the MOA with UNMRI) all or part of its rights in any Scholarly/Artistic or Technological Work under terms and conditions deemed appropriate and beneficial for the University.

6.2 Legal Actions

UNM or UNMRI may take such action as it deems appropriate to defend or enforce any patent, copyright, or other intellectual property right. In the case of claims against UNM, settlement of a claim or conduct of litigation shall be within the exclusive control of UNM.

History

• September 6, 2022 - Updated titles of departments and administrators, per FHB Policy A53 procedures
• February 23, 2022 – Updated to reflect name change of the Science and Technology Corporation @ UNM (STC.UNM) to UNM Rainforest Innovations (UNMRI), per FHB Policy A53 procedures
• September 14, 2010 – Approved by the Board of Regents
• April 27, 2010 – Revision of entire policy approved by the Faculty Senate
• May 10, 2002 – Approved by the Board of Regents
• February 26, 2002 – Revisions to IPP Section 2.7 approved by Faculty Senate
• June 8, 1999 – Approved by the Board of Regents
• February 23, 1999 – Approved by the Faculty Senate