II. PATENTS
III. COPYRIGHTS
IV. TRADEMARKS
V. THE PROCESS AT UMBC
VI. OBLIGATIONS TO THE FEDERAL GOVERNMENT
VII. AGREEMENTS
VIII. APPENDIX A: Guide for Keeping Laboratory
Records
Today more than ever before, accomplishments
are flowing out of university laboratories into the world market.
Researchers and clinicians by the thousands are working with their
universities to seek protection for their inventions and other
intellectual property. In 1989, the Office of Technology Development
(OTD) was created to identify research and other products of the
campus that have commercial use.
Areas in which OTD has identified marketable inventions and innovations
include:
OTD serves the important function of informing
the business community of inventions and other intellectual property
spawned by faculty, students, and staff that are available for
commercial use and development. OTD promotes UMBC=s
intellectual property in the marketplace through workshops, published
material, and conferences attended by representatives of government,
industry, and finance. Since 1992, OTD=s
activity has increased more than 500%.
In summary, OTD assists the UMBC community
in all phases of commercialization including:
The "OTD Guide to Intellectual Property
Protection" familiarizes the UMBC community with basic facts
about protecting intellectual property. A general knowledge of
intellectual property law is essential for anyone involved in
or thinking about obtaining a patent, copyright, or trademark.
Licensing agreements, material transfer agreements, confidential
disclosure agreements, visiting scientists agreements, and consulting
agreements are also discussed.
A patent is a property right granted
by the federal government. It provides an inventor with an exclusive
right to exclude all others from making, using, or selling the
invention for a limited period of time, previously 17 years, and
for applications filed beginning June 8, 1995, 20 year terms will
apply. In effect, a patent is a reward for the expertise, time,
and effort expended in developing an invention.
A patent application is filed with the United
States Patent and Trademark Office (PTO) in Crystal City, Virginia.
Patent applications are confidential. In cases where a patent
application is withdrawn, its contents are forever kept in confidence
by the PTO.
When a patent is issued, the information in
the patent application becomes public. Others are therefore able
to use the invention or innovation if given the right to do so
by the patent owner(s). The patent owner(s) may sell, assign,
pledge, mortgage, lease, will, or donate a patent.
According to U.S. law, a patent may be obtained
by whoever invents or discovers any new and useful process,
machine, manufactured article, or composition of matter,
or any new or useful improvement thereof. Inventions that
are not patentable include laws of nature, methods of doing business,
theories, printed materials, plans of action, ideas, and results.
The term process refers to a method
or mode of treatment. It is an act or series of acts performed
on materials to produce a result. Included in this category of
patentable inventions are also new uses of a known process, machine,
manufactured article, composition of matter, or material. An example
of a process would be the use of DDT to kill insects.
The term machine includes mechanical
devices which perform a particular function and produce a certain
effect or result. Examples of machines include an exercise machine
with programmable, variable resistance and a novel. Minimally
invasive real time blood gas monitor. Even software on a computer
classifies as a machine and may be patentable, according to a
July 1994 decision by the Court of Special Appeals for the Federal
Circuit Court.
An example of a manufactured article is
a percussion drill bit.
Composition of matter
refers to chemical or metallurgical creations formed by the mixture
of two or more ingredients. This category includes modified hemoglobins
stabilized with tricarboxylic acids as physiological oxygen carriers
and novel glutathione derivatives as cytotoxic and anti-tumorigenic
agents..
An improvement is a modification of
an existing process, machine, manufactured article, or composition
of matter that meets the other patentability criteria.
An invention may fit into more than one category.
OTD, with the assistance of a patent attorney, attempts to identify
all aspects of an invention that may be patented and seeks the
broadest possible patent protection.
An applicant for a patent must be able to
show that his or her process or product is new, useful,
and nonobvious.
To be new, an invention or innovation
must not have been known or used by others (except those bound
by confidentiality) or published anywhere in the world. The requirement
for new differs in the U.S. from the majority of other
countries. Outside the U.S., a patent can only be obtained if
there has been no prior public disclosure of the invention
or innovation. In contrast, the U.S. allows a one year grace period.
A U.S. patent can be obtained if no more than one year has passed
between the patent filing date and the time the invention was
first described in a publication, was in public use, or was on
sale. For more information, see section V.E.1.,
"Researchers' Responsibilities Public
Disclosure."
To be useful, an invention must be
beneficial and do that which it claims. It cannot be "frivolous,
fraudulent, injurious to morals, health, or good order."
The law does not require that the invention be a commercial success,
that it be perfect, or that it be of such general utility as to
supersede all current means of accomplishing the same purpose.
To be nonobvious, an invention
must not be obvious to a person who is Askilled
in the art,@
in other words, to a person who has ordinary skill in the specialized
field. This criterion is subjective and can be the most troublesome
of all the criteria for patentability. Important for inventors
to note is that simplicity does not bar a patent.
C. Patent Application Components
In the United States, a patent application
is filed in the name of the inventors, on behalf of their employer(s).
At UMBC, a patent attorney is retained by OTD to work closely
with the inventor in obtaining a patent that accurately reflects
the work. The basic components of a patent application are:
Unlike a patent, one need not take any positive
action in order for a work to be copyrighted. According to copyright
law, an original work is copyrighted once it is
OTD, however, urges copyright registration
with the U.S. Copyright Office in Washington, DC. Doing so deters
infringement and is required in order to file an infringement
suit.
A. Categories of
Material Protected by Copyright
The United States Copyright Office identifies
eight classes of material that can be protected by copyright:
Items that may not be copyrighted include
names, titles, slogans, short phrases, extemporaneous speeches,
ideas, principles, concepts, facts, plots, procedures, processes,
systems, methods of operation, and local, state, and federal laws.
The delineation between a work which may be copyrighted and one
which may not is sometimes vague.
C. Basic Rights of the
Copyright Owner
Rights to a copyright are granted for a term
lasting the life of the author plus fifty (50) years. If a work
is anonymous, the term is for 75 years from publication or 100
years from creation. At the end of its term, a work falls into
the public domain.
The owner of a copyright is the person who
created the work, unless it is a "work made for hire"
In academia, special considerations exist for items such as class
notes, research papers, books, articles, computer software, videos,
manuals and monographs.
In a "work made for hire"
the employer, or the commissioning party for whom the work was
prepared, is considered the author. A work for hire is either
(i) a work prepared by an employee within the scope of his or
her employment or (ii) a commissioned work such as a contribution
to a collective work, a part of a motion picture or other audiovisual
work, a translation, a supplemental work, a compilation, an instructional
text, a test, or an atlas, etc. and the parties so agree in a
written instrument.
The policy of the University of Maryland System
states that copyrights arising from work developed through independent
efforts belong to the originator, unless the work was part of
a directed institutional or University System assignment or is
part of a sponsored research grant or contract. Independent effort
is defined as the product of inquiry, investigation, or research
where the effort is designed by the individual without assignment
or supervision by the institution or University. All other works
belong to UMBC.
E. How to Protect by Copyright
A copyright notice, although not required,
may be attached to a work and should include the word "opyright"
or the symbol "@" or the abbreviation "Copr." The copyright notice should
also include the year of first publication, and the name of the owner of
the copyright. The notice should be placed in a prominent location, such
as the title page or screen.
Official copyright registration forms are
available through OTD. Generally, registration is accomplished
by submitting a signed form, two copies of the work, and a $20
fee with the U.S. Copyright Office. The Copyright Office issues
certificates of registration. Software copyright registrations
must be accompanied by a hard copy printout of the source code.
In special circumstances, proprietary portions of the source code
may be redacted.
Copyright registration forms as well as answers
to copyright questions can be obtained by calling OTD.
As with patents, it is necessary to follow
certain guidelines to protect ownership of a copyright. See section
V.E.,
"Researchers' Responsibilities."
A trademark is a word, symbol, combination
word and design, slogan, or even distinctive sound that identifies
and distinguishes goods or a service. The right to own a trademark
lasts indefinitely if the mark continues to be used. Federal registration
is not necessary for trademark protection although registration
does provide advantages in cases of infringement and when filing
a trademark application in a foreign country.
A trademark is identified by affixing the
TM symbol. Following federal registration, the symbol
TM can be replaced by the 7
symbol.
The University of Maryland recognizes that
the taxpayer, University, inventor, and author all should benefit
from products developed at its constituent institutions. Hence,
a University of Maryland Patent Policy and a University of Maryland
Copyright Policy were developed (i) to provide financial compensation
and professional recognition to inventors and authors, and (ii)
to protect and serve the public interest.
The policies describe the rights and responsibilities
that accompany patenting, copyrighting, and licensing. They apply
to all university personnel (parttime, fulltime, paid,
and unpaid) and cover all inventions and some copyrightable materials
that result from:
A. University Responsibilities
UMBC, through the Office of Technology Development,
is responsible for determining whether to engage in pursuing the
patenting, copyrighting, and commercialization of any product.
Under the University of Maryland policies, the decision to do
so, or not, should be made in a timely manner. If OTD decides
against pursuing a patent or copyright, its interest in the invention
or product may be transferred to the inventor, author, or funding
agency.
OTD is responsible for guiding all patent,
copyright, and trademark activity at UMBC. Investigators are strongly
encouraged to discuss ideas with members of the OTD office.
Following initial discussion, the faculty,
student, or staff member may be asked by OTD to file an "Invention
Disclosure Form." The Invention Disclosure Form is a document
in which the inventor or author describes his or her work and
answers questions which will help OTD with its decision of whether
an invention or product is likely to be protectable and marketable.
The following flow chart illustrates the typical
route in the patenting/copyrighting and marketing process at UMBC:
C. Division of Revenues from Patented
Inventions
Revenues from patented
inventions are shared by the inventor(s) and the university in
accordance with the patent policy of the University of Maryland
System Board of Regents. It is the duty of OTD to assure that,
first, revenues are used to reimburse the university for all expenses;
second, the inventor(s) receive(s) the next $5000 from the revenue
stream; and third, subsequent revenues are properly distributed,
50%50%, between the university and the inventor(s). The
university's share is divided between the inventor's department
(85%) and the OTD (15%).
D. Division of Revenues From Copyrighted
Materials
When UMBC owns a copyright,
the University of Maryland Copyright Policy states that revenues
are to be shared by OTD, the originator, and the originator's
department. Revenues are applied first to reimburse the institution
for expenses that are incurred in generating, marketing, licensing,
and defending the copyright.
After expenses are reimbursed,
any additional revenues are shared as follows: (i) the originator
receives the first $5000, and (ii) thereafter, the originator
receives 75% of the revenues. OTD receives 15% of the remaining
25%; the department receives the balance. Sometimes, grants or
contracts require other provisions for the distribution of revenues.
OTD oversees distribution of revenues.
E. Researchers' Responsibilities
The following seven
obligations should be met by all researchers:
Under the law of the
majority of foreign countries, the inventor loses the right to
file for a patent if he or she already has publicly disclosed
the invention or innovation anywhere in the world. Under U.S.
law, an inventor has a one year grace period between publicly
disclosing an invention and filing a patent application.
A public disclosure
that would prohibit the filing of a patent application must be
"enabling," meaning that it provides sufficient information
to make it possible for a person with skill in the field to make,
use, or sell the invention.
Among the less obvious
items which have been held to qualify as enabling public disclosures
are:
The U.S. Patent and
Trademark Office and the U.S. Copyright Office carefully consider
witnessed records in cases where two or more parties claim the
same invention or copyrightable product. The date the idea occurred,
called conception, and the date the idea was put into practice,
called reduction to practice, are vitally important. Priority
goes to the first inventor to conceive the invention, provided
that the inventor acted with " reasonable diligence" in reducing the
invention to practice and did not abandon, suppress or conceal it.
Conception and reduction to practice are not viewed
as separate events, but rather as indistinct phases in a continuous
and diligent inventive process. Interference hearings are
used to determine who was the first to invent. See APPENDIX A,
entitled "Guide for Keeping Laboratory Records."
3. Diligence
Also important when deciding disputes between
two or more parties who claim the same invention is the diligence
shown by an inventor. Diligence refers to the level of effort
that was performed between conception and reduction to practice.
4. Confidential disclosure agreements (CDA's) It is usually
necessary to reveal the details of intellectual property to a
potential licensee. To protect one's rights, any enabling discussion or
disclosure should be done only
after the potential licensee has signed a confidential disclosure
agreement.
Companies are very familiar
with confidential disclosure agreements and sign them routinely.
Occasionally, an individual or a company may refuse to sign a
confidential disclosure agreement. Whatever the reason, this position
severely restricts OTD's ability to negotiate an agreement; special limits
are placed on
the type and scope of the information that is made available to
the company that refuses to sign a CDA.
5. Inventorship
The legal definition of an inventor
is an individual who contributes to the inventive concept claimed
in a patent application. A patent application that incorrectly
specifies inventorship is regarded as fraudulent and can be invalidated.
An invention that involves more than one inventor is known as
a joint invention and the inventors are called joint
or coinventors. The patent attorney will determine
who the proper inventors are, based on information provided by
the researchers.
6. Conflict of interest and conflict of commitment
The ethical
standards to which Maryland state employees are bound are published
and available from the Human Resources Office of the University
of Maryland. Briefly, with respect to conflict of interest, an
employee of the University of Maryland may not:
In situations which
have the appearance of conflict, an employee must inform his or
her department chair, or other appropriate party, according to
institutional procedures.
7. Agreements
Consult with OTD regarding licensing agreements,
confidential disclosure agreements, material transfer agreements,
visiting scientist agreements, and consulting agreements (see
below for more information).
Under law, all inventions
made through federally sponsored research must be reported by
the university to the federal government. A report must be submitted
to the appropriate governmental agency within 60 days of the filing
of an Invention Disclosure Form with OTD.
A decision concerning
whether the university plans to pursue ownership of the invention
or to return ownership to the inventor(s) must be made within
one year of the initial report to the federal agency.
Federal law also requires
that a patent application be filed within two years of declaring
ownership and that the university must seek out licensees, preferably
U.S. small businesses, to commercialize the invention.
In all cases, the government
retains a nonexclusive right to use the invention or have
it utilized for government purposes. The government also retains
the right to take over inventions that have not been brought to
commercialization after several years.
Researchers must consult
OTD before engaging in any kind of intellectual property agreement.
Confidential disclosure agreements, licensing agreements, material
transfer agreements, and visiting scientist agreements must be
signed by OTD as the authorized campus official on behalf of the
institution and must conform with certain campus requirements.
Faculty members, students, and staff may be asked to personally
sign a confidential disclosure agreement to assure personal liability
or other specific responsibilities to a company.
Researchers should also
consult with OTD before entering into consulting agreements. Unknowing
researchers have been precluded from entering into arrangements
with a company because of unfavorable agreements they signed earlier
with another company. Furthermore, state and federal conflictofinterest
regulations may be violated by the unwary.
The best discovery or
product in the world will lay fallow unless it has access to the
marketplace. For busy inventors and authors who have little interest,
knowledge, or propensity for business, manufacturing, marketing,
or sales, the key to attaining the ultimate benefit of a patented
invention or copyrighted product is usually to license it to another
party.
A licensing agreement
is an arrangement whereby a patent or copyright owner grants permission
to others to take action which would otherwise constitute infringement
of the patent or copyright. In other words, a license is an agreement
by the patent or copyright owner (licensor) not to sue for infringement
so long as the actions of the other party (licensee) are within
the terms of the agreement. A licensing agreement typically addresses:
B. Confidential Disclosure Agreement
A confidential disclosure
agreement (CDA) should always be obtained before an inventor/author,
or a representative of UMBC, enters into discussion with a potential
licensee. A CDA forbids the potential licensee from discussing
the invention with other parties. It also forbids the use of documents,
drawings, sketches, models, designs, data, memoranda, tapes, records,
and other materials without the permission of the inventor(s)/author(s)
or representative. A CDA is (i) a promise to keep the information
secret for a specified length of time and (ii) a promise that
the information will not be used for any purpose other than those
described in the CDA, which are usually limited to technical and
economic evaluation of the product.
A potential licensee
might similarly ask an inventor\author or a representative to
sign a confidential disclosure agreement. Separate confidentiality
agreements or confidentiality provisions are frequently attached
to or included with consulting or collaborative effort contracts.
OTD provides all necessary
guidance and documents. This is a very important step. It protects
the inventor's or author's
rights as well as foreign patent rights. Please do not sign
a CDA until it is reviewed by OTD.
C. Material Transfer Agreements
A material transfer
agreement (MTA) is used under two sets of circumstances: (i) when
a researcher receives a request for material; and (ii) when a
researcher requests material from an outside entity. It enables
researchers to share research materials while safeguarding proprietary
rights to the materials.
Material
refers to a tangible material of scientific and/or potential commercial
value, including, but not limited to, cell lines, viruses, organisms,
monoclonal antibodies or even entire libraries of materials. Different
arrangements exist for transferring materials between governments,
universities, nonprofit organizations, and forprofit
organizations. OTD will negotiate MTA's according to University
policy and state and federal regulations. OTD also ensures protection
of the researcher's right to use the materials and publish or
profit from findings utilizing the materials.
D. Visiting Scientist Agreements
A visiting scientist
is someone who will have ongoing, handson access to
University facilities and resources that are otherwise unavailable
to the public. A visiting scientist must execute a Visiting Scientist
Agreement through the Office of Sponsored Programs Administration
(OSPA) before arriving on campus.
Interaction with scientists,
colleagues, and students from outside the university is encouraged.
Safeguards ensure that visiting scientists comply with University
of Maryland System policies and procedures, particularly with
respect to intellectual property rights.
VIII.
APPENDIX A: Guide for Keeping Laboratory Records
While scientists in
industry are accustomed to a daily routine of logging in detail
laboratory activities, ideas, and data into notebooks, some academic
researchers are not. The following are rules which every researcher
is advised to observe. In fact, state auditors look to ensure
such rules are followed.
2. Do not erase. Draw
a line through errors in text or drawings. Enter the material
in corrected form. Initial and date all major changes.
3. Draw a line through
blank spaces on the page. Start a new page for each new experiment.
4. Refer to photographs,
charts, etc. that may be on separate pieces of paper.
5. When an experiment
or run is completed and it represents reduction to practice of
only one or a limited number of species, include a statement explaining
still other species and parameters of variables stating the reason
they are expected to be effective or ineffective.
6. Record observations
of results even if they are not fully understood or appreciated
at that time.
7. Have all entries
signed and dated by a witness. The witness must be someone who
has read the material and is capable of understanding it. He or
she may not be a coworker or collaborator. Obtain additional witnesses
when something important or highly unusual is observed.
8. Prior to discarding
samples or records of any kind, be sure they are of no value to
any other member of the project.
9. To fully protect
and preserve property rights to an invention or innovation, provide
proposed publications (including abstracts) to OTD. OTD may advise
the researcher that a patent application should be filed prior
to the anticipated publication date. OTD will not however require
that the proposed publication be delayed pending the filing of
a patent application. The filing of a patent is meant to help
inventors, not to obstruct the dissemination of important scientific
findings.
The glossary
contains terms the inventor will encounter in the course of pursuing
a patent, license, copyright, or trademark. Consult OTD for more
details.
Abandonment The
giving up (actual or implied) of a patent application, or of an
invention, by some positive action, by the failure to pay fees
to the U.S. Patent and Trademark Office on time, or by the failure
to complete requirements within a legal time frame.
Aesthetic Work
A work that is a result of original artistic expression.
Amendment A written
response from the inventor, through an attorney, to the U.S. Patent
and Trademark Office in order to modify, correct, strike or add
claims, or correct a drawing.
Anticipation
An invention is not novel, and therefore not patentable, if it
has been foreseen, exists as prior knowledge, or has been established
by public disclosure or use prior to the date a patent application
is filed for it.
Application The
application package to the U.S. Patent and Trademark Office. The
complete application must include an oath, specification, claims,
and sometimes drawings.
Art or Prior Art
The terms encompass what is known in the field prior to the filing
date of the application, as represented by already issued patents,
publications, and other public disclosures.
Assignee A person
or entity to whom the rights to an invention are signed over.
Assignor The
person who assigns his or her rights to an invention to another
(e.g., an employer).
Basic or Pioneer Patent
A patent that is recognized by the professional community
as the first in its field.
Broad Claim A
statement in a patent application covering extensive variations
and uses of the invention.
Claim(s) Numbered
paragraphs in the patent application specifically stating what
the inventor alleges for the invention. Claims establish the essence
and scope of the patent.
Collective work - A work, such as a periodical
issue, anthology, or encyclopedia, in which a number of contributions,
constituting separate and independent works in themselves, are
assembled into a collective whole.
Commissioned Work
A work produced for the institution or another employer by others
pursuant to a contract at the institution's expense.
Compilation -, A work formed by the collection
and assembling of preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting work
as a whole constitutes an original work of authorship. The term
"compilation" includes collective works.
Concealment Failure
to reveal something which one knows and is dutybound to reveal.
Same as "suppression."
Conception The
initial step of invention. The formation in the mind of the inventor
of a definite idea of the complete and operative invention as
it will later be put into practice.
Contracted Work
Work produced by and for others at the others' expense, using the
employer's facilities pursuant to a contract.
Copyright The
right granted by law providing the owner the exclusive rights
over a work to reproduce it, to prepare derivative works, to distribute
it, to perform it publicly, and to display it publicly.
Date of Application
The date on which a patent application is received by the
U.S. Patent and Trademark Office.
Date of Patent
The date of publication in the Official Gazette of the
U.S. Patent and Trademark Office that the patent has been awarded.
Dedication Implied
or expressed oral or written designation of the invention for
use by the public.
Diligence Continuous
work by the inventor to complete and perfect an invention.
Discovery The
finding of a new process, method, composition of matter or chemical
compound, new plant, new design in connection with production
or manufacture of an article, or any improvement over existing
processes or systems.
Disclosure A
written statement to OTD from the inventor indicating the character
of the invention. OTD uses the disclosure to evaluate the suitability
of the invention for development, legal protection, and commercialization.
Enabling A public
disclosure that provides sufficient detail to enable a person
with skills in the field to make and use an invention.
Examination The
study of a patent application by the U.S. Patent and Trademark
Office to determine the patentability of an invention.
Examiner The
official at the U.S. Patent and Trademark Office whose responsibility
it is to pass judgment on the patent application.
Exclusive License
An agreement between the patent, trademark, or copyright holder
and another party granting the right to use certain intellectual
property to that party alone.
Infringement
The making, using, or selling of a patented invention without
consent of the owner of the rights.
Inoperativeness
The failure of an invention to work due to imperfections or due
to an incomplete or erroneous description of the invention in
the disclosure.
Intellectual Property
There are four types of intellectual property. They are
patent, trademark, copyright and trade secret.
Interference
A proceeding by the U.S. Patent and Trademark Office for the purpose
of determining which of two or more applicants for a patent for
the same invention is the legally recognized inventor.
Invention A process,
machine, manufacture, or composition of matter which did not exist
before.
Invention Disclosure
Form A document in which the inventor describes his or
her invention such that OTD can determine whether it is likely
to be patentable and marketable.
Inventor According
to law, this is an individual who contributes to the inventive
concept claimed in a patent application or to the reduction to
practice.
Joint Inventor
One of the two or more individuals who contributed to the inventive
concept claimed in the patent application or to the reduction
to practice. A "technician", in contrast, is one who
works under the direction and guidance of another or who merely
conducts a test under another's direction.
Licensee The
person or organization to whom the owner of intellectual property
has licensed the right to make, use, or sell the intellectual
property.
Licensor The
owner of intellectual property rights who is allowing the use
of such rights.
NonExclusive License
An agreement permitting use of intellectual property rights
to a licensee in which the owner of the rights reserves the right
to permit use by other parties.
Oath A sworn
statement accompanying a patent application attesting that the
applicant has made the described invention.
Originator Any
person who produces a work by his or her own intellectual effort,
including student employees.
OTD UMBC's Office of
Technology Development, a part of the University of
Maryland Graduate School, Baltimore, created to identify, protect,
and develop faculty inventions.
Patent (design)
A design patent covers only the appearance of an item. The life
of a design patent is fourteen (14) years.
Patent (utility)
A utility patent protects the concept or idea behind an invention.
The life of a utility patent is seventeen (17) years.
Preliminary Search
An examination, usually by a patent attorney, of existing publications
and patents to determine if there is prior art disclosed which
would impair the patentability of an invention.
Publication Any
nonconfidential disclosure in a form distributed to or accessible
to anyone outside the inventor's institution and which is enabling.
Reduction to Practice
(actual, constructive) "Actual" reduction to practice means that a
prototype of an invention has been built and is operative.
"Constructive" reduction to practice refers to the filing of a patent
application with the U.S. Patent and Trademark Office.
Rejection The
decision of the examiner in the U.S. Patent and Trademark Office
that at least some claims in an application are not patentable.
The examiner must supply reasons for the rejection. The applicant
has an opportunity to respond.
Royalty Payment
from a licensee for the use of intellectual property rights.
Scholarly work
Work such as, but not limited to, books, articles, other such
publications, lectures, and computer software resulting from independent
effort.
Search A comprehensive
study of all information available in the field to determine if
any prior public disclosure makes the invention incapable of being
patented because of lack of novelty or because of obviousness.
Sponsored work
A work produced by or through an institution pursuant to a grant,
contract, or other agreement.
Suppression Failure
to reveal something which one knows and is dutybound to reveal.
Same as "concealment."
Trademark A word,
symbol, combination word and design, slogan, or even distinctive
sound that identifies and distinguishes goods or a service.
Unpatentable
An invention that fails to meet the criteria and definitions required
for a new patent.
Work Any copyrightable
expression including, but not limited to, writings, lectures,
musical or dramatic compositions, sound recordings, films, videotapes,
computer software, architectural designs, and works of art.
Work made for hire is
(1) a work prepared by an employee within
the scope of his or her employment; or
(2) a work specially ordered or commissioned
for use as a contribution to a collective work, as a part of a
motion picture or other audiovisual work, as a translation, as
a supplementary work, as a compilation, as an instructional text,
as a test, as answer material for a test, or as an atlas, if
the parties expressly agree in a written instrument signed by
them that the work shall be considered a work made for hire.
For the purpose of the foregoing sentence, a "supplementary
work" is a work prepared for publication as a secondary adjunct
to a work by another author for the purpose of introducing, concluding,
illustrating, explaining, revising, commenting upon, or assisting
in the use of the other work, such as forewords, afterwards, pictorial
illustrations, maps, charts, tables, editorial notes, musical
arrangements, answer material for tests, bibliographies, appendixes,
and indexes, and an "instructional text" is a literary,
pictorial, or graphic work prepared for publication and with the
purpose of use in systematic instructional activities.
The mission of OTD is to:
1. Literary works, including books, periodicals,
tests, manuscripts, advertising copy, computer programs, and databases.
Basically, it includes anything that does not fall within the
other seven categories and can be expressed in words, numbers,
or other verbal or numerical symbols.
B. Limits of
Copyright
2. Musical works, including any accompanying words.
3. Dramatic works, including any accompanying music.
4. Pantomimes and choreographic works.
5. Pictorial, graphic, and sculptural works,including maps, scientific and technical drawings, photographs,
works of art and reproductions of works of art.
6. Motion pictures and other audiovisual works
7. Sound recordings.
8. Architectural works.
The owner of a copyright has the right to exclude others from:
The owner of the copyright may allow the use
or partial use of the work in exchange for royalty payments.
As a condition of employment, the university
has an interest and a right of ownership of all inventions and
some copyrightable materials conceived within these activities.
In all cases, OTD is obligated to:
B. The OTD Patent and Copyright Process
Documents which have
been held not to qualify as enabling public disclosures
include:
2. Record keeping.
This is of critical importance for resolving
disputes over who was the first to make an invention or create
a product. The answer is usually decided on the basis of written
laboratory records.
Conflict of commitment
arises when an employee's outside activities substantially interfere
with obligations to students, colleagues, or the institution.
In addition, an employee of one constituent institution of the
University of Maryland may not receive a stipend for consulting
or other professional services rendered within that constituent
agency, except with the advance approval of the President or designee.
1. Make daily entries,
in ink, into a bound notebook. Title, date, and sign each entry.
Record conceptions, laboratory data, and drawings.