UNHInnovation Creative Works Symposium: Deconstructing UNH Intellectual Property slide deck Presenter: Maria Emanuel, Associate Director, UNHInnovation

1. 1
UNH’s Intellectual Property Policy
Creative Works Symposium
April 29, 2015
Maria Emanuel, Ph.D. – Associate Director
UNHInnovation
© 2015 University of New Hampshire | innovation.unh.edu

2. Agenda
• Universities and Intellectual Asset
Management (IAM)
– Tech Transfer
– UNHInnovation
• IAM Tools
– Bayh-Dole Act
– UNH Intellectual Property Policy
– Examples at UNH
• Resources
© 2015 University of New Hampshire | innovation.unh.edu2

3. 3
Intellectual Asset
Management
Why Do Universities Care about IAM?
© 2015 University of New Hampshire | innovation.unh.edu

4. Vitamin D
• Dr. Harry Steenbock, 1923
• Wisconsin Alumni Research Foundation
(WARF), 1925
• 2014: WARF has a $2.6B endowment;
contributes over $70M annually to UW-Madison
to further research; 70%
of income comes from
Vitamin D
© 2015 University of New Hampshire | innovation.unh.edu4

5. What is Technology Transfer?
• Process of transferring skills, knowledge,
technologies, methods of manufacturing, samples
of manufacturing and facilities
among governments or universities and other
institutions to ensure that scientific and
technological developments are accessible to a
wider range of users who can then further develop
and exploit the technology into new products,
processes, applications, materials or services
*Wikipedia
© 2015 University of New Hampshire | innovation.unh.edu5

6. What is Technology Transfer?
• Service to faculty
• Service to the public
– New products to market
• Economic development
– Supporting start-ups, licensing locally
• Revenue generation
• Compliance
– Bayh-Dole
– Institutional policies
© 2015 University of New Hampshire | innovation.unh.edu6
Axanova L. U.S. Academic Technology Transfer Models:
Traditional, Experimental and Hypothetical. les Nouvelles, June
2012, p.125 -136.

7. What is Technology Transfer/UNH
• UNH Mission: From its main campus in
Durham, its college in Manchester, and the
UNH School of Law in Concord, the
University serves New Hampshire and the
region through continuing education,
cooperative extension, cultural outreach,
economic development activities, and
applied research.
© 2015 University of New Hampshire | innovation.unh.edu7

8. What is Technology Transfer/UNH
• UNH Mission: From its main campus in
Durham, its college in Manchester, and the
UNH School of Law in Concord, the
University serves New Hampshire and the
region through continuing education,
cooperative extension, cultural outreach,
economic development activities, and
applied research.
© 2015 University of New Hampshire | innovation.unh.edu8

9. What is Technology Transfer/UNH
• Facilitating the availability of UNH’s
research and knowledge for use and
consumption by larger audiences while
maintaining fidelity to the research
• Contributing to the UNH research
enterprise brand
© 2015 University of New Hampshire | innovation.unh.edu9

10. 1
0
Intellectual Asset
Management
Deriving maximum benefit from the
knowledge that we create
© 2015 University of New Hampshire | innovation.unh.edu

11. Intellectual Asset Management
• Identification
• Evaluation
– Protectability
– Marketability
• Protection
– Patent
– Trademark
– Copyright
– Know-How
– Tangible Research Property
• Commercialization
– Continuum of options
• Management
© 2015 University of New Hampshire | innovation.unh.edu11

12. A Continuum of Options
• There are a continuum of commercialization options
– Open Source/Creative Commons
– Copyright/trademark licenses
– Patentable innovations that are not patent protected
– Patented innovations
• UNH Examples:
– Polyfrag software (Meghan MacLean)
– Plant varieties developed by Brent Loy
– Itaconic acid polymerization (Itaconix/Yvon Durant)
– InterOperability Lab (IOL) Test Tools
• Royalties Since 2012: $170K
• Drive Consortia Memberships
• Beta versions to develop more robust tool
© 2015 University of New Hampshire | innovation.unh.edu12

13. 1
3
Intellectual Asset
Management
Tools
© 2015 University of New Hampshire | innovation.unh.edu

14. Bayh-Dole Act
• Patent and Trademark Law Amendments Act
• Patentable intellectual property arising from federal
government-funded research
• Pre-1980:
– Federal research funding contracts and grants obligated
inventors (where ever they worked) to assign inventions
they made using federal funding to the federal government
• Post-1980:
– Bayh–Dole permits a university, small business, or non-
profit institution to elect to pursue ownership of an
invention in preference to the government
© 2015 University of New Hampshire | innovation.unh.edu14

15. Bayh-Dole Act
• Encourage utilization of inventions produced under federal funding
• Permits universities (all non-profits) and small business to elect to retain title
to inventions made in performance of the federally funded program
• Permits exclusive licensing with transfer of an invention to the marketplace
for public good. Government receives royalty-free, non-exclusive license to
use for government purposes (including use by government contractors)
• University must disclose invention to the government within two months
after disclosure to university
• University has two years after disclosure to the government in which to elect
title. If title is elected by the university, a patent application must be filed. If
title is not elected by university, the right to take title defaults to the
government
• Make efforts to attract, and give preference to, small business licensees
© 2015 University of New Hampshire | innovation.unh.edu15

16. Bayh-Dole Act
• Share royalties with the inventor
• Use the balance of royalties after
expenses for scientific research or
education
• University agrees to require, by written
agreement, its employees to disclose
promptly in writing each invention made
© 2015 University of New Hampshire | innovation.unh.edu16

17. UNH IP Policy: History
• 1990
– Established UNH IP Policy
• 2006
– Significant revision of IP Policy, including student IP rights
and commercialization of UNH-developed works
• 2014
– Editing or cleaning up of language to conform across all
policies at UNH
– Clarification of Exempted Scholarly Works ownership and
license
– Clarification of student IP ownership
– Improved innovation release process
© 2015 University of New Hampshire | innovation.unh.edu17

18. UNH IP Policy: Applicability (Section 4)
• Covered Individual: All members of the University community
– Including, but not limited to, all faculty, administrators, staff,
students; visiting scholars, scientists, and postdoctoral fellows;
and any other persons at the University involved in carrying out
the University's mission at or under the auspices of the
University.
• This policy applies regardless of the source of support for the
research/scholarly activity and therefore does not distinguish
between funded and unfunded efforts, except where specific
sponsor requirements prevail.
• This policy should not be construed to limit the right of any
member of the University community to conduct his/her
research/scholarly work.
© 2015 University of New Hampshire | innovation.unh.edu18

19. UNH IP Policy: IP Ownership & Covered
Individuals (Section 6)
• A Covered Individual shall own all IP discovered,
created, or developed by the individual unless:
– IP discovered, etc. while conducting University duties for which
the individual is employed (receives salary, wages, stipend, or
grant funds)
– IP resulted from an individual making Use of University
Resources beyond what is available to the non-University
community
– Legal obligation otherwise restricts IP ownership (e.g.
Sponsored Research Agreement, NDA, MTA)
• You own the copyright in Exempted Scholarly Works; the
University has a royalty-free license to use it as well.
© 2015 University of New Hampshire | innovation.unh.edu19

20. UNH IP Policy: IP Ownership & Graduate
Students (Section 7.2)
• Graduate students shall own all IP discovered, created, or
developed by the individual unless:
– IP discovered, etc. in the course of employment at the University
or research carried out in University laboratories as part of a
post-baccalaureate or postdoctoral degree or non-degree
program
– IP resulted from work directly related to the graduate student’s
employment or research responsibilities at the University
– IP developed from work performed under a grant or other
sponsorship, or undertaken with other Covered Individuals who
have a duty to make Assignment to the University
• All student theses, dissertations, and derivatives of these
works are Exempted Scholarly Works. Graduate student owns
the copyright, although the University has a royalty-free
license to use it as well.
© 2015 University of New Hampshire | innovation.unh.edu20

21. UNH IP Policy: IP Ownership &
Undergraduate Students (Section 7.1)
• Undergraduate students shall own all IP discovered,
created, or developed by the individual unless:
– IP discovered, etc. while receiving financial support from
the University in the form of wages, salary, stipend, or
grant funds
– IP resulted from an individual making Use of University
Resources beyond what is available to the non-University
community
– Legal obligation otherwise restricts IP ownership (e.g.
Sponsored Research Agreement, NDA, MTA)
• Works produced for class assignments remain the
property of the student, unless any of the above apply.
This includes patentable inventions and copyrights.
© 2015 University of New Hampshire | innovation.unh.edu21

22. UNH IP Policy: Exempted Scholarly
Works (Section 8.1)
• Traditional publications in academia regardless of their medium of
expression, such as textbooks, course material, case studies, peer-
reviewed manuscripts, syllabi, tests, study-guides, glossaries
• Academic software (not for commercial use)
• Electronic publications such as websites, course descriptions/notes
published electronically
• Photographs, films, charts, transparencies, video and audio recordings;
• Graphic and sculptural works, works of art, architectural plans and
structures
• Dress and fabric designs
• Theses and dissertations
• Music
• Furniture design
© 2015 University of New Hampshire | innovation.unh.edu22

23. UNH IP Policy: Exempted Scholarly
Works (Sections 8.1 and 8.2)
• Exempted Scholarly Works ownership:
– University waives its ownership in the interest to the
author for Exempted Scholarly Works
• Provided this is not contrary to the terms of legal agreements
– And, University retains a non-exclusive, irrevocable,
Royalty-free License to use, display, duplicate, create
derivative works from and/or distribute the materials
with appropriate attribution for University educational
and/or research purposes
• For instructional materials, such as class notes, curriculum guides,
theses, or dissertations
© 2015 University of New Hampshire | innovation.unh.edu23

24. UNH IP Policy: Royalty Distribution
(Section 12)
• Net Income Received from IP is distributed as:
– 30% Innovator(s)/author(s)/developer(s)
– 30% Innovator’s college/school
– 30% Office of the Senior Vice Provost for Research
– 10% UNHI
© 2015 University of New Hampshire | innovation.unh.edu24

25. UNH IP Policy: Acknowledgement
(Section 14)
• Acknowledgement of Intellectual Property Policy and
Assignment
– Required under the Bayh-Dole Act for federally-
funded projects
– Part of UNH IP Policy
– ‘I hereby expressly and solely assign to the
“University of New Hampshire” all right, title and
interest in and to any such Innovation.’
• Stanford vs. Roche (2011)
– Included in Visiting Scholar Agreements
© 2015 University of New Hampshire | innovation.unh.edu25

26. UNH IP Policy: Return of Innovations
(Section 10)
• If UNHI does not pursue IP rights applications or
further commercialization of an innovation, the
innovation is released to innovator*
– *If federally funded, invention must first be released to
federal agency
• Reimburse the University for all out-of-pocket
Intellectual Property-related expenses out of future
revenues generated
• Innovator assumes all liability
• All new improvements or discoveries developed at
UNH must be reported
© 2015 University of New Hampshire | innovation.unh.edu26

27. Other Policies
• Openness, Access, and Participation in
Research and Scholarly Activities Ownership
and Management of Research Data
• Financial Conflict of Interest in Research
• Conflict of Commitment
• Conflict of Interest in Start-up Companies
• Management of Equity in Interests in Start-up
Companies
© 2015 University of New Hampshire | innovation.unh.edu27

28. 2
8
Intellectual Asset
Management
Examples at UNH
© 2015 University of New Hampshire | innovation.unh.edu

29. UNHInnovation
• Building public-private partnerships that result in research
investments and technology-based economic development
• Assure Bayh-Dole compliance
• Manage UNH IP policy
• Identify, evaluate, protect, and license University-developed
innovations
• Develop and manage non-disclosure/confidentiality
agreements, material transfer agreements, IP-related terms
and conditions of sponsored research agreements, and
license agreements
• Support spin-out companies for the commercialization of
University-developed innovations
© 2015 University of New Hampshire | innovation.unh.edu29

30. FY2014 Metrics - UNHI
© 2015 University of New Hampshire | innovation.unh.edu30
College/Department Disclosures
USFull &Provisional
PatentApplications
Filed USPatentsIssued
USTrademark
ApplicationsFiled
US
Trademarks
Issued
Options/
Licenses
Royalties
Generated
Legal
Reimbursements
Start-up
Companies
AcademicAffairs 0 0 0 0 0 0 266.09$ -$ 0
Athletics 2 0 0 0 0 1 1,649.20$ 4,087.50$ 0
College ofEngineeringandPhysical Sciences 19 5 5 0 0 0 75,729.85$ 84,183.50$ 0
College ofHealthandHumanServices 8 0 0 0 1 2 980.65$ 980.65$ 0
College ofLiberal Arts 0 0 0 0 0 0 10,479.70$ -$ 0
College ofLife SciencesandAgriculture 6 1 0 0 0 5 149,250.73$ -$ 0
Cooperative Extension 1 0 0 0 0 0 4,500.00$ -$ 0
Institute forEarth,Oceans,&Space 9 1 1 0 0 4 8,000.00$ -$ 0
General Administration 3 0 0 1 0 0 -$ -$ 0
InformationTechnology 0 0 0 0 0 1 -$ -$ 0
Library 1 0 0 0 0 1 -$ -$ 0
PeterT.Paul College ofBusinessandEconomics 0 0 0 0 0 0 -$ -$ 0
Research 10 0 0 0 1 110 287,110.00$ -$ 0
UNHSchool ofLaw 9 0 0 3 2 0 -$ -$ 0
FY14Total: 68 7 6 4 4 124 537,966.22$ 89,251.65$ 0
FiscalYear2014

31. Metrics – history of UNHI
© 2015 University of New Hampshire | innovation.unh.edu31
$0
$100,000
$200,000
$300,000
$400,000
$500,000
$600,000
0
20
40
60
80
100
120
140
FY05
OIPM
FY10
ORPC
FY13
ORPC Transition
FY14
UNHI
Disclosures Licenses Start-Ups US Patents Filed US Patents Issued Royalties

32. Metrics: FY00-10, FY11-FY14; % of Total
College FY00-10
Inv.
Discl.
FY11-14
Inv.
Discl.
FY00-10
Licenses
FY11-14
Licenses
FY00-10
US
Patent
Appl.
FY11-14
US
Patent
Appl.
FY00-10
Royalties
FY11-14
Royalties
FY00-10
Start-
Ups
FY11-14
Start-
Ups
Eng. and
Phys. Sci
76% 39% 34% 8% 77% 89% 12% 6% 71% 33%
Life Sci.
and Ag
20% 9% 32% 9% 22% 5% 66% 50% 29% 0%
Paul 1% 1% 0% 0% 1% 0% 0% 0% 0% 0%
Health &
Hu. Srvc.
1% 15% 0% 2% 0% 5% 0% 0% 0% 0%
Liberal
Arts
1% 4% 6% 2% 0% 0% 7% 3% 0% 0%
Coop. Ext. 1% 2% 2% 0% 0% 0% 0% 2% 0% 0%
IOL 0% 14% 0% 72% 0% 0% 0% 18% 0% 0%
Other 1% 10% 27% 9% 0% 0% 15% 22% 0% 67%
UNH Law N/A 5% N/A 0% N/A 0% N/A 0% N/A 0%
© 2015 University of New Hampshire | innovation.unh.edu32

33. UNH Patents
© 2015 University of New Hampshire | innovation.unh.edu33
Compression/Decompression of
Image Files Using a Chaotic System
US 7110547 B2
Kevin Short, Math.
Wildcat Mandarin
US PP18845 P3
Rosanna Freyre, Plant Biology
Tablet Stand
US D678297 S1
Therese Willkomm, IOD/OT
Tri-Material Dual-Species
Neutron Spectrometer
US 8,710,450
Jim Ryan, Space Science Center

34. UNH Trademarks
© 2015 University of New Hampshire | innovation.unh.edu34
Innovator(s) Trademark Implementation
Dot Sheehan
(Athletics)
OHT
(logo)
Apparel
Research Computing &
Instrumentation
UNHCEMS®
(wordmark)
Online chemical inventory software
Jane Stapleton
Sharyn Potter
(Prevention Innovations)
Bringing in the Bystander®
Know Your Power®
(wordmarks)
Curriculum: the role of bystanders in
preventing sexual violence
Brent Loy
(Plant Biology)
Slick-Pik®
(wordmark)
Spineless summer squash
Jill Gravink
Janet Sable
Northeast Passage/CHHS
Northeast Passage Living Beyond
Disability
(wordmark, logo)
Classes, workshops, camps in adaptive
sports for individuals with disabilities
Goal based intervention in therapeutic
recreation for individuals with disabilities
University of New Hampshire NH
(logo)
Educational Services, merchandise (13
International Classes of Goods)

35. UNH Copyrights (Non-Software)
© 2015 University of New Hampshire | innovation.unh.edu35
Healthy UNH Plate
IHPP/Dining Services
Sonar Perspective View of
Southeast Alaska
Jim Gardner/CCOM
Transitions textbook
UNH ENGL 401 students/
English
RENEW™ Program
JoAnne Malloy/IOD
Mariana Trench
Jim Gardner & Andy Armstrong/CCOM
Albert Einstein
By Lotte Jacobi
UNH Library

36. UNH Copyrights - Software
© 2015 University of New Hampshire | innovation.unh.edu36
Software Title Innovator(s) Dept./College
UNHCEMS® Phil Collins RCI/OSVPR
ePIP Data Importer Tucker Hurton RCI/OSVPR
CHRT, CUBE, SWGM, MASC’D Brian Calder CCOM/CEPS
MPAA Val Schmidt CCOM/CEPS
Violett, Intact®, Interact, Test Scripts
TR-069
IOL OSVPR
AquaFE Ken Baldwin, Judd DeCew CCOM/CEPS
SEVE Courseware Bob Henry CE/CEPS
PolyFrag Meghan MacLean Nat. Resources/
COLSA

37. 3
7
UNH Resources
© 2015 University of New Hampshire | innovation.unh.edu

38. UNH Resources
• UNHInnovation
– http://innovation.unh.edu/
• Intellectual Property Policy
– http://usnholpm.unh.edu/UNH/VIII.Res/D.htm
• USNH General Counsel Office
– http://www.usnh.unh.edu/fac/offices/counsel.shtml
• Printing Services http://www.printing.unh.edu/copyright.html
• Primer on Copyright Law and Recommended Resources
– http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH%20Co
pyright%20Primer.pdf
• Digital Millennium Copyright Act (DMCA) Implementation at UNH
– http://www.unh.edu/cis/dmca/
• Library http://www.library.unh.edu/about/polreg/copyright.shtml
• Research Policies and Procedures www.unh.edu/orps/policies.html
• UNH Web Standards and Brand Guidelines http://www.unh.edu/cpa/web-
standards-and-visual-identity-guidelines
© 2015 University of New Hampshire | innovation.unh.edu38

39. Contact UNHInnovation
© 2015 University of New Hampshire | innovation.unh.edu
• Marc Sedam, Managing Director
• Maria Emanuel, Ph.D., Associate Director
• Ellen Christo, Manager, Strategic Partnerships
• Timothy Benoît-Ledoux, Licensing Manager
• Chelsey DiGiuseppe, Marketing Manager
• Paige Smith, Business Manager
• Annie Schofield, Program Support Assistant
• Andrew Schmid, UNH Law Intern
• Mike Leriche, UNH Justice Studies Intern
Gregg Hall
35 Colovos Road
Durham, NH 03824
603-862-4125
innovation.unh.edu
unh.innovation@unh.edu
@UNHInnovation
39