student innovation | ownership of student developed inventions at um

Student Innovation |Ownership of Student Developed Inventions at UM

IntroductionUM Patent Policy

Student Rights in an Invention

Who is Considered an “Employee”?

When are Students University “Employees”?

When Would the University Claim Ownership?

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Student Innovation |Introduction

UM Patent Policy (CR&R 100.020)

The ownership of rights in inventions developed by a student enrolled at a campus of the University of Missouri System is governed primarily by Collected Rule and Regulation (“CR&R”) 100.020 – the “Patent Policy.”

UM PATENT POLICYStudent Innovation |Introduction

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UM Patent Policy (CR&R 100.020)

The information provided herein is designed to assist with questions about intellectual property for student-developed inventions, but it is not a substitute for the University’s Collected Rules & Regulations. The Collected Rules & Regulations supersede any interpretations given herein.


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Students may be:• Employees of the University

Ownership is governed by CR&R 100.020


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Students may be:• Employees of the University• Non-employees of the University

• Class projects, student competitions, extracurricular activities, free time



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Students may be:• Employees of the University• Non-employees of the University• Graduate or undergraduate students



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Ownership is governed by CR&R 100.020Co-ownership between the student and the University would occur if a University faculty member or other employee is a named inventor along with a student.


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Ownership rights in inventions developed by students CR&R 100.020.C.2 and 100.020.D.6

STUDENT RIGHTSStudent Innovation |Introduction

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Students will be entitled to own any Invention or Plant Variety made during their enrollment as a student of the University except when the student meets the definition of “Employee” and the invention or plant variety was developed in the course of the student-employee’s service to the University.

Ownership rights in inventions

STUDENT RIGHTSStudent Innovation |Introduction

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Who is considered an “Employee” under the University’s Patent Policy CR&R 100.020.C.2?

WHO IS AN “EMPLOYEE”?Student Innovation |Introduction

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Under UM Patent Policy CR&R 100.020.C2, “Employee” shall mean:1. Any person receiving

compensation from the University for services rendered, regardless of whether the employee be full-time or part-time,

or


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Under UM Patent Policy CR&R 100.020.C2, “Employee” shall mean:2. Any person receiving

compensation paid through the University from any funds in its hand for distribution,

or


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Under UM Patent Policy CR&R 100.020.C2, “Employee” shall mean:3. Any person that has voluntarily

elected to enter into a written agreement with the University in exchange for the University’s agreement to treat such person as an “Employee” for purposes of this policy.


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STUDENT “EMPLOYEES”Student Innovation |Introduction

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Under UM Patent Policy, compensation is key to determining whether an individual is an “Employee.”

So, as it relates to students, what is considered compensation?

• Compensation does not include student financial aid including, but not limited to, scholarships, grants, loans, tuition waivers and educational fee reductions generally available to University students and unrelated to any provision of services by the student to the University.


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• Compensation does include the receipt of a stipend for performing research, working in a laboratory, or creating computer software.


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• Students receiving compensation for services rendered to the University that are unrelated to research, investigation or the creation of computer software are not “Employees.”

The University will not claim ownership when:• The Invention or Plant Variety was

developed by a student as part of a University class project using no greater University resources that those generally available to all other students within the class or than those available to the student as part of his/her enrollment with the University.

UM OWNERSHIP CLAIMSStudent Innovation |Introduction

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The University will not claim ownership when:• The Invention or Plant Variety was

developed by a student as part of a University approved student competition using no greater resources than those generally available to all other students within the competition or than those available to the student as part of his/her enrollment with the University.

Prize ≠ Compensation


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The University will not claim ownership when:• The Invention or Plant Variety

was developed by a student as part of a University approved extracurricular activity using no greater resources than those generally available to all other students participating in the activity or than those available to the student as part of his/her enrollment with the University.


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The University will not claim ownership when:• The Invention or Plant Variety

was developed by a student on his/her own free time, outside of any University class or sponsored activity, and using no greater University resources than those generally available to all other students as part of their enrollment with the University.


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Frequently Asked QuestionsClass Projects

Extracurricular Activities

Assigning to the University

Determining Ownership

Student Innovation |FAQs

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Assigning to the University

Determining Ownership


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CLASS PROJECTS


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Who owns an invention that a student develops in a for-credit course that the student is taking?

QUESTION

Answer on next slide…

CLASS PROJECTS


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Unless otherwise agreed to in writing, the intellectual property associated with that invention belongs to the student.

This is the case no matter who paid for the course (e.g., the student received a scholarship for the course).

ANSWER

CLASS PROJECTS

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Who owns the invention if an unpaid graduate student develops it as part of a thesis or a for-credit seminar having a research component?


CLASS PROJECTS

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Unless otherwise agreed to in writing, the intellectual property associated with that invention belongs to the student.

This is the case no matter who paid for the course (e.g., the student received a scholarship for the course).

ANSWER

CLASS PROJECTS

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Who owns an invention developed as part of a for-credit course involving a project that is either:

> Externally Sponsored, for example…• a project involving a problem

submitted by a company that includes confidential info, or

• a project funded by a company that wants to own or license the resulting IP

> or Internally Funded by the University?

Capstone courses or other real-world classroom experiential opportunities {

CLASS PROJECTS

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Absent other facts (e.g., a written agreement to the contrary), the student owns the IP.• Students are not required to/have a

choice whether to participate in a project or activity that requires licensing or assignment of his/her IP to the University or an outside party.

• A student’s grade and/or evaluations of performance in the course will not be affected by the student’s decision.


Faculty: Contact your TTO for appropriate forms.

ANSWER

CLASS PROJECTS

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What should a student/faculty member do if a sponsor asks the student to sign a non-disclosure and/or non-compete agreement?

QUESTION

CLASS PROJECTS

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Faculty: Contact your TTO for assistance.

> Students should carefully review the terms of any agreement prior to signing and may want to seek legal advice.

> Faculty members are encouraged, but not obligated, to refrain from permitting an external sponsor to ask students to sign over-reaching NDAs or non-compete provisions.

ANSWER

CLASS PROJECTS



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EXTRACURRICULAR ACTIVITIES

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An invention is developed by a student who works on a project to gain “real-world” experience:

• In a University lab• Without compensation• Outside of the classroom

(extracurricular)• On his/her own free time

Who owns the invention?

QUESTION


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Unless there is a written agreement to the contrary, the student owns the invention.

If the student is paid for the work involving research or investigation or the creation of computer software, the student is an “Employee” and the University may assert ownership.


ANSWER


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What happens if a student works in a University laboratory outside of class on his/her own free time to gain “real-world” experience and develops an invention, but the research being performed in the lab is federally funded?

QUESTION


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The faculty member should either:

• Ensure all students working on the

research are paid such that they are

“Employees” and will be required to

assign their rights to the University, or

• Ensure that any unpaid students enter into a written agreement with the University to be treated as an “Employee.”

Faculty: Contact your TTO for appropriate forms.

ANSWER


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What happens if a student works in a University laboratory outside of class on his/her own free time to gain “real-world” experience and develops an invention, but the research being performed in the lab is funded by an industry sponsor?

QUESTION


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Because the typical industry sponsored research agreement requires the University to grant certain IP rights to the sponsor, unpaid students should not work on such research without proper agreements in place.

ANSWER


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How should faculty members ensure that the University owns any inventions developed as part of government-funded or industry-sponsored research if a student works in the lab to gain “real-world” experience?

QUESTION


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Faculty should contact the TTO for appropriate forms.

ANSWER

The faculty member should either:

• Ensure all students working on the

research are paid such that they are

“Employees” and will be required to

assign their rights to the University, or

• Ensure that any unpaid students enter into a written agreement with the University to be treated as an “Employee.”



Extracurricular ActivitiesAssigning to the UniversityDetermining Ownership

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ASSIGNING TO THEUNIVERSITY

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If a student develops an invention that he/she owns, can the student voluntarily assign his/her rights to the University and be treated like an Employee?

QUESTION


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Yes. However, the University has the sole discretion to decide whether to accept such assignment.

ANSWER



Extracurricular ActivitiesAssigning to the UniversityDetermining Ownership

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DETERMINING OWNERSHIP

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Who decides whether the University will assert ownership in a student-developed invention?

QUESTION


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The University’s current practice is to vest this determination with the UM System Executive Vice President for Academic Affairs (EVPAA).

• The EVPAA considers the recommendation from the Director of the campus TTO.

• The campus TTO makes an initial ownership determination. If the TTO and student agree as to the ownership, a request for approval is sent to the EVPAA.

ANSWER


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However, in the event of an ownership dispute, the matter will be referred as shown on the following slide.


ANSWER


The University of Missouri System President will make the final determination.

President

The Patent Committee will make a recommendation to the UM President

Patent Committee


If agreement is not reached, the matter will be referred to the Patent Committee

PatentAdministrat

or

If agreement is not reached, the matter will be referred to the Patent Administrator

Campus TTO


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How can a request be made for the University to make an express determination that it will not assert ownership in an invention developed by a student?


QUESTION


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The student may fill out a request form that is available from the campus technology transfer office (TTO).

ANSWER


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Student Innovation |Test Your Knowledge

It’s Time to Test Your

Knowledge!

A STUDENT and a RESIDENT ADVISOR (a student

who is paid by the University) jointly invent a new

bunk bed design working in the STUDENT’S dorm.


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QUESTION 1Student Innovation |Test Your Knowledge

A B C D

The STUDENT

only

The STUDENT

& the RESIDENT ADVISOR

The UNIVERSI

TY

The UNIVERSIT

Y, STUDENT

& RESIDENT ADVISOR

Question 1

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ANSWER 1Student Innovation |Test Your Knowledge

A STUDENT and a RESIDENT ADVISOR (a student

who is paid by the University) jointly invent a new

bunk bed design working in the STUDENT’S dorm.


A B C D

The STUDENT

only

The STUDENT

& the RESIDENT ADVISOR

The UNIVERSI

TY

The UNIVERSIT

Y, STUDENT

& RESIDENT ADVISOR

Answer 1

A B C D

As part of a medicinal chemistry lab course, a STUDENT independently creates a novel chemical compound useful in treating Multiple Sclerosis.

The STUDENT’s research is not directed by his medicinal chemistry PROFESSOR. However, sometimes the STUDENT seeks guidance from this PROFESSOR, who does research in that area, in connection with research methodology.


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The STUDENT

The STUDENT and the

PROFESSOR

The UNIVERSI

TY

The UNIVERSI

TY and the

STUDENT

None of these

answers is correct

E

Question 2

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The STUDENT

The STUDENT and the

PROFESSOR

The UNIVERSI

TY

The UNIVERSI

TY and the

STUDENT

None of these

answers is correct

A

As part of a medicinal chemistry lab course, a STUDENT independently creates a novel chemical compound useful in treating Multiple Sclerosis.

The STUDENT’s research is not directed by his medicinal chemistry PROFESSOR. However, sometimes the STUDENT seeks guidance from this PROFESSOR, who does research in that area, in connection with research methodology.

Who owns the invention?B C D E

Answer 2

As a result of a medicinal chemistry lab course, a STUDENT and her medicinal chemistry PROFESSOR, who does research in that area, jointly invent a novel chemical compound useful in treating a herpes virus.


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A B C D

The STUDENT

The STUDENT and the

PROFESSOR

The UNIVERSI

TY

The UNIVERSI

TY and the

STUDENT

None of these

answers is correct

E

Question 3

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A B C D

The STUDENT

The STUDENT and the

PROFESSOR

The UNIVERSI

TY

The UNIVERSI

TY and the

STUDENT

None of these

answers is correct

E

As a result of a medicinal chemistry lab course, a STUDENT and their medicinal chemistry PROFESSOR, who does research in that area, jointly invent a novel chemical compound useful in treating a herpes virus.


Answer 3

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A B C D

Contact the

campus TTO as early as possible

Give all students

enrolled in the capstone class the option to participate either in Company

ABC’s project or in another

project

Obtain written agreements

from all students

participating in Company

ABC’s project regarding invention ownership

All of these

answers are

correct

A STUDENT is enrolled in an engineering capstone class. Company ABC wants the students in that class to develop and test a new concrete formula. Company ABC provides $50k to the University to help develop the formula under an agreement with the University. What should the faculty member do?

Question 4

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Contact the

campus TTO as early as possible

Give all students

enrolled in the capstone class the option to participate either in Company

ABC’s project or in another

project

Obtain written agreements

from all students

participating in Company

ABC’s project regarding invention ownership

All of these

answers are

correct

A STUDENT is enrolled in an engineering capstone class. Company ABC wants the students in that class to develop and test a new concrete formula. Company ABC provides $50k to the University to help develop the formula under an agreement with the University. What should the faculty member do?

A B C D

Answer 4

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A B C D

Have the University hire the

STUDENT to perform

the research

Obtain a written

agreement from the STUDENT so that the STUDENT is

treated like an “Employee” under the

Patent Policy

Neither answer A

nor answer B

Either answer A or answer

B

A FACULTY MEMBER is synthesizing new chemical compounds for treating Multiple Sclerosis with funding from the NIH. The FACULTY MEMBER invites an undergraduate STUDENT to observe and work on the project outside of class.

What should the faculty member do?

Question 5

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A B C D

Have the University hire the

STUDENT to perform

the research

Obtain a written

agreement from the STUDENT so that the STUDENT is

treated like an “Employee” under the

Patent Policy

Neither answer A

nor answer B

Either answer A or answer

B

A FACULTY MEMBER is synthesizing new chemical compounds for treating Multiple Sclerosis with funding from the NIH. The FACULTY MEMBER invites an undergraduate STUDENT to observe and work on the project outside of class.

What should the faculty member do?

Answer 5

For More InformationCampus Technology Transfer Offices (TTOs)

Links to More Information

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Student Innovation |For More Information

Campus Technology Transfer Offices (TTOs) Intro

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University of Missouri–ColumbiaOffice of Technology Management & Industry Relations1601 S. Providence Road, suite 124Columbia, MO 65211Director: Chris Fender [email protected]

Missouri University of Science & TechnologyOffice of Technology Transfer and Economic Development900 Innovation Drive, Suite 145Rolla, MO 6540Director: Keith Strassner [email protected]

CAMPUS TTOsStudent Innovation |For More Information

mailto:[email protected]






Campus Technology Transfer Offices (TTOs) Intro

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University of Missouri–Kansas CityOffice of Technology Transfer4747 Troost Ave., Room 120Kansas City, MO 64110Director: James Brazeal [email protected]

University of Missouri–St. LouisOffice of Technology Transfer and Economic Development341 Woods Hall, 1 University Blvd.St. Louis, MO 63121Director: Tamara Wilgers [email protected]

CAMPUS TTOsStudent Innovation |For More Information





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> UM Patent Policyumsystem.edu/ums/rules/collected_rules/business/ch100/100.020_patent_and_plant_variety_regulations

> IP Ownership Guidelines and FAQsumsystem.edu/ums/aa/oipa/studentip-faqs

LINKS TO MORE INFOStudent Innovation |For More Information

Links to More Information

http://www.umsystem.edu/ums/rules/collected_rules/business/ch100/100.020_patent_and_plant_variety_regulations




http://www.umsystem.edu/ums/aa/oipa/studentip-faqs




Thank You!

NOTE: The information provided herein is designed to assist with questions about intellectual property for student-developed inventions but it is not a substitute for the university’s Collected Rules & Regulations. The Collected Rules & Regulations supersedes any interpretations given herein.

University of Missouri SystemColumbia | Kansas City | Rolla | St. Louis

student innovation | ownership of student developed inventions at um

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