University of Maryland
Consolidated USMH & UMCP Policies and Procedures Manual
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IV-3.00(A) UMCP PROCEDURES ON PATENT AND TECHNOLOGY TRANSFER
 
                 APPROVED BY THE PRESIDENT 1 AUGUST 1991
 
  I.  Introduction
 
      The University of Maryland at College Park follows Board of
      Regents Policy IV-3.00, Policy on Patents dated May 31, 1990.
      In order to encourage the disclosure of inventions and
      discoveries and to assist inventors, UMCP has established the
      Office of Technology Liaison (OTL).  OTL acts as a liaison
      between UMCP researchers, patent attorneys, agents and
      corporations.  OTL safeguards the interests of the University
      and its personnel in matters relating to intellectual
      property, and enforces the Board of Regents Policy.
 
  II. Procedures
 
      A.    Disclosure Form
 
       When a new invention is identified, the first action taken
       is for the inventor, sometimes with the assistance of OTL,
       to prepare and submit to OTL an invention disclosure on a
       form entitled "Disclosing an Invention."
 
       B.   Recording
 
       When a completed disclosure form is received by OTL, it is
       assigned an invention disclosure number and entered into the
       internal office database system.  The system monitors the
       status of each disclosure, records marketing and licensing
       information, produces invoices to send to licensees, and
       records the collection and distribution of royalties
       collected.
 
      C.    Assessment
 
       OTL staff assess the disclosure's technical and market
       potential and study market need and level of market activity
       in relevant subject areas.  The assessment of various types
       of technology is undertaken by OTL, including intellectual
       property (inventions, patentable and unpatentable), tangible
       research materials (e.g., monoclonal antibodies) and
       software (if patentable; if not patentable, software is
       covered under copyright policy).  OTL performs the following
       assessment tasks:
 
            1.   A search for similar disclosures or existing
                 patents is performed.
       2.   A literature search to establish potential need and
            uniqueness is conducted.
       3.   An Executive Summary describing the disclosure's
            features and potential applications is prepared for
            review by the inventor.
       4.   In most cases, a patent attorney specializing in the
            particular technology area is asked to do a patent
            search and opinion on patentability.
       5.   When a patent is appropriate, OTL coordinates the
            preparation of the patent application and seeks the
            assistance of a patent attorney.
 
      D.    Marketing
 
       OTL staff are very active in targeting inventions and
       discoveries to companies interested in licensing new
       technology.  The OTL performs the following marketing tasks:
 
            1.   OTL staff develop a list, from the OTL database
                 and other resources, of companies with potential
                 interest in licensing the disclosure.
            2.   A letter, with Executive Summary, is sent to all
                 potentially interested companies.
            3.   Companies that express interest receive a
                 confidentiality agreement prepared by OTL staff,
                 and are contacted directly by OTL.
            4.   If needed, OTL, with inventor assistance, prepares
                 a technical package for interested companies.
 
      E.    Licensing
 
       As a result of successful technology marketing campaigns,
       OTL engages in licensing negotiations with one or more
       companies interested in further development, manufacturing
       and sale of products.
 
       F.   Costs
 
       Costs associated with patenting, marketing, and licensing
       are paid by OTL.  OTL may be reimbursed for these expenses
       according to Patent Policy.
 
       G.   Revenue Sharing
 
       OTL assures that all revenue received from licensing
       activities is properly distributed to the inventors and
       their departments through the standard University practices,
       and according to the Board of Regents Patent Policy.
 
       Revenue includes: up-front payments; technology purchases;
       option fees; minimum annual licensing fees; technology
       transfer fees; technology development payments; and
       royalties.
 
 
 

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