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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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