In this module, you will explore the following aspects of intellectual property:
The module consists of:
Intellectual property is an umbrella term for the intangible products of creative effort. Examples include:
Like tangible real or personal property, intellectual property may be bought, sold, or leased.
Universities have obligations to funders that require protection of intellectual property, regardless of whether the funder is the federal government, New Hampshire or another state government, a non-profit foundation, or any other entity that provides funding for research. Increasingly, sponsors are looking for viable pathways to translate the results of research into products and services that provide public benefit and view intellectual property protection as a necessary component of any such pathway.
Beyond funding obligations, protection of intellectual property is often necessary to move a collaboration forward as each collaborator's rights in existing and future intellectual property are defined. Intellectual property protection can also provide a mechanism for a university to ensure that works distributed beyond campus maintain fidelity to the underlying research.
Intellectual property protection is critical to the process of developing research into a product or service that provides public benefit and impact. Without intellectual property protection, it is extremely difficult to impossible to attract the investment needed to translate early-stage innovations made at a university into products and services that can be provided to the public.
Different forms of intellectual property may be protected in different ways. Some types of intellectual property are protectable under formal legal rights. Examples of formal intellectual property rights described in this module are:
A patent for an invention is a time-limited monopoly right granted by a government. In the United States (US), patents are granted at the federal level and are handled through the United States Patent and Trademark Office (USPTO).
There are also regional patent offices, such as the European Patent Office, the Eurasian Patent Organization, the African Regional Intellectual Property Organization, and the African Intellectual Property Organization, as well as the Patent Cooperation Treaty (PCT), an international patent system administered through the World Intellectual Property Organization (WIPYO).
In exchange for the grant of the monopoly right, an applicant for a patent must disclose how to make and use the invention in sufficient detail such that upon reading the patent, a person of ordinary skill in the relevant art would be able to make and use the invention without undue experimentation.
A patent is not an affirmative right; rather, a patent allows the patent holder to exclude others from making, using, selling, offering for sale, and importing the patented invention within the territory of the patent. For example, a US patent provides the right to exclude others within the US only. Therefore patents are considered to be a defensive right because of this exclusion.
The standard for inventorship is set by US federal law. In order to be listed as an inventor on a patent, one must have conceived of some aspect of the invention as it is described in the claims. It is important to note that inventorship on a patent is very different from academic authorship property standards.
To obtain a US patent, an invention must be patent-eligible subject matter, useful, novel, and non-obvious. Patent-eligible subject matter includes compositions of matter, materials, chemicals, peptides, formulations, delivery mechanisms, devices, machines, processes, and methods of use.
Patent-ineligible subject matter includes laws of nature, physical phenomena, and abstract ideas. Anything occurring naturally, such as mathematical formulae or newly discovered species, is considered to be patent ineligible. In recent years, the US Supreme Court has issued a number of rulings regarding patent-eligible subject matter and has greatly restricted patent eligibility for isolated genetic material, biomarkers, antibodies, and software.
Usefulness, or utility, is typically the easiest of the patent requirements to meet. An invention is useful if it provides an identifiable benefit and is capable of use. Most patent applications are not rejected as lacking utility. Generally, the utility requirement prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.
An invention is novel if it is not known to the public anywhere in the world prior to the filing date of the patent application. In the United States, there is a one-year grace period to file a patent application after public disclosure of an invention, and so an invention will be considered novel in the US if it is not known to the public prior to one year before the filing date of the patent application.
The non-obviousness requirement means that the claimed invention must not be obvious to a person of ordinary skill in the relevant art. According to 35 U.S.C. §103, as amended by the America Invents Act (AIA), a patent may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention.
In the US, there are different types of patents:
Plant patents are for invented or discovered and asexually reproduced distinct and new varieties of plants.
Utility patents are for new and useful processes, machines, articles of manufacture, or compositions of matter, or any new useful improvement thereof. Utility patents are the most common types of patents filed in the US and make up the vast majority of UNH's patent portfolio.
Design patents cover the ornamental design of an object having practical utility and are subject to the same standards of novelty and non-obviousness as utility patents.
Generally, a utility patent protects the composition and/or function of an object, while a design patent protects the way the object looks. It is possible to pursue both a utility patent and design patent for the same invention; however, each patent type protects different aspects of the invention.
At UNH, individuals who wish to seek patent protection should file an innovation disclosure with UNHInnovation (UNHI).
UNHI strongly urges innovators to file innovation disclosures early in the course of their research project. With the AIA in effect as of March 16, 2013, patent applications must be filed before the innovator publishes, presents, or even has a discussion with anyone outside of UNH, with limited exceptions. Otherwise, the ability to seek patent protection may be forfeited outside of the US.
Preprints, open access journals, and publication of manuscripts online ahead of peer review are considered to be public disclosures that impact patent protection. Note that UNHI does not require manuscripts to be submitted for review ahead of publication. It is the obligation of the innovator to determine whether disclosure is required under the UNH Intellectual Property Policy.
Patents granted to UNH include:
A trademark is legal protection granted for a word, name, symbol or device used to distinguish one entity’s goods or services from those of others through federal registration.
Only “distinctive” words, phrases, logos, domain names, graphic symbols, slogans or other devices that are unique enough to help customers recognize the source of a particular product in the marketplace may be trademarked.
The purpose of trademarks is to make it clear where a good or a service comes from. This helps eliminate consumer confusion, prevent counterfeiting, and helps build consumer trust and confidence in the quality of the goods or services that come from the trademark holder.
Without trademarks, there could be multiple soda beverages on the market called "Coca-Cola" using similar packaging. Consumers benefit from trademarks because they clearly know who is making their goods/performing services and companies/individuals benefit from having legal rights to protect their reputations. Over time, as consumer trust grows in goods/services under a trademark, the trademark itself acquires value as part of the brand.
A registered trademark confers a bundle of rights upon the registered owner, including:
While a trademark prevents others from using a similar mark which could confuse consumers, it does not prevent others from creating similar goods or services. This is why both The North Face and Columbia can have nearly identical coats on the market; their trademarks only prevent others, like counterfeiters, from using their names.
One may decide to register a trademark to protect and promote the unique identity of a good or service and to create real or perceived value of a good or service.
Registering a trademark is appropriate when the provider of the goods/services is engaged in commercial activity that crosses state lines. To successfully register a trademark, there must be proof of use in commerce.
Provisional Marks (™ or ℠)
An entity can indicate their interest in filing a trademark in the future with a provisional mark, prior to registration. This is appropriate for an entity that plans to perform a service or provide goods in commerce across state lines but needs more time to get there. A provisional mark informs both consumers and competitors that a good or service is considered a protected asset by the producer, but without costing the producer any up-front investment. If you see goods or services on the market with a ™ or ℠, it means the producing company has not yet registered a trademark, but they plan to.
Registered Marks
The ® symbol is used when a trademark is officially registered at the USPTO. Examples of trademarks include: Coca-Cola®, McDonald’s®, University of New Hampshire®, and UNH®.
While there is a distinction between provisional service marks (℠) and provisional trademarks (™), any fully registered mark will display the ®.
UNHI is a global leader in protecting work that traditionally falls outside of patentability, such as works of authorship and software. When such works have commercial potential and would benefit from protection, UNHI may recommend a trademark as part of the overall strategy to leverage and protect that work. At UNH, individuals who wish to pursue trademark registration should contact UNHI to learn more about trademark strategy or to discuss their works as potential candidates for this kind of protection.
UNH has a wide portfolio of trademark protected works, such as:
Copyright is the federal legal protection granted for works of authorship under the US Constitution. Authors of original creative works “fixed in a tangible medium of expression” are automatically vested with a bundle of rights in those works.
Copyright protection covers published and unpublished literary, scientific, and artistic works, whatever the form of expression, provided such works are fixed in a tangible or material form.
Copyright law in the US seeks to create a balance between the rights of creators of authored works as well as the interest of the public to access such works, such as for educational reasons. When a work's copyright expires or is relinquished, that work becomes part of the public domain, meaning it is free to be accessed and used by anyone for any reason.
Copyright in a work can be owned by the person who created the work or by an entity/company/organization/individual for whom the work was commissioned. Works in a strict set of categories made by an employee or an appropriately contracted individual can be deemed "Works for Hire." Whether a work is owned by its author or is deemed to be a work for hire matters because that status determines how long its copyright protections will last. Work-for-hire is allowable only for a specifically defined list of types of authored works under US law. When a work cannot be deemed work-for-hire, that work must be affirmatively assigned.
Copyright ownership at UNH is outlined in the UNH Intellectual Property Policy. Additional information about copyrights is available from UNHI. If there is confusion about who owns a copyright protectable work, the best course of action is disclosure to UNHI.
UNHI is also an excellent resource for UNH community members negotiating agreements that concern copyright, such as article and manuscript publication. The UNH Library also has significant expertise in publishing and open access.
Copyright means the legal ownership over a work that is protectable under copyright law in the same vein as legal ownership of any other kind of property, tangible or intangible.
Authorship means whoever originally created/authored the work. A person or entity can be an author and not own the copyright in a work, such as for a work for hire.
When copyright in a work is owned by someone other than the author, it is typical in some disciplines (though not required) to give the original author attribution, such as for works of literature. Attribution for authorship even persists in cases in which works have fallen into the public domain. For example, even though Jane Eyre has been in the public domain for 70+ years, Charlotte Bronte's name is still on its cover. In other cases, such as film or animation, artists may be one of hundreds of contributors to a work and receive attribution as part of streaming credits.
In certain academic disciplines, authorship and co-authorship have field-specialized conventions, such as the concept of "first author" on journal articles and manuscripts. These conventions are matters of academic decorum and are not considerations to determine ownership of copyright.
Copyright applies to works of authorship, which is a broad definition that includes many things, such as:
Copyright also applies to software code in some cases, and in other works, like websites and designs.
The following cannot be copyright protected:
There are certainly areas within US case law where copyright eligibility is a gray area. Contact UNHI if unsure whether a specific work is copyright protectable.
As copyright is automatic in the US, placing a notice of copyright on works is recommended but not required. Recognized forms of copyright notice are:
Copyright notices can be placed in tandem with an author by-line or any notices of funding as required by a sponsor.
Copyright owners can also register work with the US Copyright Office. Registering a work is primarily important for works with commercial value or high likelihood of infringement, and in cases where litigation is anticipated.
UNH community members who create works of authorship that may have commercial potential, or may benefit from intellectual property protection strategy, should file a copyright disclosure with UNHI.
Works created at UNH using federal funding can be owned by UNH. Such works must be disclosed.
UNHI recommends disclosure in cases of uncertainty. Note that UNH faculty-authored books/scholarship generally do not require disclosure unless there are special circumstances, such as a direct request from a department for a specific work to be copyrighted. Contact UNHI at any time with inquiries.
UNH has registered several works with the US Copyright Office, including lab manuals, images and image collections, software, and designs, among others. Many of these copyright protected works have had broad impacts, such as the Lotte Jacobi Collection, whose images have been published in magazines, news outlets, manuscripts, and displayed in museums worldwide.
Works in the public domain are not eligible for copyright protection. This includes federal documents and publications and works whose copyright owners have placed the work in the public domain. Such works are available for use by anyone, as are works where the copyright protection is no longer in effect (terminated or expired).
Although some items on the internet are in the public domain, most are protected by copyright law. When seeking to publish material, whether in a manuscript, on a website, or even on social media, it is essential that UNH community members have proper rights clearances to use content, including text and images. Vigilance by UNH community members and enforcing a culture of asking for permission before publication is the best way to protect the community, especially students. UNHI and the UNH Library are resources for copyright clearances.
Sometimes copyright holders make works available under Creative Commons or other open-source licenses. These works may be of intrigue when it comes to creating classroom materials. Faculty should use caution, however, when using materials that are available under Creative Commons or other open-source licenses, as there are copyright and potentially other forms of intellectual property implications related to use of these works. Contact UNHI to learn the requirements of a particular Creative Commons or other open-source license.
"Fair use" is a doctrine under copyright law that permits certain limited reproduction of copyrighted works for educational or research purposes without the permission of the copyright holder.
Not all copying or reproductions by an educational institution qualify as fair use, and it is important to note that claiming "fair use" is a defense to copyright infringement and not a permission; "fair use" can be only determined in a court setting.
There are four factors a court uses when determining fair use:
For individuals who teach, fair use is important to keep in mind when making judgements like sharing external resources in the classroom or helping students prepare presentations. Using works within a classroom setting for teaching and learning is generally considered low risk if that use weighs on the side of noncommercial, transformative, factual, limited, and not doing harm to the copyright holder.
Because fair use doctrines specifically call out educational use, there have been many questions over the years by educators about what is permissible regarding use of copyrighted materials in the classroom. In response, the US Congress created guidelines for educational and research use of copyrighted materials notably including its Circular 21, "Reproduction of Copyrighted Works be Educators and Librarians".
Educators may find the "Classroom Guidelines," based on that circular helpful. This resource summarizes guidance to help educators interpret the fair use provisions relating to classroom copying for educational use; however, they are not a part of copyright legislation and are not legally binding. Contact the UNH Library or UNHI with questions about copyright in the classroom.
The following are resources for copyright issues:
UNHI supports UNH's mission of education, research, and outreach. UNHI protects, manages, and commercializes UNH intellectual property, which includes copyrights, trademarks, patents, know-how, data sets, software, and more. UNH values its intellectual property to increase investments in sustainable research capacity.
UNH views managing intellectual property as a way to ensure that the fidelity of the work of its innovators is maintained and provides pathways to create benefit from the impacts of university research.
Universities can own and manage their intellectual property created using federal funding after passage of the Bayh-Dole Act in 1980. The purpose of the legislation was to encourage utilization of inventions produced under federal funding. Since its passage, the Bayh-Dole Act has enabled over $1.3 trillion to the US gross industrial output, and more than 380,000 inventions have been disclosed to research institutions. The implications for public good under this Act are far reaching and beneficial to our society.
At UNH, UNHI is the office responsible for managing the institution’s intellectual property.
UNHI protects, manages, leverages, and commercializes UNH’s intellectual property complementing traditional academic pursuits of publishing and open dissemination of research results. Further, UNHI:
The UNH Intellectual Property Policy outlines the obligations and rights of each stakeholder concerning intellectual property developed at UNH. Stakeholders include the university, faculty, staff, and students. UNHI, together with the UNH Office of the Senior Vice Provost for Research, Economic Engagement, and Outreach (SVPREEO), administers the Intellectual Property Policy.
The UNH Intellectual Property Policy applies to 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 UNH involved in carrying out the university’s mission at or under the auspices of UNH. Each member of the UNH community above is defined as a “Covered Individual” in the UNH Intellectual Property Policy.
The UNH Intellectual Property Policy applies regardless of how the research/scholarly activity is funded.
All UNH faculty, visiting faculty or other visitors using research facilities; postdoctoral employees or fellows; graduate students and undergraduate students participating in sponsored research as employees or otherwise; and all salaried employees must execute an Acknowledgement of Intellectual Property Policy and Assignment as a condition of employment, participation in sponsored research, or use of UNH resources.
This acknowledgement confirms the assignment of intellectual property made in the course of employment at UNH, from work directly related to employment responsibilities at UNH, or from work carried out on UNH time or at UNH expense, or with use of UNH resources under grants or otherwise, to UNH.
Intellectual property is defined in the UNH Intellectual Property Policy as:
It is the obligation of each Covered Individual who makes intellectual property to disclose that intellectual property to UNHI. It is also highly recommended under the UNH Intellectual Property Policy that disclosure to UNHI is made prior to any public presentation, performance, or publication of the intellectual property.
Failure to disclose intellectual property in a timely manner may result in loss of rights and subsequent commercial potential, as well as noncompliance with federal regulations.
The UNH Intellectual Property Policy outlines ownership property of intellectual property, depending on the circumstances under which work is made and by whom. When intellectual property is made using UNH resources, or in course of an individual's duties at UNH, the intellectual property is owned by UNH. Section 6 of the UNH Intellectual Property Policy details the prevailing conditions for UNH ownership. Upon disclosure, UNHI will determine ownership of the disclosed innovation.
If UNHI determines that UNH does not own the intellectual property created by the Covered Individual, UNHI will memorialize the Covered Individual's ownership of the intellectual property.
In some cases, works by Covered Individuals are covered by the Exempted Scholarly Works provision of the UNH Intellectual Property Policy. In such cases, UNH waives its ownership interest to the author in recognition of their status as traditinoal academic outputs. UNH, however, reserves a non-exclusive, irrevocable, royalty-free right to use Exempted Scholarly Works for educational or research purposes.
Typical examples of Exempted Scholarly Works include, but are not limited to:
Note that under the UNH Intellectual Property Policy, students own work that they produce as part of their coursework, unless they are funded under a grant or another prevailing condition under the policy applies. It is important for faculty and staff to secure permission from students before leveraging their work in the future.
UNHI can help answer questions about Exempted Scholarly Works and use of student-owned work.
Covered Individuals engaged in projects from which any intellectual property is likely to arise must keep records consistent with the UNH Policy on Ownership, Management, and Sharing of Research Data. Once intellectual property has been created, or is likely to arise, a Covered Individual must report to UNHI by filing an innovation disclosure form, whether the Covered Individual believes UNH has a direct interest. As required by federal law, all innovations funded wholly or in part by the federal government must be disclosed promptly.
Failure to disclose intellectual property in a timely manner may result in loss of rights and subsequent commercial potential, as well as noncompliance with federal regulations.
UNH commercializes intellectual property through license agreements, usually with companies, but in some cases with individuals or other institutions. These license agreements outline how UNH will be compensated for the use of its intellectual property. Net Income received from the commercialization of intellectual property is distributed as follows
UNHI administers the distribution of Net Income in accordance with the UNH Intellectual Property Policy.
In the event of disputes about rights and/or equities, UNHI reports such disputes in writing to the SVPREEO. The SVPREEO appoints a four-person ad hoc review committee to review the disputes and to recommend an agreement, which remains in effect unless there is a further appeal.
In the event of further appeals, the committee presents the case to the UNH President whose decision is final and binding upon all parties (except for faculty who are members of the UNH AAUP collective bargaining unit).
UNHI evaluates each innovation disclosure to determine ownership as well as intellectual property and commercial potential and strategy. UNHI's goal for each innovation that it owns is to develop a strategy to ensure utilization of intellectual property for the public good and to expedite the innovation's development and transfer.
Ownership is the first determination UNHI investigates upon receiving a disclosure. If UNHI determines that UNH does not have an interest in the innovation, it is released to the appropriate owner (usually the innovator), and the case is closed. If UNH does have an ownership interest, additional investigation is done for both intellectual property protection and commercialization strategy.
Depending on the strategy determined for the disclosed innovation, UNHImay seek formal intellectual property protection, such as patent application, copyright registration, or trademark registration. UNHI makes these determinations on a case-by-case basis.
In some cases, formal intellectual property protection is not necessary for commercialization. For example, software often is commercialized without formal registration of patent or copyright. Plant varieties can also be commercialized without pursuing formal patent protection. The UNHCEMS software and the famous Brent Loy portfolio of cucurbits (squash family) are examples of such commercialization strategies in action.
1. A dissertation is only an academic publication so it does not matter who owns the copyright on the journal articles.
2. Authorship and copyright can be separate and distinct concepts.
3. Because the student is first author on the articles, he owns the copyright on the articles.
4. The student will own the copyright on the dissertation, so who owns the copyright on the journal articles is not a problem.
5. UNH will own the copyright on the dissertation so he needs to obtain copyright clearance from the journals.
1. At UNH, an instructor needs to seek written permission from students to use their class work for any purpose other than the intended classroom use.
2. At UNH, students own the rights to all their classwork.
3. The student can give the instructor permission to use his classwork and independently publish the work.
4. If students refuse to give an instructor permission to use their classwork, the instructor may consider that refusal when assigning grades.
5. UNH may use students’ classwork for educational or research purposes without obtaining permission from a student.
Click on the image below to see the case study that was presented at the beginning of this module.
Once you have finished all of the review questions click ’Certify Completion’.
