Research Administration and Development

USM Intellectual Property Patent Policy & Procedure

1)      Inventor files a New Invention Notification (NIN) Form.

2)      Prior Art search analysis supplied by the Office of Research Administration & Development if needed.

3)      Application is forwarded to Patent Review Committee (composed of scientists and community members) for recommendation

  1. University decides whether or not to release IP back to inventor
  2. University decides whether or not to file a provisional application
    1. This requires an MOU between the university and the inventor detailing the work needed to be done to file a full application
    2. If no licensee after one year then the university with either release the invention back to the inventor or decide to retain the invention with or without continued patenting.
    3. Decision to file a provisional patent reviewed by Patent Review Committee based on:
      1. Benefits to the public
      2. Percent of ownership/ ownership rights
      3. Market analysis
      4. Other claims to technology
      5. Federal funding
      6. Intentions of faculty member (remaining at university, continuing to work on invention)
      7. Potential licensee
      8. Potential revenue generation for university
      9. Other relevant factors

4)      Recommendation forwarded to Association Provost for Graduate Studies and Research, Scholarship and Creative Activity.

5)      Recommendation for approval – Inventor works with resources recommended by the Office of Research Administration & Development to file a provisional application

  1. Origination department pays fees
  2. Royalty account reimburses department

6)      Recommendation for denial – Inventor may request in writing for university to release the invention; university sends official letter of release.  University retains a worldwide, fully paid up non-commercial license for research, teaching, and educational purposes.