I. Values and Objectives
All Intellectual Property (IP) owned by New Mexico Institute of Mining and Technology
(New Mexico Tech; NMT) is assigned to the NMT Research Park Corporation (NMTRPC),
an entity created by New Mexico Tech under the New Mexico Research Park Act (21-28-1 NMSA 1978). The primary roles of the NMTPRC are, in conjunction with NMT, to develop
and to monetize IP generated on the NMT campus.
As such, the NMTRPC is therefore responsible for managing, patenting and/or licensing
of NMT-developed IP. The New Mexico Tech RPC is also responsible for spinoff companies
utilizing New Mexico Tech IP. The NMTRPC exists for the benefit of New Mexico Institute
of Mining and Technology and the State of New Mexico. As such, the core values of
the NMTRPC are:
- The New Mexico Tech Research Park Corporation recognizes and strongly supports the core importance of a campus research environment where creativity, innovation, and
entrepreneurship are encouraged and supported for all students, faculty, and staff.
- The New Mexico Tech Research Park Corporation values the independence of all NMT researchers in the pursuit of their endeavors.
- The New Mexico Tech Research Park Corporation is committed to development of intellectual property at New Mexico Tech that will benefit the State of New Mexico
and human society.
- The New Mexico Tech Research Park Corporation is committed to development of intellectual property that has the potential for financial benefit to the Institute
and campus innovators.
The NMTRPC recognizes the importance of funding in support of the core values listed
above. As such, the central objectives for development of intellectual property (IP)
at NMT are:
- Development of intellectual property, via patents, licenses, business startups, partnerships with outside (of NMT) individuals and firms, and combinations thereof that has the
potential to bring financial returns to the Institute and the campus-based sources
of the innovation(s).
- Use of NMT IP policies to preserve faculty and researcher intellectual independence
while fostering creativity and financial opportunities for the Institute and innovative
faculty, students, and staff.
- Use of the benefits of IP developed at NMT for the enhancement of the creative and entrepreneurial climate on campus.
What follows in this document is concerned with ownership of IP created on behalf
of and/or at NMT. As NMT-owned IP is assigned to the NMTRPC, when an inventor assigns
rights to NMT or NMT otherwise has ownership rights they are automatically assigned
to the NMTRPC.
II. Definitions
- “Associate” means any person who is a member of the faculty, staff or student body
of New Mexico Tech.
- “Student” means any full or part-time undergraduate or graduate student at New Mexico Tech.
- “Invention or Discovery” means creative ideas that could be reduced to written form,
whether patentable or patented, etc.
- “Inventor” means any associate or associates who participated in the development
of an invention.
- “Intellectual Property” means any work or invention protected by law under a patent, copyright, trademark, or trade secret. Only the patent and copyright categories are
covered here.
- “Patent Application” means a formal document describing and claiming rights to an
invention, which is formally filed with the United States Patent Office, or the Patent Office
of a foreign country.
- “Patent” means a document issued through the patent application process by the United
States Patent Office, or its counterpart in a foreign country.
- “Copyright” means the exclusive legal right, given to an originator or an assignee
to print, publish, perform, film, or record literary, artistic, or musical material, and to
authorize others to do the same. Registering a copyright with the US Copyright Office
may help in the enforcement of the copyright but is not needed to maintain copyright
protection.
- “Search” means to determine whether patentability is possible by researching prior publications and patents to ascertain if the invention is indeed a new idea.
- “Disclosure of Information” means disclosing ideas through publications, seminars, symposiums, oral representation in the classroom, or any other form of communication.
While publications can be of limited benefit to the researcher and/or inventor, such
publications can nullify future patent rights. Therefore, it is suggested that a careful
study of patent potential in foreign countries be made before considering publication.
- “Sponsor” means the person or entity providing funds for the research, i.e., federal
and state agencies; private-sponsored research, etc. Many private research contracts are written
such that patent rights belong to the sponsor. This also may be the case in many federal
and state research grants. Contracts should be carefully reviewed to determine who
benefits by inventions and/or patents.
- “Patent and Copyright Management Agent” means The New Mexico Tech Research Park Corporation, a non-profit corporation approved by action of the NMT Board of Regents.
- “Patent and Copyright Committee” means a committee appointed by the President from
the staff of the Institute to assist and advise the President and the NMT Research Park
Corporation concerning patents and copyrights. The committee shall investigate possible
patent or copyright value of disclosures made to the Center for Technology Commercialization,
and shall act in a general advisory capacity to the NMT Research Park Corporation.
- “Scholarly, Artistic, Literary, and Musical Works” in any medium are collectively
referred to as Scholarly/Artistic Works. This category includes all materials developed by students,
faculty, and staff of the University.
- “Substantial Use of New Mexico Tech Resources” consists of unreimbursed use of Institute human resources, laboratories, or computational facilities in a way that is important
for the creation or development of the intellectual property. Use of the NMT Library
or office space or other facilities available to the NMT Community does not constitute use of facilities
important for creation or development of IP. Use of facilities will be considered
“Substantial” if the outside-NMT cost of access to comparable facilities by the inventor
is in excess of $5,000 in year-2000 dollars (about $7,000 in 2017 dollars).
III. IP Policies
These policies are designed to provide guidance on ownership, protection, and – where
appropriate – monetization of Intellectual Property developed by NMT Associates and
Non- Associates on the NMT Campus.
Scholarly and/or Artistic Works
Copyrights to Scholarly/Artistic Works created at the University are owned by the
creators, with three exceptions:
Works created by pre-arranged contractual obligation with substantial directed investment
of University facilities or funds (exclusive of creators' salary). All rights in such
works are owned by the University. Works that capitalize on an affiliation with the
University by explicit labeling of the work to gain a market advantage, beyond the
noting of the creator's affiliation. All rights in such works are owned by the University.
Works created under a sponsored agreement that requires rights to be relinquished
to the sponsor.
Copyrightable material owned by the University must be disclosed to the New Mexico
Tech Center for Technology Commercialization (CTC).
Inventions Created by NMT Students
New Mexico Tech Students may determine ownership of any invention they have created
by answering the following Yes/No questions:
- Did the invention occur as part of a class and/or class assignment – including engineering design clinics? 2. Did the invention occur with substantial use of NMT
resources? 3. Did the invention occur as part of formal employment (as governed by
a graduate research or teaching assistant contract, student work authorization, or
being hired on an emergency basis)?
If the answer to question 1 is yes, and the answers to questions 2 and 3 are no, the
IP belongs to the student/creator. Note that creating an invention as part of a class
is not by itself a guarantee of student ownership. If the student utilizes substantial
NMT resources in development of the invention, NMT will own part of the invention
and will negotiate ownership shares with the student.
Furthermore, IP created as part of a class by a student employee, who then develops
the IP as part of their student employment will be partly owned by NMT subject to
ownership-share negotiations.
OR
If the answers all to all 3 questions are no, the IP belongs to the student/creator.
OTHERWISE the IP belongs to NMT via the RPC. See the section entitled Inventions Created
as Part of Faculty Member and/or Institute Employee NMT Employment.
Inventions Created Outside the Scope of a NMT Employment Contract
Inventions created by the NMT Faculty Member or NMT Employee are the property of the
creator if:
- The Invention is created in an area of business not covered by Faculty Member and/or NMT Employee’s affiliation agreement, is not in an area for which the Faculty
Member or NMT Employee receives Institute support, and is developed outside of normal
working hours as defined in the section entitled “Work Week and Hours”.
- Non-substantial NMT resources were used to develop the invention, and
- The Inventor discloses the invention to NMT.
Documentation about the development of the invention should be included in the disclosure
form. The NMT Patent Committee will make the final ownership decision within 30 days
of receipt of the disclosure form.
Inventions Created as Part of Faculty Member and/or Institute Employee NMT Employment
Patents and inventions resulting from work performed at the Institute, with Institute
funds, or Institute equipment and/or supplies shall be owned by New Mexico Tech Research
Park Corporation but may be assigned to the inventor at the NMT Research Park Corporation’s
sole discretion. Governmental, industrial or other projects, which have different
contractual patent clauses, will be treated accordingly. In the case where there is
negotiable ownership of patents and inventions resulting from governmental or industrial
projects and/or the possibility of assigning patent and inventions resulting from government or industrial projects,
such patents and inventions shall be assigned to and owned by the New Mexico Tech
Research Park Corporation.
The patent process (see Section IV below) essentially begins with the NMT Invention
Disclosure form. New Mexico Tech personnel should disclose all discoveries developed
as a result of work performed at the Institute or with Institute Funds or Institute
equipment and supplies.
If it is determined that the idea or invention is of small or no economic benefit,
the Center for Technology Commercialization, in consultation with the NMT Patent Committee
shall return the rights to the researcher who in turn may proceed with the patent
application at his/her own expense. The return of rights will come with the condition
that, if the inventor realizes financial benefits from the invention as a result of
omissions in or other issues with the disclosure, NMT will have the right to a share
of those benefits in the 20-25% range.
If, on the other hand, the creation appears to have commercial potential that could
benefit the Institute and the creator/inventor(s), the NMT internal patent process
will continue as shown in Figure 1 and briefly described below in the Process section
of this document.
NMT Inventors agree to assist NMT in preparation and execution of any documents that
must be prepared to evidence NMT’s ownership of any IP right that the inventor has
or will convey to NMT. The inventor also hereby agrees to assist NMT in the procurement
or defense of any IP right, for example, patents that arise from IP rights that the
inventor, through his or her affiliation with NMT, has or will assign to NMT.
Assignment of IP rights to NMT means that NMT will take full responsibility for development
of IP protection and marketing strategies, and will reasonably act to execute those
strategies. If NMT elects to either abandon protection and marketing of IP, or the
NMT Patent Committee (see below) in conjunction with the NMT Research Park Corporation
decides not to pursue protection and development of the IP, the rights to the Invention
will be returned to the Inventor(s).
As NMT Inventions are commercialized successfully, royalties and other directly-related
cash flows may accrue to the Research Park Corporation. The Research Park Corporation
will share net benefits of invention-related benefits with Inventors on an equal (50/50)
basis.
Inventions Created at NMT by Non-Associates
Inventions created at NMT, using NMT resources, by non-Associates belong to NMT. In
the case where non-associates working on IP at NMT are bound by provisions of IP agreements
with their employers (as in the case of non-NMT faculty working on campus as part
of a sabbatical at another university), it us the responsibility of the non-Associate
– in consultation with the NMT Center for Technology Commercialization – to resolve
any conflicts between this policy and their employer policy.
- Disclosure and Patent Evaluation and Application Process
The overall goal of the NMT Disclosure and Patent Evaluation and Application Process
is to provide NMT Associates with a transparent and defined path to protection and
possible monetization of NMT IP that they created. The overall approach to developing
patentable IP is to create invention disclosures that are broad in scope and also
detailed with regard to invention details. These will lead to broad patent applications
and/or licensing agreements that are attractive to potential commercialization partners.
Initialization: Steps One and Two: The steps in seeking a patent, which are summarized here, are also shown below in
Figure 1. They represent a road map that campus innovators and entrepreneurs can use.
The entire process starts with an idea (Step 1), which must then be described in a
coherent and organized way via a flowchart, design, or other method (this is called
“conception”, and is Step 2). In the case of biochemical discoveries, a prototype
compound or other substance must also be produced to complete this process.
Finalizing the Intent of the Parties and Formal Disclosure of Discovery (Steps Three
and Four):
Step Three: Statement of Intent Once an idea is conceptualized, an inventor may be interested in exploring protection
and commercial exploitation options for the potential invention. If that is the case,
the inventor should, via a short written correspondence, notify the NMT Center for
Technology Commercialization (CTC) of her/his intent to initiate protection and exploitation.
The CTC will respond in a timely fashion and may request additional information from
the creator/inventor.
Step Four: Invention Disclosure The disclosure of an invention to the CTC begins the intellectual property protection
process. The key question for the inventor and CTC at this point is: given the values
and objectives driving the IP-protection and commercialization process, does the invention/idea
have the potential to become valuable intellectual property for New Mexico Tech Research
Park Corporation? If the answer to this question is yes, then the CTC and Research
Park Corporation will proceed with the process. If the answer is no, then rights to
the invention shall be returned to the researcher as indicated above.
The formal disclosure of the invention should only occur after the innovation is specified
with regard to function and performance as well as design. The process of development
of the invention should be outlined, and the inventor should have a good initial idea of
potential future commercial uses of the invention. Inventions in this stage can be
discussed with CTC, and CTC will work with inventors to develop the most-informative
and useful (for future filings) disclosure possible.
This may result in an iterative and interactive process in which the inventor, the
CTC, and NMT’s patent lawyers are involved. The objective of this part of the process
is, as noted above, development of the most comprehensive and commercially-attractive
disclosure possible given the information at hand.
The New Mexico Tech Invention Disclosure Form is attached to this document as Appendix
A.
Steps to Assess Viability and Proceed with the Patent Evaluation (Steps Five - Eight)
Step Five: Assessment of Financial and Commercial Viability The CTC may conduct an assessment of the commercial viability of the invention. This
will be done in consultation with the inventor, and, depending on the nature of the
invention in question, may involve the following activities:
- Initial, preliminary patent search.
- Interviews with the inventor and the inventor’s research team to help understand advantages
vis-à-vis existing intellectual property and/or art.
- Preliminary conversations with potential commercialization partners.
- Preliminary conversations with potential customers to assess the potential initial
market for the invention.
If the assessment of financial and commercial viability of the disclosure is favorable,
the CTC may request a formal presentation to itself and/or the Patent and Copyright
Committee.
In order to have the best possible picture of the potential of an innovation, the
inventor should submit, in a separate document, a summary of a potential intellectual
property development strategy. The purpose of this document is twofold: first, the
contents of the document may be useful for the Patent and Copyright Committee and
the CTC in their evaluation of alternative strategies regarding the invention in question.
Second, this document will serve as the basis for an informal agreement between the
CTC and the inventor regarding potential courses of action to realize benefits for
both New Mexico Tech Research Park Corporation and the inventor. Items to address
in the intellectual property development strategy document might include, but may
not be limited to:
Type of Initial Patent Filing: A wide range of initial filing opportunities exist.
The Research Park Corporation, in consultation with the CTC and with the inventor(s),
may elect to initially file a relatively simple provisional patent, an approach with
relatively low cost. The Research Park Corporation may instead elect to opt for a
very detailed provisional that is filed with possible changes and additions (and additional
disclosure forms) associated with the invention. The Research Park Corporation may
also elect to immediately file a utility patent, likely the most costly alternative,
if the invention has proven, documented capabilities that need to be protected along
with the invention itself. Detail about the Value Proposition Associated with the
Invention: Section 2d of the disclosure form (attached as Appendix A) is concerned
with eventual marketability of the intellectual property disclosed in the form. As
a supplement to this information, general information about why the proposed invention
would add value for a potential customer, licensee, buyer, partner, or any other individual
or entity should be provided. Plans for Further Development of the Innovation that
May Require Protection: Many inventions are the basis for additional creative work.
Some of the work grounded in protected intellectual property may have the potential
for commercialization and therefore may require additional protection. The inventor
should disclose prospective “children” of the current invention so that the CTC, in
conjunction with the inventor, may formulate an initial strategy for protecting and
monetizing the innovation.
Step Six: Evaluation of the Disclosure Form by the NMT Patent and Copyright Committee
New Mexico Tech has a Patent and Copyright Committee whose role is evaluation of disclosure
forms and making recommendations to the CTC and Research Park Corporation with regard
to the disclosures. The Patent and Copyright Committee, which meets as needed on an
ad-hoc basis, may ask inventors for clarifications or other information to assist
with their disclosure evaluations.
Members of the NMT Patent and Copyright Committee are appointed by the Institute President.
Currently (as of October, 2017), Membership of this committee is as follows:
- The NMT Associate Vice President for Academic Affairs
- The Executive Director of the NMT Center for Technology Commercialization
- The NMT Vice President for Research and Economic Development
- One member from the New Mexico Tech Research Park Corporation
Step Seven: Evaluation of the Disclosure Form and Final Decision by the NMT Research
Park Corporation
Once the NMT Patent and Copyright Committee has issued an opinion, the final decision
to proceed with a patent prosecution will be made by the Research Park Corporation.
The Research Park Corporation, via email and/or at periodic meetings, will deal with
issues such as the relative merits of different innovations that are candidates for
patent prosecution (including prioritization of prosecutions in light of budgetary
constraints), the timing of the initiation of the process, and the impact of the disclosed
innovation on the New Mexico Tech Research Park Corporation intellectual property
portfolio. In the event that New Mexico Tech Research Park Corporation decides not
to pursue prosecution of a patent, the inventor will have the opportunity to take
full ownership of the invention in the manner described above in this document. Full
ownership means that New Mexico Tech will not be involved in any aspect of financing
or commercializing the invention.
All decisions will be made in a timely fashion, and inventors will be kept informed
about the approval process.
Step Eight: Begin Process of Prosecuting the Patent and Commercialization of the Intellectual
Property Once the appropriate protection measures are either taken or initialized, implementation
of the intellectual property development strategy can begin. This may involve many
different, technology-specific activities. Actions taken should reflect the initial
Value Proposition, which should also drive development of a Business Model for the
invention – essentially, an argument summarizing how value for a potential customer,
user, licensee, buyer, or partner will turn into revenues for both the inventor and
New Mexico Tech.
This critical process will be dynamic and ongoing, and it is critical that commercialization
efforts begin as early in the intellectual property protection process as possible
and feature input from inventors, subject-matter experts, the New Mexico Tech Research
Park Corporation Legal Team (as necessary), and the Center for Technology Commercialization.
The key point is that at this stage, the invention becomes part of the NMT Research
Park Corporation intellectual property portfolio, and the New Mexico Tech will, with
creator/inventor input, manage the process of development of the intellectual property
into a beneficial entity.
Figure 1. A general outline of the New Mexico Tech Patent Process for internally-generated innovations.
Solid arrows represent summaries of sequential steps in a successful patent process,
and dashed lines represent sources of input to the process. Note the importance of
market information throughout the process.
V. Dispute Resolution
Disputes will be resolved in accordance with existing NMT Policy.
VI. Effective Date
This Policy will be effective upon ratification by the NMT Board of Regents.
VII. Amendments to NMT IP Policy
Amendments to this policy may be made from time to time in accordance with the NMT
Policy on Policies.
Three student teams tackled exciting new projects in 2014. These projects come from
across the STEM spectrum, pulling from Biology, Chemistry, Computer Science, and Materials
Engineering. Each project is in a different stage of commercialization.