Policies and Forms
Who’s property is it?
The University of Puerto Rico receives the gross income that is generated from the patents and its respective commercialization through the Vice President’s Office, which has overall responsibility for interpreting the IP Policy, and resolving questions and disputes concerning it.
Under UPR’s policy (Cert. 132, 2002-03) the University owns IP that is generated through research conducted with the use of its facilities and resources. This University-wide policy applies to all investigators who use UPR facilities or resources or who participate in university research and develop intellectual property. This includes all full- and part-time faculty and staff; students who participate in research and us UPR facilities; research fellows; and visitors to UPR’s faculties and schools from other universities or collaborators from industry.
All royalties and most fees resulting from the IP are shared between UPR and the individuals involved in its discovery. Ownership of the intellectual property is divided in the following manner: 33 1/3% of the IP is owned by the inventor(s), 56 2/3% of the IP is owned by the inventor’s UPR unit(s), 10% of the IP is owned by the UPR special fund and any remaining amount will be used to support additional research and academic programs.
Who decides what gets protected?
At the University of Puerto Rico the Vice President for Research and Technology makes the final decision as to whether to file a patent application or seek another form of protection. The vice president relies on the recommendations made by the patent attorney or patent agent, the UPR Office of Intellectual Property and Commercialization and IP-TTO (in the case of UPRM inventions).
Inventions developed through independent work
The inventions developed by UPR’s employees or students that result from research or work developed:
1) During free time (not work related)
2) Away from the work place in the University
3) Without the use of university funds, installations or other university resources
Shall be property of the individual employee or student and will not have to abide by the university’s policy unless the individual willingly yields the property to the university through an accord from both parties.
All such individuals that are interested in developing their own inventions independent of the university has the responsibility to present a declaration of their intent to the university before developing such inventions.
Inventions that result from activities or investigative work sponsored by third parties (such as government agencies, private companies, consultative agreements) is considered property of the university unless otherwise stated in third party agreements.
Occasionally, the facilities at the University of Puerto Rico are used in collaboration with outside parties for purposes of research and development. In such a case, the university will claim a proprietary interest according to its participation on any inventions developed.
Employees that engage in collaborative activities or investigation should summite the agreement proposal to the appropriate university representative. The agreement proposal should include detailed information that ensures protection of the university’s rights regarding any results that develop from such collaborations.
Lab Note Books and Other Related documents
Lab notebooks and any other related documents related to the research and development activities will be property of the University of Puerto Rico.
Also, any necessary records for the use of documenting an invention or support a patent application will also be property of the University of Puerto Rico.
Obligation to disclose findings and inventions
All that develop findings and invention under the UPR policies, should disclose this information immeadiately to the person or entity that is responsible for administering the intellectual property at UPR under a time period of 30 calendar days. This requirement applies as soon as the person has motives to believe, based on the person’s own understanding or from others, that the findings or invention can be patented or commercialized. The information related to the findings or invention is to be disclose on the appropriate forms prepared by the Intellectual Property and Technology Transfer Office of UPR. Failure to abide by the expectations set forth by the university’s policy will result in an administrative sanction that can include exclusion the research and development project based on the severity of the consequences of not disclosing the information.
All information that is disclosed is considered confidential and will not be subject to disclosing to the general public.
The Intellectual Property and Technology Transfer Office (IPTTO) of the University of Puerto Rico at Mayagüez is responsible for making decisions that best serves the public and results in the effective development and transfer of the technology and are consistent with the university’s policy and procedures. It is the IPTTO’s intent to develop strategic collaborations with industry through licensing and establishing new ventures.
Other University Related Policies
Patents and Trademarks Depositary Libraries
Public Law 105-304; The Digital Millennium Copyright Act. (also available in pdf version)
37 CFR 401.14; The Bayh-Dole Act, as implemented by the “Standard Patent Rights Clauses”
Articles Related To University Rights in Intellectual Property:
NOT-95-003; NIH GUIDE: A “20-20” View of Invention Reporting to the NIH.
MPEP 310; Government License Rights to Contractor-Owned Inventions.
COGR A110 Letter; COGR’s letter to OMB regarding its proposed rule to amend Circular A-110 to make research data available under the Freedom of Information Act.