UMA's regulations on patents under the Regulation on contracting projects of a scientific, technological or artistic nature and expert courses. (Contracts Art. 11 L.R.U.) (approved by a Goverment Council agreement on February 22, 1994), and under the TRANSITIONAL ARRANGEMENT of the Regulation on contracting projects of a scientific, technological or artistic nature (Contracts Art. 83 L.O.U.), also passed after an agreement dated December 16, 2005 of the University of Málaga (Andalusia's Official Gazette, BOJA, Issue 25, of February 7, 2006), will be valid until the approval of UMA's Regulation on Patents by the Government Council. In this manner, the applicable norms are as follows:
CHAPTER VI: PATENT REGISTRATION AND UTILITY MODELS.
Article 32.- Ownersihp.
- In relation to Patent and Utility Models, stipulated in the existing Patent Act (Act 11/1986, of March 20) shall apply, as well as other generally applicable norms, including sections of UMA Statues relating to this matter.
- Subject to the provisions of the previous section, the University of Málaga will directly become the owner of the academic staff or research group invention developed at such University as part of their academic functions.
- The contract or agreement must specify which party is to hold ownership of the invention.
In case it is not explicitly stated, it will be assumed that such ownership corresponds to the University.
Article 33.- Registration procedure.
- Any invention requiring protection of industrial property rights shall immediately be referred to OTRI by the developer, in accordance with the requirements established by the applicable norms.
- OTRI can request expert opinion in order to inform on patent validity, while safeguarding confidential information.
- OTRI will refer the patent report, in addition to the expert report if applicable, to the OTT/CICYT, to initiate the analysis and assessment stage.
- Once this information has been acquired, a report will be issued and submitted to the Director of OTRI stating whether or not the University should follow through with the management of the patent; this report will then be referred to the Office of the Vice-President for Research which, after consulting with the University's Research Committee, will decide on the suitability of the patent's formal registration by the Industrial Property Office. The developer(s), previous to the formal registration, can make the necessary adjustments based on the information acquired.
- Once the patent has been registered, OTRI will inform the Department of Financial Management so that it may be filed properly.
Article 34.- Processing Costs.
- The costs involved in processing the application for patents and utility models, including fees, development or technical advice expenses, as well as those derived from the three first years of patent maintenance, will be deducted from the income generated by the use of the patent.
- Office of the Vice-President for Research, after hearing the University's Research Committee, will decide on the maintenance of the patent based on the results obtained in the three-year period after its registration.
Article 35.- Profit-sharing Scheme.
- In all cases, the researcher or research group has the right to share in the profits made through the University's use of the patent as well as through the transfer of rights as stated in article 30‚.
- Following the deduction of costs, profits will be shared as follows:
- 50% for researcher(s).
- 25% as research income for the University.
- 25% as research income for the Department or Institute that has taken part in the invention.
Article 36.- Concession.
- The University President has jurisdiction over the assignment of patents or utility models, following a report issued by the Office of the Vice-President for Research and the Director of OTRI, and after consultation with the Research Committee.
- The University can assign the propriety or rights of the patent's use to a public or private body in exchange for the royalty payment specified in the contract on assignment.
- The University can assign the patent ownership to the teacher/inventor, while maintaing the share in profits established by the contract on assignment; this share shall not be less than 20% of the total profit.
- Taxes on manufacturing and commercialisation of the invention are to be payed by the natural or legal person holding the patent rights.
- In case the manufacturing or commercialisation of the investion is outsourced, the University shall be informed immediately, safeguarding its royalty rights.
- The person or entity acquiring the patent rights will be responsible for the warranties related to the manufacturing and commercialisation of the invention. In this respect, the University will not be liable to third parties, patent litigation, and the effects of manufacturing and commercial activities.