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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 5.4   Ownership of University Inventions: Practical Considerations
Editor's Summary, Implications and Best Practices

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 5.4). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Editor's Summary

As it does in just about any context, the question “Who owns it?” can raise some troublesome issues when it comes to universities and intellectual property. Fortunately, while the rules that govern the ownership of intellectual property at universities have some gray areas, the law does make clear that individuals own their inventions, except:

  • where there is an express agreement providing for assignment of inventions to an employer; and
  • where an implied agreement to assign is found because the employee:

    (a) was hired or assigned to invent
    (b) was hired or assigned to solve a specific problem
    (c) stood in a fiduciary capacity to the employer (President of a commercial company, for example)

Where no written agreement exists and no implied contract to assign is found, the inventor will own the invention, subject to the employer’s shop—right. (The shop-right gives an employer the right to a royalty-free, nonexclusive license to practice the employee’s invention.) Given the first item, it is critically important for a university to absolutely require all employees and visitors to sign Invention Assignment Agreements (IAAs) on their date of arrival.

This chapter illustrates and clarifies the somewhat abstract principles of ownership of university inventions with a series of hypothetical scenarios, examining eight possible cases and then providing an overview of the U.S. laws that apply to them. It considers:

  1. The unreasonable inventor
  2. The unreasonable inventor you missed
  3. Saturday afternoon conception at home
  4. The eclectic inventor
  5. The better-late-than-never agreement
  6. The precocious undergrad
  7. The visiting scientist
  8. The inventor who does not play well with others

Overall, without a written agreement, the facts of each case determine ownership; a particular professor may, or may not, be found to have been hired to invent or to resolve a particular problem. As with any class of employees, probably no blanket statement can be made as to when university professors and researchers are considered to have been hired to invent.

Again, the most important lesson here is to absolutely require all employees and visitors to sign IAAs on their date of arrival. Neither an employee handbook that discusses patent assignment nor a published university patent policy may be enough to insure that the university is assigned ownership. For managing intellectual property, invention, and ownership issues, the best approach is always to require employees and visitors in a position to invent to sign IAAs.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

  • Promote legislation that clarifies under what circumstances employees in the public sector, for example university professors, shall assign their patent rights to their employers. For example, clarify what “hired to invent” or “shop-right” means in a legal sense. This will help public sector institutions create appropriate policies and guidelines regarding invention assignments.
  • Provide support to your public sector research institutions so that they can build and implement the requisite capacity for managing employee invention issues.

For Senior Management (university president, R&D manager, etc)

  • Implement intellectual property policies that clearly define ownership of university inventions. The policy should address ownership with regard to staff, scientists and students, and also, critically, visitors.
  • For managing intellectual property, invention, and ownership issues, the best approach is always to require employees and visitors in a position to invent to sign Invention Assignment Agreements (IAAs).
  • U.S. case law does not distinguish between university and commercial employees.

For Scientists

  • Read, understand, and sign your institution’s Invention Assignment Agreements (IAA).
  • Understand that you have been hired to do research in a specified area, and to invent when the opportunity arises, and that therefore you are bound by the “hired to invent” rule of invention assignment.
  • If you get an “inventive idea” while on vacation, resulting patents will likely still be assignable to the university if the “inventive idea” is connected to your research activities.
  • Tell the technology transfer office (TTO) when visiting scientists are coming to work in your laboratory. Also, check with your TTO to determine what the policy is for student inventions and ownership.
  • Report and disclose inventions to your technology transfer office promptly.
  • Although you may not own your invention, you may be entitled to share royalties with the university.

For Technology Transfer Officers

  • For managing intellectual property, invention, and ownership issues, the best approach is always to require employees and visitors in a position to invent to sign Invention Assignment Agreements (IAAs).
  • Before action is taken on new invention disclosures by the university licensing office, staff should double check the existence of such agreements for particular inventors. Research contracts, with the government and other sponsors, should have a checklist item referencing the existence of IAAs for the principal investigator and other researchers.
  • Stay in touch with your institution’s scientists, and remind them to always tell you, in advance, when visitors are coming.
  • Provide education and training sessions and resources to your institution’s staff and scientists so that they know how to handle potential inventions, when to contact the technology transfer office, and what their rights are with respect to inventions they make in the course of employment at the university.
  • At the termination of employment, personnel should be asked to sign an exit form to the effect that “I have disclosed all my inventions falling within the terms of the IAA to the university licensing office.”

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 5.4). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.