Home > Topics > Inventors and Inventions > Introduction to IP Issues In the University Setting: A Primer for Scientists > Editor's Summary, Implications and Best Practices

Intellectual property is integral to the research, teaching, and extension missions of universities. University research programs may in-license intellectual property that was generated elsewhere, and will eventually have to decide whether or not the discoveries that they make should themselves be protected and licensed to others. It is important that universities’ administrations, staff, and scientists know how to determine IP ownership and understand the role of technology transfer offices in managing intellectual property. When it comes to IP issues, poor judgments can be very costly in terms of money, time, and wasted opportunities. This chapter provides the basic information that university scientists and inventors need to know in order to manage their IP and deal with technology transfer issues.

University faculty need a working knowledge of what intellectual property is and what can be done with it so that they can make decisions about their laboratories’ IP issues – from how to start and run a research program to how to handle any inventions produced by that research. Graduate students and post docs should acquire a basic understanding of intellectual property, as this knowledge will be valuable to them no matter where they end up, whether in government, academia, or industry.

U.S. universities typically have institutional IP policies with which all personnel are required to comply. The IP policies of U.S. universities must conform to the guidelines outlined by the Bayh-Dole Act of 1980, which was intended to promote private-sector investment in federally funded research. In the U.S., university employees must sign contracts that state that all intellectual property generated under the university’s aegis belongs to that university (though inventors are typically given a share of the revenues that come from the sale of any intellectual property they generate). One major exception to the policy of assigning IP rights to the university is in copyrighted materials.

A university’s IP or technology transfer office is the responsible agent, fiduciary, or trustee for that university’s intellectual property; it is also the institution’s most important source of information about IP and its management. In most U.S. universities, the technology transfer office is in, or affiliated with, the office of research, though sometimes it is an independent foundation affiliated with the university. The technology transfer office is responsible for protecting and developing commercial applications (including out-licensing patents) for inventions developed at the university. Its functions typically include

• determining the most effective way to protect inventions;
• evaluating the commercial potential of inventions;
• obtaining the appropriate protection for inventions;
• locating suitable commercial-development partners and marketing inventions to them; and
• negotiating and managing IP licenses.

University faculty, staff, and students should know how to appropriately document their research, how to use intellectual property that is not owned by the university, how to deal with collaborators outside the university, and how to publicly disclose research results. Careful record-keeping is not only important for preparing publications, reports, and grant proposals; it is also essential for preparing IP-protection documents and supporting IP rights. Universities must be very careful when they use materials and methods that do not belong to them, so as to avoid infringing on the property rights of others.

It is important for university inventors to be actively involved in all phases of the protection and marketing of their inventions. Inventors not only have intimate knowledge of their inventions; they may also have useful leads and contacts in private companies. The steps in the technology transfer typically are:

• Invention disclosure;
• Evaluating the in terms of prior art
• Deciding on whether and/or what kind of IP protection to obtain for the invention;
• Marketing and licensing the invention

The IP experts in a university are the technology transfer officers and the legal experts affiliated with the university. However, university researchers should be able to handle day-to-day IP issues and know where to seek help for IP or technology transfer problems.

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

• It is important for public-sector institutions to manage their intellectual property wisely. Invest in IP-management education and training for the public sector.
• Support policies and laws that permit the public sector to own and effectively manage the intellectual property it creates.

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

• University faculty, staff, and students do not have to be IP experts, but they do need to have a basic understanding of intellectual property in order to keep from making costly mistakes and to be able to take advantage of opportunities.
• Your institution’s technology transfer office should create an institutional “culture of IP awareness” by providing staff with IP training and support.
• It may be worthwhile to incorporate IP 101 and basic IP management principles in the teaching and extension functions of the university.

For Scientists

• Intellectual property is integral to the research, teaching, and extension missions of your university.
• University research programs may in-license intellectual property that was generated elsewhere. Be aware of who owns the IP that you use in your research, and how that ownership may affect or restrict your research.
• Keep your technology transfer office informed about new developments in your research program.
• You only need to have a minimal working knowledge of intellectual property and technology transfer. Confer with your technology transfer office about more complex issues.

For Technology Transfer Officers

• University faculty, staff, and students need to have a basic understanding of intellectual property so that they can avoid costly mistakes and take advantage of opportunities.
• Make resources for IP management readily available and user-friendly.
• Researchers who are well informed about the IP and technology transfer policies and processes of your institution are more likely to cooperate with your office.
• University researchers should be actively involved in all phases of protecting and marketing their inventions. Draw on their expertise when drafting patent documents. Researchers often have useful contacts in private companies, as well.