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Student IP policies under scrutiny as universities seek balance, but pitfalls persist


By David Schwartz
Published: May 4th, 2016

It has always been a challenge to make sure that an ever-revolving roster of faculty researchers fully understands an institution’s IP policies. However, in recent years, as undergrads have become increasingly engaged in entrepreneurial activities, this challenge has intensified, and institutions must now make sure that students are fully apprised about these matters as well.

While earlier engagement in innovation is clearly a positive, this evolution has shined a spotlight on a patchwork of student IP ownership policies, many of which rely on vague or problematic terms, leaving students and even technology managers, in some instances, scratching their heads over the question of who owns the IP under what circumstances.

With such murky language, it is no wonder that innovative students have begun to make noise on the matter, arguing that universities see millennials as the next cash cow, and that they’re seeking unfair IP advantages to make sure they don’t lose out on the next Facebook or Twitter. While such views may be overstating the situation just a tad, policy experts warn that the backlash could have a stifling effect on student innovation — the opposite of what most research institutions want to see.

How do you avoid such problems? Well thought-out policy revisions pertaining to student IP may be a good starting point, but TTOs also must redouble their efforts to communicate their policies to student innovators.

The issue of who owns student-generated IP has attracted considerable press in Colorado where Caleb Carr, a student innovator at the University of Colorado (CU), has taken all the universities in the state to task over policies he says are unfair. Carr, who worked with student colleagues to develop a hoist system for rescue helicopters and has launched a start-up to help bring the innovation to market, thinks student innovators should own their

IP outright. But Carr maintains that he hasn’t been able to get any clear answers on the issue from his school’s TTO.

Carr notes that the debate always boils down to what constitutes “substantial use of university resources” in generating the IP, a point that isn’t clearly delineated in the IP policy. “That is kind of the loophole that every university uses so that they can claim IP,” says Carr. “What we have been trying to do is work with the university to define that and what it means, and every time we have spoken to the university, we get told it is a gray area and that it depends on the situation. Well, that doesn’t provide any answers to students.”

Kate Tallman, the associate vice president for technology transfer for CU’s four campuses, counters that the language used in the CU IP policy is modeled after Yale’s IP policy, which she considers to be a best practice. “We work very hard to partner with the faculty and the administrators who are involved with those students to make it clear that the university is not going to own their IP,” she explains. (See the policy at http://www.cu.edu/ope/aps/1013)

However, Tallman notes that some ambiguity in the policy is needed so that the university can make judgment calls in certain circumstances. For instance, she notes that Carr and a student advocacy group he formed want the university to state the specific circumstances under which the institution will claim ownership of student IP. “For example, they want us to say if a student is paid to work on a federally sponsored research program and makes a discovery in the course of their employment collaboratively with the faculty member in that circumstance, the university will claim ownership of the IP,” notes Tallman.

“What gray area does that leave out? That leaves out the circumstance where an unpaid student is invited into a faculty lab to get exposure to a very early-stage research program,” explains Tallman. “The student may get involved and may have an idea that contributes to a research program where 90% of the idea comes from the faculty and paid graduate students.”

 “They want us to commit that we are not going to claim ownership unless a student is paid,” she says. “So what is this going to do? This is going to create a chilling effect on the open academic environment at CU. We are going to have to work with the faculty who are accepting corporate research contracts to educate them on the implications of letting an unpaid student come into the lab.”

Tallman notes that the university would also have to assure its industry research sponsors that it has a system in place to protect their interests, and that it won’t allow students to access the lab where the collaborative work is taking place. “That is not the kind of environment we want to have on campus, but that is what having a clear policy to the level that [Carr’s group] is asking for [would mean],” observes Tallman.

An in-depth article on university policies regarding student IP appears in the April issue of Technology Transfer Tactics. To subscribe and access the complete article, along with the publication’s 8+ year archive filled with hundreds of case studies and best practices for TTOs, CLICK HERE.

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Merck wants refunds from universities when sponsored research can’t be replicated


By David Schwartz
Published: May 4th, 2016

Major drug company Merck & Co. recently proposed that under any partnership between industry and academia, if the science turns out to be wrong, the company should be refunded. continue reading »

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Webinar tomorrow: Bootstrapping a Proof of Concept Fund to Commercialize Early-Stage University IP


By David Schwartz
Published: May 4th, 2016

It’s an article of faith these days that to gain the interest and commitment of licensees and investors, your early-stage technologies must be “de-risked.” Therein often lies a catch-22 for university TTOs and researchers: It takes money to move to beyond discovery to achieve de-risking milestones, but research grants don’t generally extend into this phase of development.

The University of Illinois at Urbana-Champaign confronted this challenge by taking matters into their own hands, creating the I-POC proof-of-concept fund despite a decreased budget and no endowment funds to rely on. Using a meticulous vetting process, over the course of six years the iPOC has produced nine solid start-ups, raising over $1 million in initial funding and over $14 million in follow-on funding.

We invite you to join UIUC leaders Lesley Millar-Nicholson and Nicole Nair TOMORROW, May 5th, for this eye-opening distance learning event: Bootstrapping a Proof of Concept Fund to Commercialize Early-Stage University IP. For complete program and faculty details and to register, CLICK HERE.

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In Hong Kong, universities and TTO caught up in Panama Papers scandal


By David Schwartz
Published: May 4th, 2016

Two more Hong Kong universities have admitted to having offshore companies after the Panama Papers leak exposed the secretive financial operations of Polytechnic University (PolyU). continue reading »

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Understanding the new Defend Trade Secrets Act


By David Schwartz
Published: May 4th, 2016

The U.S. House of Representatives recently voted to advance the Defend Trade Secrets Act (DTSA), an amendment to the Economic Espionage Act that acknowledges the existence and threat of trade secret theft. In his recent blog post, patent expert Dennis Crouch interprets the new bill and how it would be implemented. President Obama is soon expected to sign the measure into law. continue reading »

Licensing Trade Secrets: Overview and Sample Agreements

This comprehensive and authoritative source will help ensure that you receive the optimum value for your trade secrets. Click here for details >>

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North Carolina start-up incubator targets young black entrepreneurs


By David Schwartz
Published: May 4th, 2016

City Startup Labs, a Charlotte, NC-based program aimed at inspiring more young black business owners, is expanding its operation with a new incubator on the campus of the University of North Carolina and Charlotte (UNCC). The Center for Excellence for Entrepreneurship Competency is UNCC’s first incubator with an emphasis on cultivating ethnic minority entrepreneurial talent. continue reading »

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Columbia U students develop app to help patients choose drugs with the fewest side effects


By David Schwartz
Published: May 4th, 2016

Students at Columbia University have developed an app to estimate which drugs are less likely to cause side effects. continue reading »

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The Guide to Discovering, De-Risking and Commercializing Mobile Apps on Campus


By David Schwartz
Published: May 4th, 2016

The ever expanding market for mobile apps presents technology transfer offices with a tremendous opportunity for new revenues as well as new relationships with students and faculty creating apps on campus. However, many TTOs aren’t up to speed on how to turn apps into something tangible, protect the IP if possible, deal with developers, distributors and app stores, and do it efficiently enough and with enough volume that it is both meaningful and doesn’t overly tax your already overloaded staff.

To help you exploit this opportunity as well as avoid common and costly mistakes along the way, Technology Transfer Tactics’ Distance Learning Division has created this practical distance learning collection: The Guide to Discovering, De-Risking and Commercializing Mobile Apps on Campus.

Our expert presenters will help you tap into this proven revenue-enhancing trend and better serve your student and faculty app developers. The collection’s three sessions include 3½ hours of solid advice and actionable takeaways, along with more than 35 pages of program materials created by the session leaders.

For complete details CLICK HERE >>

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Wayne State U program connects outside businesses with university resources


By David Schwartz
Published: May 4th, 2016

A Wayne State University (WSU) program offers a one-stop concierge-style entrance to the university for local companies to connects with university resources such as technology licensing, research assistance, cutting-edge equipment, student interns, and more. continue reading »

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Mayo Clinic invites international companies to collaborate on tech transfer projects


By David Schwartz
Published: May 4th, 2016

The Mayo Clinic is a launching a first-of-its-kind program focused on commercializing more innovations and intellectual property developed at the nonprofit medical research center by partnering outside the U.S. continue reading »

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Medical Student Creating Prosthetic Hands That Can Feel, Wins Illinois Innovation Prize


By David Schwartz
Published: May 4th, 2016

A student start-up out of the University of Illinois Urbana-Champaign is developing prosthetic limbs that restore not only function but feeling as well. continue reading »

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Rensselaer shares $24.9M settlement from Apple with Marathon Patent Group


By David Schwartz
Published: April 27th, 2016

Apple has agreed to pay $24.9 million to settle a patent infringement case over its Siri voice recognition technology. Marathon Patent Group, a company focused on patent licensing and lawsuits, will share the $24.9M with Rensselaer Polytechnic Institute (RPI), the New York university that provided the patents.

In 2000, Drs. Cheng Hsu and Veera Boonjing at Rensselaer invented a “method for processing natural language input” using “case information, keywords, information models and database values.” The inventors assigned the patent to the university, and the university’s tech transfer office decided to monetize the invention by selling it to Erich Spangenberg, a big name in the patent troll industry.

Spangenberg owned the patent under his shell company Dynamic Advances, which sued Apple in 2012 claiming that Siri infringes on the patent because it “processes natural language” in a way described in the patent. Dynamic Advances later became part of Marathon Patent Group, which is now granting Apple license to the Rensselaer patent as part of the $24.9M settlement.

“This recent settlement is a reminder that the era of the patent troll is far from over,” says tech journalist Joe Mullin. “And it’s a reminder that the lure of big money from patent lawsuits continues to be a tempting draw for universities.”

However, a statement from Dynamic suggests some tension between itself and Rensselaer, which the company says “has unreasonably withheld its consent to the reasonable royalty rate set forth in the settlement agreement.” According to Mullin, this could mean that the university wanted to hold out for more money, while Dynamic and Marathon were satisfied with the $24.9 million.

Dynamic claims it will find other targets, stating that it “believes that other voice recognition products infringe the [Rensselaer] patent.”

Source: ars technica

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