This summer, a legal battle between the University of California at San Diego (UC-San Diego) and the University of Southern California (USC) in Los Angeles highlighted just how contentious disputes over research and other intellectual property can become when a faculty member departs one university for another institution. The trouble began when USC launched a new Alzheimer’s study center and recruited a UC-San Diego faculty member who was an Alzheimer’s disease expert and the lead researcher on the 25-year, $100 million Alzheimer’s Disease Cooperative Study, according to multiple reports from the Los Angeles Times.
That faculty member and several colleagues took the study’s extensive research database with them when they left, spurring UC-San Diego to file suit for the return of the database, as well as unspecified monetary damages. While other aspects of the lawsuit remain pending, in July a judge ordered USC to return the database to UC-San Diego, which maintained control of the government funding.
Details of the case remain murky, but that outcome seems generally in line with standard academic practice, suggests Becky Stoughton, MBA, CLP, vice president of Fuentek LLC in Apex, NC. “Transferring ownership of the results of research (such as a database) that happened prior to the researcher’s employment with the new university would be very atypical.”
Not every university will end up in a newsmaking legal tangle, but other significant consequences can occur if technology transfer offices don’t properly manage researcher departures, says Kelly Sexton, PhD, director of the Office of Technology Transfer at North Carolina State University in Raleigh.
“For example, in one case that I have seen in the past an inventor made a disclosure to the university; the university filed patents; and then the researcher went to another university and disclosed the same IP there,” Sexton says. “Fortunately, the original university had co-ownership in some related technology, and was able to find the published patent application and see that those sequences had been patented already. At best, the situation could have been a waste of the second university’s money, and at worst, it could have been a patent fight if the new university had gone so far as to license the technology only to find out it had already been patented — wasting a lot of money and effort.”
Researchers tend to change institutions fairly frequently, points out Julie Watson, JD, CLP, special counsel for Marshall, Gerstein & Borun LLP in C hicago, so it’s best to be prepared. “It is not uncommon for a situation to come up where preventive action is beneficial. So while many universities do take steps to ensure researcher departures don’t have a negative impact, that process can be fine-tuned by implementing best practices.”
Those best practices are detailed in extensive report featured in the October issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s extensive archive filled with hundreds of case studies and success strategies for TTOs, CLICK HERE.
