Industry-Sponsored Research Week
University-Industry Engagement Advisor

Patent infringement risks may be few, but don’t ignore them in industry partnerships

By David Schwartz
Published: June 12th, 2018

How much risk of patent infringement is associated with industry-sponsored research? For garden variety deals — company supports work in principal investigator’s lab, school licenses discoveries to company — not much, say attorneys and other experts. But some of the subtler set-ups between schools and private industry might make patent infringement a bigger problem, they caution, because they involve closer contact between researchers and corporations.

In the University of Wisconsin-Madison’s patent infringement lawsuit against computer chip maker Intel Corp — settled for a reported $110 million — the school claimed that Intel Core processors used work by UW researchers. In the case, Intel said it had supported research at UW with $90,000 in “gifts,” entitling it to the IP that resulted. Because the funding agreements didn’t specifically give the processor company that right, a judge ordered the case to trial, adding that any infringement was not willful because of the contractual ambiguity.

That lawsuit highlighted what Blakeslee LLC principal Wesley D. Blakeslee, JD, CLP, considers to be the biggest problem with industry-sponsored research when it comes to patent infringement — which, he emphasizes, is a real threat that more schools should have on their radar. He says the case illustrates the inherent legal dangers in the kind of close, personal industry-academia relationship that underpins many successful partnerships.

Sponsored research agreements rarely directly address infringement, Blakeslee notes, explaining that “the issue arises more in deals that are more of a collaboration, in which faculty and members of the commercial entity work together” but in a less formal arrangement than a sponsorship agreement.

Also problematic are start-up companies that sponsor research, “where the faculty member has stock or another financial interest in the company,” he adds. “Lots of university IP goes out the back door.” Indeed, he emphasizes, “any type of faculty consulting agreement with industry creates the problem.”

Wisconsin’s Apple suit is a case in point, he notes. Coverage of the UW lawsuit pointed out how the case “put a spotlight on Intel’s once-cozy relationship with [the PI], who was chair of the computer science department and who routinely presented his data to Intel, recommended his students for jobs there, and sought recommendations from Intel for awards and government grants.”

He also “worked with [the company] to structure its gifts so they would not pay for university administrative costs,” according to news reports covering the case. An incriminating e-mail from the corporate sponsor referred to an end run around UW’s “bureaucrats” that involved a “gift” from Intel that’s “officially unrestricted, unofficially for the work in the proposal.”

In addition, a smoking gun e-mail from the PI referred to “a gentleman’s agreement with Intel not to aggressively seek patents” — and to inform Intel if he did.

A detailed article on the risk of patent infringement in corporate-sponsored research appears in the May issue of Industry-Sponsored Research Management. To subscribe and access the full article, along with the publication’s complete archive of best practices and strategies for building corporate partnerships, CLICK HERE

Posted under: University-Industry Engagement Week

Twitter Facebook Linkedin Pinterest Email

No Comments so far ↓

There are no comments yet...Kick things off by filling out the form below.

Leave a Comment