Tech Transfer eNews Blog

Don’t lose your university’s IP to faculty “consulting time”

By Jesse Schwartz
Published: October 16th, 2019

It’s the response that tech transfer leaders never want to hear when approaching a faculty member about intriguing new intellectual property: “Oh, I did that as part of my consulting work for a company. It wasn’t done on university time.”

As most tech transfer professionals can attest, heated disputes can arise when university leaders do not agree. Ugly, expensive litigation can result. Even if the university prevails in the end, relationships with faculty and outside companies can be irretrievably broken. That’s why tech transfer leaders should take extensive precautions to avoid such disputes, which will require carefully constructed policies and written agreements.

With the changing nature of the workplace, particularly the 24/7 workday and the ability to work remotely, “university time” becomes more and more difficult to define, says Sally L. Byrne, JD, partner with the Culhane Meadows law firm in Boston, MA. In addition to inventions conceived or developed on “university time,” the university should seek ownership for inventions that were developed using the university’s resources, she says, regardless of faculty’s claims of “when” they were conceived.

It is well worth the effort to avoid ownership disputes through proper policies and procedures, adds Jeffrey B. McIntyre, JD, partner with the Oblon, McClelland, Maier & Neustadt law firm in Alexandria, VA. Companies will understandably try to claim ownership of IP if they paid for the research in a consulting agreement, and universities tend to take a broad view of how their faculty use their work hours. Both sides may refuse to budge, especially when there is the potential for a significant payday stemming from the IP.

“When it does happen, it’s a mess. You have to come to some type of settlement about the rights, but at that point the toothpaste is out of the tube,” McIntyre says. “Nobody’s going to be truly satisfied in the end, and you will just wish you had taken steps to avoid that kind of confrontation.

Once a dispute arises, the university is at a disadvantage, McIntyre says. The company may have much more to gain from revenue generated by the IP than whatever the university would earn in licensing it, he says, and the company may already have deeper pockets and more willingness to pursue litigation. Unless the prior agreements are very clear about ownership, the university can face an uphill battle in the courtroom, he says.

A detailed article on preventing IP disputes over faculty “consulting” work appears in the October issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted under: Tech Transfer e-News

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