Tech Transfer eNews Blog

Oregon universities band together to set the rules for co-owned IP

By Jesse Schwartz
Published: June 3rd, 2020

A detailed article on how Oregon universities are collaborating on jointly owned IP appears in the May issue of Technology Transfer Tactics. For subscription details, click here.

Five Oregon research universities — Oregon Health & Science University (OHSU) in Portland, the University of Oregon in Eugene, Oregon State University in Corvallis, Portland State University, and the Oregon Institute of Technology in Klamath Falls — have launched a collaborative model to boost innovation via a series of three agreements that clarify ownership of intellectual property derived from inter-university collaborative research projects, as well as inter-university employment. The goal is to reduce cost barriers and other blockages that can stymie collaborative research.

The universities put together these agreements in parallel, creating a serendipitous package that sets the stage for moving collaborative efforts forward, says Andrew Watson, PhD, CLP, senior director of technology transfer at OHSU. “While we didn’t purposefully coordinate the creation of these agreements, they collectively tell a story that the universities here in Oregon are making great progress toward removing barriers to innovation and research collaboration.”

“Having agreements in place and understanding at least at a high level how that mechanism works substantially decreases the transaction barriers for researchers who are collaborating and developing IP together,” agrees Joseph Janda, MBA, MA, assistant vice president for research and graduate studies at Portland State University.

The two IP-related agreements establish a framework to manage the IP that stems from two specific research scenarios:

IP developed in collaborations among researchers at two or more universities. “Sometimes we may have collaborative projects going on among our researchers at the institutions here in the state, and this agreement establishes a standardized pathway for how we will collaboratively manage the new co-owned intellectual property that could stem from those projects,” says Watson.

The agreement specifies that each research group will disclose any IP that comes from a collaboration to the appropriate technology transfer/IP office at their university, says Watson. “The offices then will work together to determine who owns what rights in that new IP coming from the collaborative project, who will take the lead on patent protection if patents are warranted, and who will take the lead on commercialization efforts.”

IP developed by researchers who have joint appointments at two universities. “The number of dually employed researchers between some of our institutions is growing,” says Watson. “That led to the question: How should we manage the intellectual property that might come from a researcher who is employed by more than one of our universities?”

With a joint appointment, the new IP will remain the property of whoever had the background IP if there is background IP, explains Janda. “If the new IP is based off of or in the same patent family or in the same portfolio as existing background IP, the joint appointee’s new IP will be assigned to the same entity that holds the previous IP to keep the portfolio together. If there is no background IP, the new IP is disclosed to both offices, and if the joint appointee is obligated under each policy to assign both, it will be jointly owned.”

The agreement creates a standardized starting point for how the TTOs will communicate with each other to determine ownership rights and other obligations with respect to the IP, says Watson. The factors that are reviewed include the following:

  • What resources of each university were used in conceiving and reducing to practice that new invention?
  • What full-time equivalent (FTE) commitments did each named researcher have at the time of developing the new intellectual property?
  • What funding was used to develop that new intellectual property? “In other words, was it funding from one institution or both institutions?” says Watson.
  • Who else may be involved outside of that dually employed researcher? “Perhaps other researchers at one or both institutions were involved,” notes Watson.

“Based on this information, the agreement sets forth a process for determining what rights would be assigned to which universities and who would be taking the lead in protecting and commercializing the new IP,” says Watson.

The third agreement between the schools addresses a cost barrier as opposed to an IP barrier. Now researchers at any of these Oregon universities will be treated like an “inside” researcher at  all five institutions, providing them with access to the research cores at the same cost each university would charge its own researchers, says Watson.

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