Tech Transfer Central
University-Industry Engagement Advisor

Overcoming Joint IP Ownership Challenges in University Research Partnerships

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 25, 2019

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In a perfect world, universities would enjoy collaborating on research projects with a myriad of partners, costs would be shared fairly among partners, everyone would agree on IP ownership, and they would live happily ever after. But the real world is far from perfect, and it’s critical that your university’s IP rights are carefully defined and protected when working with other schools, corporations, and other partners.

There are many ways a university can become a joint owner of IP — from inter-institutional agreements to sponsored research to staking a claim in a start-up, just to name a few. Each joint project or collaboration comes with its own baggage and must be planned for accordingly. The cost of inadequate preparation and contractual protection can be huge, from hefty litigation costs to invalid patents or loss of IP, not to mention damage to important relationships.

That’s why Technology Transfer Tactics’ Distance Learning Division is teaming up with Rodney Sparks, JD, PhD, from the University of Virginia Licensing & Ventures Group, to discuss how to protect your ownership stake, remain a good research partner, and deal with conflicts when they arise. Please join us for this practical and timely webinar:

Overcoming Joint IP Ownership Challenges in University Research Partnerships

Here’s a quick look at what Dr. Sparks will address in this detailed session:

Proactive planning tips for defining IP ownership rights related to:

  • Faculty IP
  • Student IP
  • Inter-institutional agreements
  • Corporate sponsored research
  • University start-ups

The effect of joint ownership on:

  • Patenting
    • Prosecution
    • Double patenting risks
    • Litigation
    • Infringement
  • Licensing
    • Rights of owner(s)
    • Royalties
    • International rights

Proven approaches to cure ownership conflicts

Meet Your Program Leader:

Rodney L. SparksRodney L. Sparks, JD, PhD
Senior Biotechnology Patent Counsel
UVA Licensing & Ventures Group

Dr. Sparks is a member of the in-house legal team supporting patent issues in the biotechnology, pharmaceutical and chemical sciences, including medicine and gene therapy. He is responsible for overseeing outside patent counsel, drafting and prosecuting patents, preparing opinions and providing counsel on patent matters. Rodney also provides counsel on government reporting matters for LVG. Dr. Sparks also teaches law students in the Law Student Patent and Licensing Clinic at the UVA School of Law.

Prior to joining LVG, he practiced in the intellectual property group at Drinker Biddle & Reath LLP and before that at Morgan Lewis & Bockius LLP, both in Philadelphia, and represented a variety of clients in the U.S. and abroad, including universities, biotechnology and pharmaceutical companies. Dr. Sparks is very active in the professional community, and has served in various consulting capacities for agencies of the U.S. government. He also recently participated as a judge for the modern marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org.

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