Tech Transfer Central

Returning Intellectual Property to the Inventor: How, Why, When…Then What?

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, January 13, 2022
Price: $197
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Once an invention is disclosed to the tech transfer office, the path to commercialization begins. Critical assessments then determine whether the technology has a market, a market need, and can be patented or otherwise IP-protected, and down the road it goes…

In some cases those assessments return with too many negatives, and in other cases the innovation stalls as it hits bumps in the road. There may be too little interest among licensees or investors, difficulty in scaling up, competition and regulatory risks, and many other challenges that can be too difficult to overcome despite the TTO’s best efforts.

Rather than having the case files simply gather dust, the intellectual property can be — and in many cases should be — released back to the inventor. But that also has its challenges. For one, you must be very clear on restrictions and rights when doing so because there are many players and factors to consider.

There’s also the valuable relationship with the inventor, which should be preserved and even strengthened. A delicate touch is necessary to communicate why the IP is being released, what led to the decision, and what the rights of the university, funding sources, and faculty are in relation to the innovation.

To address these issues, Tech Transfer Central’s Distance Learning Division has teamed with Magdalena K. Morgan, PhD, Director of Licensing at Virginia Commonwealth University’s Innovation Gateway for this insightful distance learning program:

Returning Intellectual Property to the Inventor

This program will outline how to release IP, when and why a release is deemed appropriate, and what happens after you release the IP.

Here’s a brief look at the agenda:

  • Policy and procedure considerations that must be in place to facilitate low-risk release of intellectual property back to inventors
  • What factors contribute to the decision to release IP:         
    • Not legally protectable
    • No market
    • Not fiscally viable to continue to protect
  • Understanding the inventor’s rights to the IP upon release
  • What restrictions may be imposed on innovations returned to inventors based on funding source, phase of commercialization, and protection status
  • Know what rights the university retains upon release of IP
  • A detailed look at the process of releasing IP back to inventors
  • Example of a Release of IP Agreement

Meet your session leader:

Magdalena K. MorganMagdalena K. Morgan, PhD
Director of Licensing – Innovation Gateway
Virginia Commonwealth University



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