Intellectual Property Assignment Policies at Public Research Institutions

Benchmarking IP and Faculty Consulting Policies and Responses to Stanford v. Roche

Topics: Faculty Affairs, Academic Affairs, Industry Partnerships, Third Party Partnerships, Administration and Finance, Legal and Compliance, Technology Transfer, Research Enterprise

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Summary

Research at institutions of higher education often results in the creation of intellectual property. Administrators seek to protect and commercialize intellectual property to benefit the public and further their institution’s mission. This report profiles intellectual property ownership policies at public research institutions, as well as responses to Stanford v. Roche, a Supreme Court case that affects the language used in intellectual property assignment agreements.

Research Questions

  • What is the nature of IP ownership and assignment agreements at peer institutions? To what extent and under what circumstances do institutions retain ownership of IP generated by faculty members?
  • To what extent do IP assignment policies limit application to inventions related to a faculty member’s sphere of research and expertise or to inventions made with university funding, resources, or sponsorship? What policies or practices do administrators employ to render these determinations?
  • What percentage of royalties do institutions pay to inventors for licensing of an invention?
  • How have institutions reconsidered or reexamined IP assignment agreements and faculty contracting policies in light of Stanford v. Roche? What effect have IP assignment agreements had on faculty consulting engagements?
  • If institutions have changed their IP assignment policies, how do they encourage existing faculty to sign new agreements?
  • How do administrators determine whether or not IP assignment agreements constitute immediately effective contracts or agreements for future assignment?