Universities & Research and Development Institutions

Universities & Research and Development Institutions

Ladas & Parry is proud to act as intellectual property counsel to many universities and research institutions.  Our global expertise allows us to address the complexity of IP issues that arise in the university sector.  Successful research programs will generate discoveries and it is essential to have realistic and efficient management of IP in order to protect and maximize the value of these discoveries.

Our team includes attorneys with advanced degrees in biochemistry and organic chemistry who have a deep understanding of the business and science behind our clients’ discoveries.  We have a uniquely global patent practice with practitioners admitted to practice before the United States Patent and Trademark Office, European Union Patent Office, and British Patent Office, including several of whom are admitted in multiple jurisdictions.  Our deep expertise across the breadth of life sciences industry sectors allows us to serve universities and research institutions, based in the United States and abroad, in relation to all of their discoveries, spanning from biotechnology and pharmaceuticals to medical devices and agricultural chemicals.

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Announcements


22.Feb.17In Life Technologies Corp. v. Promega Corp, the U.S. Supreme Court held that extraterritorial...

14.Feb.17During a recent Practical Law “Expert Q&A”, Matthew Asbell was asked to...

27.Jan.17Ladas attorneys, Dennis Prahl, Bharati Bakshani, and Ralph Cathcart were selected once again as...

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+ Developing Intellectual Property Policies for Universities & Research and Development Institutions

Developing a comprehensive and accurate Intellectual Property Policy (IPP) is one of the most important ways that universities and research institutions can safeguard their interests in maintaining collaborative research activities and avoid future disputes related to ownership and disclosure.

+ Bayh-Dole and Government-Funded University Research

Every U.S. university is required to conform with the obligations imposed by the Bayh-Dole Act, which is intended to promote private investment of federally funded research discoveries. Under the Act, universities may file their own patent applications and license federally funded inventions, while granting a nonexclusive license to the government to practice the patent. If a university elects not to retain ownership, then the patent rights must be assigned to the U.S. federal government. Our attorneys counsel clients regarding issues related to the Bayh-Dole Act and have lectured and written extensively on the effects of the Act and how the AIA and case law have affected its implementation.

+ Jointly Funded University Research and Sponsored Research

As universities and research institutions seek partners to leverage their technology, collaborative research, development, and distribution arrangements, our attorneys counsel clients both on the university side as well as those that are private sponsors, and ensure that these agreements carefully consider how IP developed under the agreement will be handled and owned.  The policy of most universities requires that all inventions made with the use of university funding or facilities belong to the university, even if the research was funded by a third party.  Our clients trust in our expertise in the academic research field, and our vast understanding of these arrangements ensures that we address material transfer agreements, sponsor rights in results, university reporting of inventions to the sponsor, the patent process, and which party is responsible for the preparation and prosecution of patent applications and maintenance, publication of results, rights to improvements, and rights in the case of disagreements about how and whether to exploit rights.

+ Publication and Disclosure of Findings

The university scientist faces pressures regarding the publication and disclosure of findings not shared by the scientist in the corporate sector.  Within the university setting, there is mounting pressure to publish findings for numerous reasons.  Consequently, researchers face the challenge of determining the proper time to publish findings and file patent applications.  While early disclosure of findings may improve the position of an individual researcher, it may likewise hinder the ability to obtain patent protection if the research is not developed to a level of patentability.  Our global patent law expertise and our deep understanding of university research structure allows us to counsel clients regarding the best timing for patent filing

+ University Spin-Off Business Incubators

In order to transform university inventions into successful business ventures, universities will sometimes create spin-off companies to develop commercial products from university-owned IP.  Often, a university spin-off company represents the best opportunity for developing early-stage university technologies.  These spin-off give rise to potential issues of IP ownership, conflicts of interest, and potential tax-exempt consequences, among others.  Our team of attorneys counsels universities and spin-off businesses about minimizing risk in venture formation.  Additionally, we advise our clients regarding avoiding conflicts of interest by developing and implementing rigorous university policies concerning university faculty investments in or positions held at companies that have a contractual or fiduciary relationship with the university.