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.

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.

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.

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

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.