The following is based on the authors’ experience and observation over time and should not be relied upon as legal advice.
In today’s academic environment, inventors are forced to relinquish ownership of their inventions before even conceiving them. Most universities today claim outright ownership of any patentable invention created by any member of the university community. Frequently, this ownership extends not only to faculty but also to students, visitors and professionals in residence. Some even require assignment to the university of all inventions created in the future even if the individual is no longer at the university!
However, it has not always been this way. Alexander Graham Bell invented the telephone in 1876 while a faculty member of Boston University. He owned 100% of one of the most valuable patents of all time with no requirements to share ownership, control or profits with BU. This begs the question, “how did we get to where we are today?” Current university technology policies evolved gradually over the last 100 years, frequently in response to economic conditions that forced universities to look for alternative sources of funding.
Frederick Cottrell, a professor at the University of California, Berkeley, formed a research corporation in 1912 to commercialize his patents. Shortly thereafter, his corporation began managing patentable inventions for other academic inventors. The first formal patent policy was adopted by Lehigh University and Columbia in 1924. One year later, the Wisconsin Alumni Research Foundation was created to manage patenting and licensing of inventions by University of Wisconsin faculty members. By the 1930’s, universities were becoming increasingly interested in exploiting the resources of their faculty as a result of the financial pressure created during the great depression. MIT was the first university to sign an institutional Invention Administration Agreement with the Research Corporation. The MIT president at that time, Karl Compton, wanted to commercialize patents to earn revenue from university research. This resulted in MIT asserting ownership rights over any faculty invention financed by the university. During World War II, massive research investment was made to universities to develop war time technologies; however, by 1942, only 37 institutions had formal patent policies. Compulsory assignment of patent rights was not mandated at most universities; “voluntary” assignment was preferred. But by 1962, attitudes were changing, and 147 universities had formalized IP policies.
The economic crisis of the 1970s (“The Great Inflation”) spurred another round of changes to technology transfer. Universities dramatically increased their “in house” patenting capabilities. At the same time, Congress was debating whether the federal government should own the titles of patents created with federal funds. After severe criticism for failure to make widely available several health related inventions of which the government claimed ownership, the Department of Health, Education and Welfare established a system of agreements which allowed universities to hold title to inventions made with NIH funding, and to license them to industry. The Bayh-Dole Act of 1980 was the end result of these controversies, and allowed universities to retain title to inventions made with federal funding. Following adoption of Bayh-Dole, universities amended their intellectual property (IP) policies to extend claims of ownership over all inventions made on campus, and extended them to include students, visitors and other members of the university community. In many cases, universities claimed this was necessary as a result of the federal “obligations” imposed upon the universities by Bayh-Dole. It is critical to realize that Bayh-Dole applied only to federally funded research. Nonetheless, universities have used Bayh-Dole as justification to claim ownership of all research even if it not performed on campus.
Since Bayh-Dole, courts have generally found in favor of the university in ownership disputes, despite the fact that in most cases, formal written contracts were never signed, and university patent policy is buried in virtual obscurity. However, on a positive note, this trend changed dramatically in 2011 when the Supreme Court ruled that “a promise to assign rights to a university in the future” did not supersede the “actual assignment of rights” to a corporation. The court’s ruling stated “though much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not. While an inventor can assign his rights in an invention to a third party, an employer does not have rights in an employee’s invention unless the inventor expressly grants his rights in the invention to the employer. The Bayh-Dole Act did not change that basic principle.” Nonetheless, despite the Stanford v Roche ruling, most universities still claim blanket ownership of all inventions by their university community.
In 2020, Patricia E. Campbell, associate professor of law at University of Maryland, published a review of the IP policies of America’s top universities and proposed changes to address the major problems with today’s ownership models. These proposals included:
- Tuition paying students should not be required to assign their inventions to the university. In fact, it could be argued that claiming ownership of student inventions is a breach of the university’s fiduciary duties to its students.
- If universities are going to require faculty, staff and other employees to assign inventions to the university, then they must revise their IP policies to more accurately reflect the state of the law. They need to include a clear provision stating that an employee is required to assign intellectual property to the university as a condition of employment.
- e.g. “As a condition of my employment with the university, I hereby assign and agree to assign in the future to the University all rights, title and interest in and to any and all Inventions conceived or reduced to practice by me, that are made with the use of University facilities, resources or funding.”
- In addition to being legally unambiguous, note that this limits the scope of any assignment to inventions made with university resources or funding.
- All members of the university community subject to the IP policy and claims of the university should be made aware of the policy and its implications on their work.
- An alternative model would give the faculty member the “option” to retain ownership of their inventions and directly participate in its development and commercialization, or to assign the invention to the university whose technology transfer office would assume those responsibilities.
So where does that leave you, as an academic inventor?
Of course, none of these proposals are in place today. The “inventive” neurosurgeon, therefore, must take particular cautions to protect the ownership of his/her inventions.
- Before accepting an academic position and/or before determining what to do with your invention, thoroughly review your contract and its associated policies with an experienced lawyer.
- If possible, negotiate with the university an ownership position with which you are comfortable. (Remember that you are being paid as a clinician, not as an inventor. If the university claims ownership of your invention, then they should be paying you as an inventor, too.)
- If you plan to invent independent of the university, make sure you use only your personal computer and physical facilities, out of normal “working hours.”
- Clearly document everything. Do not even use the university telephone system for your business purposes. Telephone records are discoverable and could result in loss of your claim.
- It would also be wise to set up your personal LLC through which you develop your invention and file your patent applications.
- Finally, be aware that although your invention may have been developed completely “off campus” and with no university funding, many universities will still claim ownership. Nothing in any of the above discussion gives the university the right to do that, but it still might take a lawsuit to claim your title and ownership.
