INTELLECTUAL PROPERTY
AND
RELATED RIGHTS
What Goes Out the Door
When a Researcher Does?
University of Rochester
Office of Technology
Transfer
Presented by
Gail Norris
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What We Need to Think About –
IP and Related Rights

Patents
 Research Materials (MTAs)
 Copyrights
 Grants and other external research awards
 Research Data
 Research Animals or Equipment
 Personnel
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Questions We’ll Answer

When a researcher leaves, what can he or
she take?
 What needs to stay at the University?
 Once we know the answers to these
questions, what do we need to do to ensure
that the right property/assets reside in the
right place?
 We’ll end with a checklist you can use to help
you through these issues when the situation
arises
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Is this Really Necessary??

Academic institution and researchers are
collaborative – are there really disputes that
arise in this area?


Madey v. Duke University
Catalona v. Washington University

Researchers leaving on less than friendly
terms means a higher risk of an issue in this
area
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Intellectual Property Covered by a
Patent Application or Issued Patent

University owns and inventor gets % of
royalties – even if he leaves
 If an inventor leaves – he (and his new
employer) needs to make sure that he has
necessary rights to use the patent if still
needed in his research
 For patents that are in prosecution and not
yet issued – we need to ensure that inventor
will be available to cooperate in continued
prosecution (good incentive with royalty
sharing)
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Inventions that are Partially
Developed at Both Institutions

This is common because of fluid, on-going
nature of research
 To unravel the issues – important to have
some idea of status of the researcher’s work
at the time of the job change
 Bayh Dole requires correct ownership if
inventive work was done with federal funds
 Inter-institutional Agreements are the solution
to joint patent ownership
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Research Material

RM that was developed here should be
moved to the new place under an MTA
 If researcher was working here with material
received under an MTA we need to make
sure the new employer negotiates a new
MTA for the material. Can’t use ours (maybe
can assign ours but need to pay attention to
terms and intended use)
 Involve new employer’s MTA staff asap.
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Copyrighted Material and
Works of Authorship



General Rule – Work for Hire
Textbook exception
Creates some ambiguity with advent of new
technology tools




Web based software or other computer software
Audio, visual or written works of authorship used
in course curriculum
Teaching modules, resource or other training
manuals, etc., etc.
Once identified, we can license use to new
employer or choose to let it go
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External Research Awards

Government Grants and Industry Sponsored
Research Agreements




University personnel should talk with the PI who is
leaving to discuss status of project
Will the work stay or go with the researcher?
Mutual agreement on what is needed to finish and
who will do it. Involve research office of new
employer asap.
Consultation with Sponsor and review of terms of
agreement necessary
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Research Data

Most researchers hold onto their research
data like it was their baby
 Data is typically in lab notebook or on PCs
 OMB Circular A-110 specifies that financial
records, supporting docs, and all other
records pertinent to a federally funded award
shall be retained by the institution
 That means we need to make sure we have
access to the research data (probably true
with all sponsored research) . . .
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Research Data - Access
We can keep a copy of the data – probably
necessary for financial records and reports
submitted to sponsor
 We can allow researcher to take data but
make it available to us as needed
 Record-retention period specified
 Consider whether data is needed to
support pending patent applications

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Research Animals and
Equipment
If Animals will move – may need University
Committee on Animal Research (UCAR)
approval
 Some University policies require quarantine
of animals before being accepted into their
facilities
 Transfer of equipment depends on funds
used to purchase it and purpose of
equipment



If Fed agency funds – check agency regs and
docs
If University or Industry sponsor funds – should
stay here as general rule
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Personnel
 In
some cases, we need to prepare for
the possibility that the researcher may
take personnel with him (now or in near
future) and anticipate the staffing issues
that might create for your department
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Reverse Engineer if a New
Researcher is Coming Here

Check IP terms to make sure researcher has
right to use any copyrights or patents owned
by former employer
 Check documentation for any research
materials brought to the University
 Check documentation and ascertain grants or
other research awards that are being
transferred to University
 Understand status of any transferred grants
or awards to make sure $ and work are
properly allocated between the two
institutions – complicated – stay tuned
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Best Practices – Exit Interview
(Entrance Interview)





Is the Researcher intending to use any patented,
patent-pending or copyrighted works after he leaves?
If so, contact OTT
Is the Researcher taking any research material (cell
lines, mice, cell/tissue cultures, antibodies, etc.). If
so, contact ORPA. ORPA will contact new employer
Is the Researcher the PI on any external grants. If
so, you need to understand what the status is of the
project ($ and work) and who will complete – Contact
ORPA. ORPA will contact new employer
Talk through the issue of research data – especially
related to the researcher’s federal grants and make
sure we have access to it – ORPA can help
If applicable, consider issues of animal research,
equipment and potential personnel loss
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 This
presentation will be available on
the ORPA website so you can access it
to get the Exit Interview slide when you
need it
 QUESTIONS?
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