1. Who Owns My Research? Academic Work & Intellectual Property
Tim McFarlin
Assistant Professor
University of La Verne
College of Law

2. Lawyer’s disclaimer
The information and views expressed in this workshop are solely my own, and not necessarily that of the University of La Verne or its College of Law.
Everything here is presented for informational purposes only. It is meant to stimulate interest and thought. It is not legal advice.

3. Intellectual Property (“IP”)
Property rights recognized by law in creations of the mind
AKA intangible property
Differences between intangible and tangible property
Who owns this intangible property?

4. IP is owned by…
You
Your employer OR
The public
?!?

5. Employment / contract law
The answer lies in…
IP law
Employment / contract law

6. Why do we care? IP can save lives. IP can make lives easier/better.
IP can make people and institutions lots and lots of $$.
How?
Owner has the right to control its use.

8. IP Law There is no fully uniform, binding international IP law.
BUT treaties/conventions have made it more and more uniform in practice.
STILL, IP law is officially governed nation by nation.
We’ll mainly talk U.S. law here, as it’s fairly representative & influential.

9. Types of IP IP Protectable Matter Examples chemical formulas
Trade Secrets
Any information that derives value due to secrecy
chemical formulas
Trademarks
Words/symbols that distinguish the source of goods and services
Business and product names/logos
Patents
Inventions, i.e., new, non-obvious ideas that can be put into useful practice
Devices, processes
Copyrights
Original, creative expression put in tangible form
Books, articles

22. Universities and IP
Universities have become increasingly involved in owning IP.
They often create what are called technology transfer organizations (TTOs) to manage and enforce university-owned IP.

24. Universities and IP How do universities gain ownership of IP?
Via employment / contract law, enforced mainly through a written university IP policy

26. University vs. faculty ownership
In the absence of an IP policy, to whom does IP law give initial ownership?
Under U.S. law:
Patents: the inventor (faculty) owns the invention
Copyrights: the employer (university) owns the expression

27. University vs. faculty ownership
BUT most, if not all, academic institutions now have written IP policies.
Modern trend (since 1980 in U.S.): universities claim ownership of all faculty-generated IP as a condition of employment.
They carve out specific exceptions, like “traditional scholarly work”

28. University vs. faculty ownership
BUT some faculty have pushed back, & there is a movement toward faculty ownership as the default policy.
Carving out specific exceptions for university ownership.
See the American Association of University Professors’ Defending the Freedom to Innovate report.

29. University vs. faculty ownership: some policy considerations
Which ownership model best “adds the fuel of interest to the fire of genius”?
Who best to determine what to do with IP: individual faculty or the university?
Administrative governance vs. faculty governance of academic institutions
Should public/not-for-profit institutions have a monopoly on knowledge?

32. Salk-inspired thought exercise
What if, in the distant future, we learned our sun was dying?
We knew that only certain scientists could develop an artificial sun?
BUT these scientists could instead decide to leave earth for a different, safer planet.
How would our society best motivate them to make the artificial sun for us?

33. Compare and contrast these two university IP policies:
Small Group Exercise
Compare and contrast these two
university IP policies:
Indiana University and University of Waterloo

34. Bibliography / Further Reading
The Branding of the American Mind: How Universities Capture, Manage, and Monetize Intellectual Property and Why it Matters, by Jacob H. Rooksby.
Defending the Freedom to Innovate, report by the American Association of University Professors
Model Intellectual Property Policy for Universities and Research Institutions, by the World Intellectual Property Organization