1. 1 INTELLECTUAL PROPERTY AND RELATED RIGHTS What Goes Out the Door When a Researcher Does? Presented by Gail Norris University of Rochester Office of Technology Transfer

2. 2 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

3. 3 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

4. 4 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

5. 5 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)

6. 6 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

7. 7 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.

8. 8 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

9. 9 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

10. 10 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)...

11. 11 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

12. 12 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

13. 13 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

14. 14 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

15. 15 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

16. 16  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?