Drafting a new Intellectual Property (IP) policy is not for the faint of heart. ITN arranged a conference call this morning between one of our liberal arts colleges and our university partner supporting ITN on IP questions. The Director shared a few items for consideration and potential road blocks for companies, faculty and the universities as they draft new policies. It was interesting to hear the crazy circumstances that creep up in university-based IP development.
Major topics on the call included questions around how to treat students (graduate students vs. undergraduates) as they get involved in projects. What happens when students move into the lab and begin working on specific research? Are medical and law students treated the same as students involved in research?
The age-old issue of getting agreements in writing appears to be a step people still avoid. It’s a simple step that can eliminate many a sleepless night and large investments in legal battles if parties would simply take the time to document their mutual understanding prior to moving forward. This doesn’t have to invovle the next iteration of search technology either. Issues can be as simple as developing new website designs (created by students) or faculty course design. Laying out who owns the final product in advance can go a long way in saving relationships.
Joint ownership of IP, and assigning patents to companies or back to faculty, are additional tricky and potentially time consuming endeavours. If ownership of IP is between multiple parties (either people or people/colleges/universities), there are specific items to discuss on how those parties can move forward on development. And if outside funding has occurred to support IP development, meaning an NSF or NIH grant for example, then approval for assigning IP becomes more involved - and takes longer.
When faculty members want to pursue starting a company and integrate their IP into the start-up, things get really interesting. Is the role of the faculty member as company owner or as a key management team member? Will the university take an equity stake to license the technology or not? Will a specific faculty member’s skills translate to strong start-up company leadership? (Most investors say no.) These were all part of the dialogue.
For colleges and universities looking into a new IP policy, tapping into a qualified IP resource for Q&A early in the process can be a big help, and time-saver. You might also want to take a look at Wendy Kennedy’s “So What? Who Cares? Why You?” It’s a reader-friendly, colorful workbook for those seriously considering launching a company - whether faculty or not - and can be a valuable handout. The more access everyone has to simple, easy-to-read guidelines and forms, the smoother the process can be for all parties involved.
