The scenario is not at all uncommon for TTOs: Resources are never adequate to actively work every invention file, and faculty IP that doesn’t get the attention a researcher wants creates a dilemma for the university. Though the innovations involved may be valuable, if they are dormant too long a decision must be made — either move them to the front burner or give them back to the inventor and give up any claim to future revenues. But what happens if the TTO decides it wants to keep ownership while the inventor, frustrated by a lack of progress, wants the IP signed over? A case in point now playing out in court is the University of Missouri’s lawsuit against engineering professor Galen Suppes, PhD. The school claims that Suppes and his business partner, William “Rusty” Sutterlin, are refusing to release the rights to more than 30 inventions and 11 potential patents that were developed in university labs. Suppes counters that the school failed to recognize and pursue the commercial prospects for his research while throwing up barriers designed to prevent him from moving forward.

Publicity surrounding the case has prompted TTOs around the country to review their own policies on returning the rights to innovations back to inventors. Experts recommend a thorough review of your own policies and procedures, as well as several steps to reduce the likelihood your university gets embroiled in a similar dispute. Ronald Kudla, PhD, MBA, CLP, executive director of the Office of Intellectual Property, Technology Transfer, and New Ventures at Rensselaer Polytechnic Institute (RPI) in Troy, NY, points out that his institute’s IP policies and procedures are all published on the school’s website. But beyond that, the TTO goes out of its way to make sure inventors are properly informed. “We receive [disclosures] in writing, but then we follow-up with verbal [communications], and that gives us the opportunity to explain our policies and answer any questions related to the management of the disclosure, the decision-making process, and so forth,” he says. If RPI decides to pass on the IP involved, it is very willing to waive the invention back to the inventor, but they do insist on clearly spelled out conditions to such waivers:

• the invention is returned as it was disclosed to the TTO and does not include subsequent improvements;
• the inventor(s) will not use RPI resources to further improve the innovation;
• if the inventor successfully commercializes the innovation, RPI will be reimbursed for any subpatent costs;
• the inventor agrees to be responsible from the date of the waiver for all expenses related to the further protection, patenting, and licensing of the technology;
• RPI retains the right to utilize the disclosed technology or IP for research and education purposes, but not commercialization.

A detailed article on steering clear of disputes over dormant IP appears in the April issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted April 22nd, 2009 under Tech Transfer

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