The article below appeared in the September 2009 issue of Technology Transfer Tactics. Click here to subscribe.

“We came very late to the game of technology transfer,” says technology transfer director Bill Gathings. “I was recruited three years ago to set up the office, and we just started in December 2006. We’re still educating people on campus. The new patent policy change was a clarification of assignment, obligations and ownership of intellectual property by the university so faculty, staff and students understood it.”

After launching the TTO, Gathings soon discovered that existing policy failed to even mention students with regard to IP rights for inventions that emerge from their work at the university. “The way we’ve been managing it, when a faculty member employs a student, we were just handling obligation to disclose via a letter of agreement individually. This formalizes that policy,” he says.

The newly amended policy stipulates that any invention or discovery that results from research carried out by or under the direction of an employee that uses UA resources or facilities is “automatically assigned to the university . . . immediately upon creation or discovery or reduction to practice.”

The new policy is also inclusive of anyone on campus who works to develop a new invention or discovery: “As a condition of their employment by or enrollment at a campus of the university, each faculty member, employee and student agrees that he/she shall be contractually bound by this patent policy . . . ” (For the entire policy text, click here.

Obligations to disclose

Gathings says the impetus for the policy clarifications stems from the university’s duty to research sponsors. “We have obligations to sponsors of research to disclose, and it’s meant to protect the university on their obligations too,” he says. Accepting funding from government agencies and corporate sponsors presents a legal obligation to identify and protect any inventions that may be patentable resulting from related work. “On the plus side,” Gathings adds, “it gives undergraduates the option to file disclosures and to have us help protect inventions they are party to.”

He says that every university, large and small, should review and, if necessary, strengthen their patent policies. Other key clarifications at UA include:

• Each campus president must appoint an officer or patent committee (or designate a non-profit organization established for the benefit of the campus) to administer this policy.
• The patent policy is deemed to be a condition of employment and contractual obligation, both while employed and thereafter. For students, it is a condition of enrollment.

Once IP is secured and after the university takes a 15% cut to cover administration overhead costs, any revenue stream from inventions is split equally between the institution and the inventors. “I did a benchmarking study on this. Sharing 50-50 is fairly generous,” Gathings says. His small staff of three is working to communicate the new policy to everyone on campus.

“We’re explaining it to them so they don’t think we’re trying to take anything away from them,” he says. “We have a very active office; we’re increasing disclosures. We’re doing more licensing. After only three years, we have no big hits yet. But once we get started generating income, we think the new patent policy will be especially well received.”

To communicate the policy and promote commercialization opportunities, the TTO has made announcements in online publication and during orientation. Staff also plan to visit each individual department to advise faculty and staff on the policy changes.

From start to finish, Gaithings reports, the process of creating a new patent policy took a year.

Contact Gaithings at 205-348-3505 or wegathings@bama.ua.edu.