Businessperson is making a roof with hands to protect a light bulb representing an new idea.

Does your company work with a faculty or student advisor?

Take these steps to protect your IP.

Faculty and graduate students (collectively referred to as faculty) at large research universities are generally able to commercialize their expertise as employees or consultants in the private sector. However, those universities generally have detailed policies governing how much time faculty can spend on private endeavors, as well as policies governing what the university’s rights are in intellectual property created by the faculty.

Private companies looking to engage faculty to provide services would be well-served to take a few basic steps prior to engaging university faculty so that the company understands the limits to the faculty’s involvement, as well as ensuring that any intellectual property created by the faculty member is owned outright by the company.

Prior to engaging any faculty member on any basis (employment or independent contractor), the company should request all university policies governing intellectual property ownership and outside work by faculty. These policies will more often than not describe limits on the amount of time faculty may spend on non-university projects, as well as describe what intellectual property the university claims an ownership interest in.

Additionally, reviewing the faculty member’s actual employment documentation can be helpful in case there are additional rights granted to the university. Alternately, the employment documentation may have carve outs expressly stating that the faculty member retains certain intellectual property, or the right to pursue personal endeavors in a particular field.

Finally, if the company is still unclear, the university technology transfer office (TTO) can oftentimes help navigate uncertain situations. The TTO may be able to provide written clarification in the form of a release or consent to memorialize the fact that the university will not claim an interest in work product created in the course of an engagement with a company.

By proactively taking these steps, your company can benefit from the expertise of a faculty advisor while minimizing the risks associated with engaging university faculty or students. For questions or more information, contact Matt McKinney mmckinney@kofirm.com.

 

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