Last month, Technology Transfer Tactics ran an in-depth article on best practices for handling departing faculty researchers, post-docs, visiting researchers, and the like. As one of the sources quoted, I was pleased to see the thorough treatment this topic received, because bad things can happen if you don’t stay in front of intellectual property (IP) issues when it comes to transitioning faculty:
- Inventions that are not properly disclosed may “walk off” to the new institution or a startup.
- Active licenses may include obligations for the researcher to provide consulting support, which may be impacted by the researcher’s departure.
- Newly transitioned faculty who are not well versed about IP may pursue research and commercialization activities at the new institution without considering what is/isn’t appropriate.
- It could lead to unpleasant legal battles, such as the case in California I talked about this past summer and that prompted the TT Tactics article.
There was a lot of great advice in the TT Tactics article. Here’s my take on a few key recommendations.
Document, Document, Document
I can’t stress this enough, so I’m putting it at the top of my list. 🙂 Documentation allows you to draw a clear line in the sand about what IP (reported or pending) existed before the transition so that you can take steps to manage any anticipated issues and best handle any issues that actually arise over the long term. It also avoids a “he said–she said” type of situation. Plus if you can demonstrate that you did your due diligence to identify the issues and inform/educate the researcher and the other institution, you have a better defense in a lawsuit if things take a turn for the worse.
To get you started, Fuentek has developed a form that can serve as the structure of a checklist for departing faculty. We’ll be distributing this form via our quarterly newsletter The Fountain next month — subscribe here.
To ensure the TTO stays ahead of the IP issues, take an active role in getting the information you need. All of the best practices we’re talking about are important routine activities. Fortunately, in most cases, they should not be very time consuming for the TTO. In fact, many of these tasks can be done by administrative staff, particularly if you provide the support person with a form to fill out.
Find Out Who’s Coming and Going
Maintain close, ongoing connections with your institution’s human resources department, the office(s) in charge of sponsored research, the deans/chairs of research departments, etc. so you know whom you need to follow up with in a timely fashion.
Before Faculty Leave, Do Your Homework
When you learn of researchers’ impending departure, set up a time to have an exit interview a month or two (or even three) before they leave. Before that meeting, check the records to be clear about:
- The inventions they already disclosed, so you have a starting point to determine if there’s anything they haven’t yet reported
- A list of their research grants and contracts to determine if any invention disclosures are due before they depart
- Any needed signatures, particularly for assignments on patent applications
- Whether any established or pending licenses for the researcher’s IP include obligations to consult
Meet with Incoming Researchers
In addition to participating in new faculty orientation, I recommend having an intake meeting with them, especially if they are already established in their career and have conducted research prior to coming to your institution. This is also a great opportunity to make sure your TTO is on their radar screen and they know when and how to interact with you.
The main questions for that meeting are:
- Do they have any invention disclosures or pending/active patents or licenses owned by the prior institution?
- If so, how will the research they will be pursuing at your institution likely relate to that commercialization activity?
Depending on the answers, ask the researcher for the tracking numbers and other key details for the relevant disclosures and patents. Then reach out to the researcher’s previous institution to identify next steps (see below).
Flag Disclosures for Newly Arrived Faculty
Kelly Sexton at N.C. State University rightly pointed out that overlap in invention disclosures filed at two different institutions can be an issue. So I recommend establishing an alert system for invention disclosures from the new faculty to help ensure that the technology evaluation appropriately considers any sticky IP situations.
The more automated this can be, the better. For example, as longtime users of Sophia, we know you can easily set up an alert so the system sends an email to a TTO staff member when a particular inventor submits an invention disclosure. You can even date gate the alert so that it stops after a certain period of time.
Pay Special Attention to Startups
Faculty members are typically obligated to notify the university of their relationships with startup companies, but that notification may not routinely reach your office. So this is something for you to check on.
If an incoming or outgoing faculty member is associated with a startup (as an officer, employee, equity holder etc.), your TTO will need to be kept updated to be able to flag any potential conflicts of interest as they arise when assessing commercialization options. For example, researchers may be disincentivized to notify you of other companies that may be interested in licensing their research if they have a vested interest in a startup company that is also a potential licensee.
Another aspect to monitor when it comes to startups relates to the SBIR/STTR* program. Faculty startups commonly subcontract with the university for a portion of their SBIR/STTR research. This is generally favorable for all involved, including the public, but it may require careful and proactive management of any potential conflicts of interest.
Start Your Relationship with the Other TTO
Whether the faculty member has just departed for or arrived from another institution, that institution’s TTO is now part of your life. In fact, you might eventually be partners, since joint marketing and licensing might be productive/appropriate for some IP.
So I recommend making a courtesy call (or at least sending a boilerplate email) to introduce yourself to the other TTO and let them know you’ve documented the IP situation at the time of the transition and ask them to contact you in the event any questions arise in the future. This will make it easier to establish one (or more) of the following agreements if it becomes appropriate:
- Non-disclosure agreement: It may be necessary to put an NDA in place to determine whether other agreements are needed. For instance, if research will be continuing in an area where you have confidential information, you’d need an NDA if the institutions want to discuss joint marketing of technology that is not co-owned.
- Research license: When researchers plan to continue to use IP owned by their former institution in their new role, it is prudent to put a research license in place between the two institutions to protect both of their rights. Many times a fairly simple letter agreement will suffice.
- Inter-institutional agreement: IIAs can be time consuming to put in place, yet they might be essential to maximize the chance of commercializing technology by bundling it to enhance its attractiveness to industry. This is particularly true concerning improvements on prior IP.
Taking a proactive approach in this type of situation is Fuentek’s specialty. If your institution needs assistance in developing and implementing the strategy, processes, and/or procedures to achieve effective management of faculty transitions, contact us today. And, again, subscribe to The Fountain to receive a copy of our forthcoming exit interview form for outgoing faculty/researchers.
*Small Business Innovation Research/Small Business Technology Transfer (http://www.sbir.gov)