Technology Transfer Tactics

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Researcher push-back at Pitt prompts changes

Faculty ire over IP assignment illustrates continuing struggle in wake of Stanford v. Roche
When the University of Pittsburgh attempted
this summer to update its intellectual property
assignment processes -- with an eye directly on
the Supreme Courts ruling in Stanford v. Roche -the pushback from faculty was so strong the
school withdrew its proposal and retooled it. In a
just-announced move, the university now offers
innovators three options for assigning IP rights to
Pitt; officials are assembling researchers signatures this month.
All three options, of course, lead to the same
place: Pitt ownership of the IP. And thats the way
it absolutely must be, experts agree.
In an October 24 letter to faculty, staff and
students obtained by Technology Transfer Tactics,
Patricia E. Beeson, provost and senior vice chancellor at the school, notes that the drama began
in August when her office requested that faculty
sign a new agreement explicitly assigning IP
rights to the university, consistent with university policy. There were, the letter concedes, concerns raised by faculty about the language of the
agreement. Local news media reports at the
time characterized the concerns as resistance to
a blanket IP assignment policy. Some researchers
asked, in fact, for the right to negotiate IP assignment on an invention-by-invention basis.
In response, Pitt formed an ad hoc faculty committee to advise on more revisions to the assignment form. In the late October letter, Beeson reveals
that innovators at Pitt now have three possible
courses of action. Those who signed the August
agreement need do nothing more; others can sign
the new form or a new Intellectual Property Rights
Acknowledgement Form. Beeson is clear in the letter: Starting November 21, faculty members sub-

mitting federal grants or contracts through the

Office of Research or receiving funding from an
active federal grant or contract will be required to
execute one of the three agreements.
In the letter, Beeson makes two important
points. For one, she says, as a condition of receiving federal support, funding agencies require the
university to have agreements in place with individual faculty that protect the governments interest in IP developed as a result of research supported by federal grants and contracts. She adds:
Corporate and foundation contracts and material
transfer agreements increasingly require [such]
agreements.
The second point cuts to the proverbial chase.
The university has obtained written agreements
from new faculty and staff for many years, the letter notes, but [they] have not been consistently
obtained and the university has determined, as a
matter of contract administration, that we need to
confirm by a certain date that we have the necessary agreements in place. And, she emphasizes,
regardless of which agreement [an inventor]
chooses to sign, University Policy 11-02-01, established in 1985 and revised in 2005, requires prompt
disclosure of inventions and asserts the universitys
ownership of the worldwide patent and IP rights.
Of course, as the letter also points out, that policy specifies that an inventor is entitled to share in
the proceeds from the licensing or other transfer of
patent rights or other IP rights. Thats normally
30% of the net financial return; if university policy
changes to more favorable terms in the future, and
an inventor has opted to sign the old or the new IP
assignment document, he or she will be entitled to
the more favorable economic terms.

Reprinted with permission from Technology Transfer Tactics, Vol. 8, No. 11 November 2014, Published by
2Market Information, Inc. Copyright 2014. For subscription information, visit www.TechTransferCentral.com

The agreement offered in August is Option 1

under the new IP assignment regime. It meets the
universitys obligations to federal funding agencies
and assigns patent rights to the university consistent with existing policy. Option 3 is a basic requirement for receiving federal funding. The
Acknowledgement Form fulfills the universitys
obligations to federal agencies, the letter says,
adding: By signing [the] agreement, you will agree
to abide by university policy regarding patent
rights and technology transfer, including your
responsibilities to disclose inventions and take steps
necessary to protect sponsors rights in the IP.
The form also confirms that you have not
entered into other agreements that would limit your
ability to meet [that] obligation. Signing it replaces
the August form, but it does not supersede or
replace any other assignment agreements you have
executed prior to August 2014.
Option 2 reflects the universitys efforts to
acknowledge faculty pushback to the August
attempt -- and to take Stanford v Roche by the
horns. It incorporates suggestions made by the
ad hoc committee to clarify and improve the original assignment agreement, Beesons letter says,
and it protects your own interest should you
inadvertently assign rights to a third party, as was
the case in Stanford v Roche. As well, the letter
says, signing Option 2 will facilitate processing
of third-party agreements that require the university to demonstrate ownership of IP developed
under the contract, as is often the case with MTAs
and corporate contracts.

I hereby assign
Other universities have directly addressed the
Stanford v. Roche ruling, and Baltimores Johns
Hopkins University is one of them. We made a few
small changes to the IP policy to include the hereby
assigns language suggested by Stanford v Roche,
reports Wesley D. Blakeslee, who recently retired
as executive director at Johns Hopkins Technology
Transfer. Indeed, he emphasizes, the TTO made its
own decisions about what to change -- in consultation with an attorney and former member of the
general counsels office, as well as the general counsels office itself. The JHTT head drafted it, he
says, and the general counsel reviewed it.
The University of Notre Dame (IN) also
tweaked its assignment processes after the ruling.

Just prior to Stanford v Roche, Notre Dame had

modified the standard invention disclosure form to
change from a promise to assign to an actual assignment upon submission of the invention disclosure,
says Richard Cox, director of the Office of
Technology Transfer there. But the case hastened
our adoption of the new invention disclosure form
and encouraged us to make sure that copies of the
old form that were floating around were quickly
substituted with the new form. He adds: Weve
also added a couple of leading questions to the
research proposal form to try to identify projects
that may generate new IP so that we can begin to
interact with the PIs at an early stage and throughout their research projects.
Attorneys who work with tech transfer offices
have seen the same thing. Our university clients
had policies in place for the ownership of inventions made by their faculty and students before the
decision in Stanford v Roche, says Janet M.
MacLeod, PhD, a partner at Fox Rothschild LLP,
New York, but the decision certainly prompted
them to review those policies. Before Stanford, she
adds, it was widely assumed in the university
technology transfer community that the Bayh-Dole
Act automatically granted federal contractors,
including universities, full title to inventions developed at their institutions in whole or in part with
federal funds. The Supreme Court found to the
contrary, though, so effective assignment agreements from the universitys inventors to the university are necessary for the university to take title to
the inventions.
Christopher F. Wright, a partner at Radnor,
PAs McCausland Keen & Buckman, agrees.
Following the case, many institutions updated
their policies to make sure that the grant of rights
was contemporaneous -- i.e., I hereby assign
instead of I agree to assign, he says. More
importantly, hopefully all institutions have now
faced the reality that they must implement a
process to collect signed assignments from all of
their employees.
Indeed, all the experts caution against placing
too much emphasis on the Stanford case. It was
an anomaly based on specific facts and specific
law applicable to those facts, Blakeslee comments, so its hard to generalize that result
nationwide. In fact, he emphasizes, many states
laws would have found that the prior agreement
of the faculty member to assign inventions to the

Reprinted with permission from Technology Transfer Tactics, Vol. 8, No. 11 November 2014, Published by
2Market Information, Inc. Copyright 2014. For subscription information, visit www.TechTransferCentral.com

university was primary, and all that he was then

able to do was make that promise to the Roche
predecessor subject to his existing obligation to the
university. Instead the court ignored the prior
agreement, finding on the hereby assigns versus
agrees to assign distinction.
Wright puts it like this: From my perspective,
the Stanford case confirmed, rather than changed,
the best practices advice that I had been giving my
clients for more than a decade: To ensure the
enforceability of IP policies, institutions need to
require advance contemporaneous written assignments of future IP rights from all of their faculty
and research employees.

Tips for locking down assignment

Making that happen is, of course, the hard part.
Its easy in principle but can be cumbersome to
administer, Wright says. Heres what the experts
advise:
Start at the beginning of the invention
process. Hopkins includes the written assignment
to the university on the invention disclosure form,
Blakeslee says. I recommend that. When the TTO
receives the disclosure, the invention is assigned to
the university, and thus it is reasonable for the university to engage in the activities necessary to evaluate the invention.
Gain assignment upon employment if at all
possible. Require each new faculty member and
research employee to sign contemporaneous
assignments as part of the intake process at the
commencement of employment, Wright suggests.
Most commercial entities already tackle the analogous issue by requiring new employees to sign
confidentiality/IP agreements on their first day of
employment. Dont forget to preserve the signed
agreements in case of a dispute, he adds. He
advises then requiring a signed supplementary
specific assignment of IP following each invention
disclosure of patentable or copyrightable IP from
all inventors and authors, which can then be used
for recording purposes at the USPTO or the
Copyright Office.
Stay on top of every opportunity to snag an
assignment agreement. After commencement of
employment and submission of an invention disclosure form, another opportunity is when the patent
application is filed, notes Daniel W. Young, an
associate in the biotechnology group at Bostons

Wolf Greenfield & Sacks PC. Most universities

review written invention disclosure forms for purposes of deciding which theyre willing to support a
filing on, he says. Because those disclosures contain detailed technical information, including
assignment language in such forms can be an effective way to obtain a present assignment that is specific about whats covered.
Dont give in to faculty demands for case-bycase assignment of IP rights. Thats not feasible in
my opinion, Blakeslee comments. Tech transfer is
a huge cost to a university, and some of that cost is
offset by the fact that some, not all, inventions have
some value. That value needs to be obtained to
enable the operation of a TTO, and that would not
work if faculty could choose not to assign all technologies. MacLoed agrees. What would be the
criteria for determining whether rights would be
assigned? she asks. Also, for inventions made
with federal funding, ownership of IP by the university is necessary to achieve the purposes of the
Bayh-Dole Act.
Give researchers the tools they need.
Education of researchers on university policy and
best practices, as well as the requirements of the
Bayh-Dole Act, is critical, MacLoed asserts. One
point that should be emphasized in this discussion
is that although the university owns the IP, the
Bayh-Dole Act and many university policies provide that that the university share with the inventors a portion of the net licensing revenue generated
by the invention.
And make sure you know what else your
researchers are up to. Blakeslee advises carefully
managing outside consulting by faculty, and notes
that JHU requires clauses that must be in faculty
consulting agreements that protect the universitys
IP rights.
At the end of the day, the law is the law,
Young notes. If the university wants rights in an
invention, it needs to get assignment in writing.
One way or another, you need to find a way to balance an environment of scientific freedom with contractual needs.
Contact Beeson via Ken Service, vice chancellor for
communications, at 412-624-2795 or kservice@pitt.edu;
Blakeslee at 410-516-8300 or wes@wesblakeslee.com; Cox
at 574-631-5158 or rcox4@nd.edu; MacLoed at 212-9052301 or JMacLeod@foxrothschild.com; Wright at 610341-1026 or cwright@mkbattorneys.com; and Young at
617-646-8245 or daniel.young@wolfgreenfield.com. 

Reprinted with permission from Technology Transfer Tactics, Vol. 8, No. 11 November 2014, Published by
2Market Information, Inc. Copyright 2014. For subscription information, visit www.TechTransferCentral.com