The pursuit of knowledge is one of the noblest and most admirable journeys a person can attempt. Indeed, this is one of the founding principles of most colleges and universities around the world. Unfortunately, though, the discoveries made by college students and employees are often complicated by disputes over who owns their ideas. This is especially true when money is on the line. If you're the subject of an intellectual property violation dispute with your school, it's important to arm yourself with as much information on the subject as possible.
Why Intellectual Property Matters
Intellectual property law aims to strike a balance between the creator's interests and the public's right to access and use their creations. As the academic output of faculty has become more commercially valuable, though, institutions have pushed for ownership. The Bayh-Dole Act of 1980 allowed universities and colleges to own the intellectual property created by faculty and staff under federal research grants. This allows institutions to reap significant profits from state-supported research of commercially valuable inventions. Corporations have significantly increased their sponsored research at higher education institutions ever since. While the arrangement is certainly profitable for colleges and corporations, the labor and ingenuity of college employees are often forgotten in the shuffle.
In many cases, those employed by a university do not own their original academic work. Schools own intellectual property made by their employees in the scope and course of their work. When university resources or facilities are used, the school owns the resulting intellectual property. Feeling uncertain about who owns IP? The following questions can help clarify ownership:
- Were you creating while employed at a school, college, or university?
- Were you working in a research lab, or using resources that are reserved for specific students or employees?
- Were you paid for your research?
- Beyond financial aid, did you receive funding from the school to complete projects?
- Were you collaborating with other students, staff, or university-employed researchers?
If the answer is yes, the school likely owns your intellectual property.
Types of Intellectual Property
There are four main types of intellectual property. Patents are issued by the United States Patent and Trademark Office, giving the holder the right to exclude others from making, using, or importing the invention. Trademarks are assigned to words, phrases, designs, and symbols to distinguish someone from competitors in the marketplace. Copyrights protect an artist or author's original work, and trade secrets are formulas, methods, and techniques kept secret by an organization for their potential economic value.
Universities are often focused on patents and copyright issues. School officials want to protect the research conducted on their property and with their equipment. The outcome of this work is what administrators point to when lobbying the state for funding. Without clear ownership over intellectual property, school officials may have a hard time soliciting donations from alumni.
University Intellectual Property Policies
Most schools have intellectual property policies in place to preemptively nip violations in the bud. At Boston University, for instance, their policy states that “intellectual property created by faculty or staff, or by students working on University research or other University projects, is owned by the University if it is created either: (a) within the scope of University employment, including work under University grants and contracts with third parties; or (b) with significant use of Boston University Resources.”
When intellectual property disputes arise on campus, most schools prefer to handle them in-house. At the University of Kansas, for instance, “all faculty and staff employees and students are subject to the Intellectual Property Policy of the University and to resolve questions concerning intellectual property rights and any disputes that develop under this policy. Final decisions on disputed matters will be made by the Chancellor or designee and shall constitute final University action.”
Notable IP Disputes Within Academia
A look at some of the most notable intellectual property disputes within the academic community reveals just how thorny the dynamic between researcher and institution can become. Madey v. Duke University made headlines in 2002 after the school recruited the researcher to create a world-class laser technology lab and act as its director. Duke fired Madey and continued to use his lasers which were patented before he started working for the school. Duke claimed it was operating under the “experimental use” exception, so Madey sued for patent infringement. The Federal Circuit Court of Appeals found for Madey, and the Supreme Court opted not to hear an appeal.
Chou v. the University of Chicago made similar waves in 2001. Dr. Chou, a postdoctoral student at the University of Chicago, was part of a team that discovered the vaccine for the herpes virus. Her supervisor excluded and concealed her from his application for a patent. Chou sued for correction of inventorship, fraudulent concealment, and other changes. The state court ruled that she had no grounds to sue because she was required by her contract to assign her rights to the school. The Federal Circuit reversed that decision since, under the policy, she had a pecuniary interest of 25 percent.
Education Attorney Joseph D. Lento
If you're facing an intellectual property dispute with your university, you'll want an attorney by your side to defend your rights. Joseph D. Lento brings a wealth of experience and insight to each case. Universities will employ every strategy they can to protect their right to intellectual property, and defend you throughout any university disciplinary proceedings. Without a good defense, you could see the fruits of your labor swiped out from under you. Be proactive and protect your intellectual property with the help of Joseph D. Lento. Call us at (888) 535-3686 today for help.
