Employees urged to get intellectual property assignments on the books

One of the aftereffects of a 2011 U.S. Supreme Court ruling on a Stanford University patent dispute is playing out at Iowa State this spring. Starting March 1, Iowa State officials are encouraging all faculty, professional and scientific staff, postdoctoral scholars and graduate assistants to assign intellectual property (IP) rights to the university.

The request doesn't represent any change in policy, university counsel Paul Tanaka said. Currently, employees must assign intellectual property to Iowa State if, for example, it's federally or privately funded, or substantially supported by Iowa State.

Open forums on IP

University counsel Paul Tanaka, research foundation in-house counsel Donna Johns and associate vice president for research Wolfgang Kliemann will answer questions on intellectual property assignments at two open forums:

  • Feb. 24, 10 a.m.-noon, Memorial Union, Campanile Room
  • March 3, 3:10-5 p.m., 1213 Hoover Hall

Stanford lesson

What's new, Tanaka said, is the attempt to get faculty, staff and students to make those IP transfer agreements now, to avoid conflicting agreements.

The lack of a timely IP assignment cost Stanford and its researchers dearly five years ago, Tanaka said. Stanford sued a drug company, claiming the company's HIV testing kits infringed on the university's patents. The Supreme Court (Stanford University v. Roche Molecular Systems Inc.) ruled the drug firm was co-owner of the patents because a Stanford research fellow, while conducting some research at the company, had signed a visitor confidentiality agreement that included assignment of patent rights.

"If the Stanford researcher had already assigned the intellectual property to the university, he wouldn't have had anything to assign to Roche when he signed the subsequent confidentiality agreement," Tanaka said.

Tanaka said something similar could happen at Iowa State, where ISU researchers frequently consult with corporations.

"We don't see every consulting agreement," Tanaka said. "Some could have intellectual property assignments in them. The only way to assure that we could claim intellectual property in such cases is to have first-in-time assignments. We hope to secure those assignments this spring."

What's covered, what isn't

The ISU intellectual property assignments only apply to certain areas, Tanaka said.

This generally includes intellectual property that:

  • Is owned by Iowa State, under university policies or through contract or sponsored research agreements
  • Is copyrighted material specifically developed for the university, for example, recruitment brochures, which are considered proprietary, software, or other copyrightable materials created under a sponsored funding agreement

The intellectual property assignments generally don't apply to faculty's scholarly works such as:

  • Journal articles
  • Musical compositions and artistic works
  • Novels or poetry
  • Textbooks

Assign IP through AccessPlus

Faculty and staff hired since summer 2015 already have assigned their intellectual property to Iowa State. The assignment was included in their electronic letters of intent.

The remaining faculty, P&S staff, postdocs and graduate assistants will be asked to assign their intellectual property to Iowa State the first time they sign into AccessPlus on or after March 1. A front-page message on the site will allow employees to complete the task by clicking the submit button.

It's encouraged

"I encourage people to sign," Tanaka said. "We're a university of science and technology, and we need to assure that intellectual property can be licensed to third parties without conflicts. Employees may defer action on assigning their intellectual property.

"However, when there are several members of a research team, everyone needs to assign their intellectual property. Otherwise, it may damage the integrity and marketability of the invention, resulting in potential loss of income to inventors and the university."

Those who assign their IP rights now also help lower administrative costs, Tanaka said. "Administrative costs and frustration balloon if you need to get an assignment in place every time someone joins a research team," he said.

Tanaka noted that employees whose jobs seem far removed from tech transfer activities may feel their intellectual property assignments aren't necessary. It's better to be safe and make the assignment, he said. As an example, some members of athletics training staff may have appointments in kinesiology. If they wind up on a research team, their intellectual property assignments are essential.

ISURF's role

The Iowa State University Research Foundation (ISURF) owns and manages patentable intellectual property and some copyrights assigned to ISU by its employees and students. ISURF works to move that intellectual property to the marketplace. Royalty income is shared with inventors and college/administrative units, in addition to funding ISURF and OIPTT operations.