Five Good Habits of University Researchers Launching Spinouts

By Sandra G. Stoneman and Matthew C. Mousley

Photo of attorney Sandra Stoneman
Sandra G. Stoneman
Photo of attorney Matthew Mousley
Matthew C. Mousley

If you are a university researcher interested in launching a startup based on an invention developed in your lab, below is a list of some key guidelines to keep in mind as you start your company: 

1) Make Use of Tech Transfer Office Resources – Most universities have a technology transfer office (TTO), center for innovation and similar office that provides general business and legal advice, facilitates commercial relationships and makes lots of other resources available to help researchers commercialize technologies.  The sooner you connect with TTO staff, the better.

2) Manage Actual and Potential Conflicts of Interest – When university personnel start companies, a number of actual and potential conflicts of interest may arise.  For example, will your time commitment to the company divert too much attention from your work for the university?  Is there intellectual property core to the company that you assigned to the university and for which the company requires a license?  Will the company use university resources to continue research and development and, if yes, is there permission through a written agreement to do so?   These actual and potential conflicts should be considered and addressed proactively and in accordance with university policies and your agreements with the company.

3) Understand Invention Assignment Policies . . . and Follow Them – Typical university invention assignment policies provide that the university owns all inventions that: (1) are created by university personnel in the course of their employment, (2) result from work at the university; or (3) are otherwise made through university time or with substantial use of the university’s resources.  Therefore, you should avoid “commingling” your work for your company and your responsibilities for the university, and you also should not use university resources to do work for your company unless it is pursuant to a sponsored research agreement or some other agreement or arrangement with the university (this includes not only lab resources, but also resources like your university-provided laptop and email address).  This is particularly important if the university receives any relevant federal funding, which could implicate the Bayh-Dole Act and further complicate the ownership and disposition of inventions.  Finally, you should make sure that any written agreement you enter into with your company is compliant with applicable university policies.

4) Submit Your Invention Disclosures – Universities generally require that when their researchers create inventions or other work product potentially the subject of intellectual property, the researchers must submit invention disclosures.  Not only are invention disclosures required by universities to track inventions from their researchers and assess commercial potential, but filing an invention disclosure is typically the first step to patenting and commercializing your invention.  Each university has its own policy, and it is never too soon to read yours carefully to make sure that you understand the disclosure requirements.

5) Co-Inventors:  Don’t be so generous! – A clear agreement on the ownership of intellectual property before it is created can avoid a number of potential disputes later.  Applicable law like patent or copyright law will determine in the first instance who is an inventor of an invention or an author of a work.  However, collaborators and other interested parties (e.g., the university and inventors) can—and should—agree up-front which original intellectual property owners are to assign rights to which intended intellectual property owners.  These types of agreements may also be required by university policy.  For example, while a research associate in the lab might actually be an inventor of an invention under patent law and receive a career benefit from being named on the patent, that research associate may not be a core stakeholder in the company or planning to stay with the university long-term.  Accordingly, the university may want to require that the research associate assign his or her intellectual property rights in the invention to the university, which may in turn license all necessary rights to the company.  This approach would efficiently consolidate intellectual property ownership while at the same time giving inventorship credit to the research associate.

In sum, it is important to understand all applicable university policies and what rights and obligations you have vis-à-vis the university, and the sooner you understand these policies, the better.

© 2009- Duane Morris LLP. Duane Morris is a registered service mark of Duane Morris LLP.

The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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