A principal investigator (PI) must not knowingly assign similar rights to an invention to more than one sponsor and must carefully review all agreements for conflicting obligations. As a requirement of sponsored research PIs must file invention disclosure reports and when required, assign rights to inventions to WARF.
PIs must not knowingly assign rights to an invention to more than one sponsor
In any agreement with an extramural research sponsor, the principal investigator must consider the existing contractual obligations of the university or the researcher(s). This is especially important where the agreement under negotiation is for research that has the same or similar purpose as research conducted using personnel or resources that are funded, however minimally, by another sponsor. Obligations under existing federal or other extramural sponsorship agreements must be identified and reconciled with the agreement under negotiation. Failure to reconcile potentially conflicting claims to ownership of intellectual property may result in a lawsuit for breach of contract against the university and damage the professional reputation and credibility of the researcher.
When developing proposals, the principal investigator must carefully consider any concurrent and previously funded projects, as well as any individual agreement, such as a consulting agreement, the principal investigator may have. The principal investigator should not knowingly develop a project proposal in which the subject matter would create a conflict regarding intellectual property rights assigned in other agreements, including any individual agreements.
Principal investigators and others involved in the research should also consider whether the assignment of intellectual property will have an adverse impact on their ability to seek future funding from other sponsors.
When the same or similar research is supported with federal funds, however small the amount, a non-federal sponsor may receive rights to an invention only as is consistent with federal law. This may be accomplished through a license agreement obtained from WARF. For copyrightable works from research supported in part with federal funds, a non-federal sponsor may receive only such rights as are not reserved by the federal funding agency’s regulations or the federal funding agreement.
PIs need to review Material Transfer Agreements for conflicting obligations
Problems can arise when an MTA also provides for a grant back to the company of a license for the use or ownership of new materials or inventions made by the researcher. As with funding agreements, it is essential that the researcher carefully examine all commitments made in the MTA in light of past and future obligations relating to funding. If materials received from one company and covered by an MTA are to be used in research funded under a consortium or a grant from another company, access rights to inventions must not conflict.
If an invention covered by an MTA was supported with federal funding the provider may only receive such rights as are consistent with obligations under federal law.
The university assumes that a researcher who transmits an MTA has read and agrees with all of its terms. Unless a provision of the MTA is inconsistent with the federal law relating to inventions or other state laws or University policy, the university will sign the agreement as transmitted.
PIs are required to disclose inventions to WARF
To assure the university’s ability to comply with obligations arising under federal laws or in extramural sponsor agreements, faculty, staff, and students participating in sponsored research are required as a condition of such participation to file disclosure reports for any invention or discovery that was made during the course of their University activities. Other Board of Regent policies may apply to intellectual property created outside of sponsored research and require a discovery or invention, made by any member of the faculty, staff or student on appointment while pursuing his/her university duties, or on university premises, or with university supplies or equipment, be reported to the Chancellor or his/her designee. The principal investigator for a sponsored research grant is responsible for assuring that an invention disclosure form is filed for any such discovery. The person filing the invention disclosure form is responsible for providing complete and accurate information as required on the form, and transmitting the form to WARF. WARF forwards the invention disclosure form to the Office of the Vice Chancellor for Research and Graduate Education, which is responsible for determining the disposition of the intellectual property rights and for any required notification, whether to the federal government or other extramural sponsors.
PIs may be required to assign rights in inventions to WARF
If the equity review and determination results in a finding that an invention is funded in whole or in part by a federal agency or if the sponsored research agreement requires the university to grant rights in the invention to a sponsor, then an inventor is required, if requested by WARF, to assign rights in such invention to WARF and execute papers necessary to establish the federal government’s or other sponsor’s rights.
PIs must require all appropriate project staff to sign the Intellectual Property Agreement for Project Participants to protect the rights of extramural sponsors
The university must have written agreements with persons performing the research, other than clerical and non-technical employees, requiring prompt disclosure of inventions and, if requested by the university or WARF, assignment of rights to any disclosed invention conceived or first actually reduced to practice in the performance of work funded in whole or in part by the federal government. The agreement developed by the university for this purpose is the Intellectual Property Agreement for Project Participants.
The principal investigator is responsible for assuring that appropriate signatures from project staff are on file prior to their commencing work on a project. The principal investigator is also responsible for maintaining a copy of the agreement with project staff signatures. Principal investigators should remember that they may not obligate the intellectual property of project staff unless such staff have signed an intellectual property agreement prior to commencing work. While project staff signatures may not seem important at the time a grant or contract is being processed and may be far removed from the actual making of an invention or creation of other intellectual property, in fact they are very important. Failure to obtain such signatures may lead to a lawsuit for breach of contract and may also jeopardize a patent or copyright or other types of intellectual property protection.