Company Moving Checklist by fkb29462


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									          Marie Kerbeshian, Senior Negotiator, University of Virginia Patent Foundation                                                                                                                             David Hudson, Associate Vice President for Research and Graduate Studies, University of Virginia

                                                                                                           What’s in that styrofoam cooler shipped from the                                                                                                                         Ghosts of patents past . . .
                                 Abstract                                                                               old lab to the new lab?                                                                                                                                                                                                                                                    Duke v. Madey: without a license, use of the old institution’s
    When faculty change institutions, there are a host of administrative tasks for                                                                                                                                                           patents from the old institution that cover research activities the faculty is conducting at the new
                                                                                                        research reagents developed by the faculty member at the old institution                                                                                                                                                                                                                  patent by the new institution is patent infringement by personally
both the former and new institution, ranging from stopping/initiating payroll to                                                                                                                                                             institution
                                                                                                                                                                                                                                                                                                                                                                                                  signing the old institution’s standard MTA and shipping       material
clearing the old and new laboratories of chemical waste to assuring that academic                                                                                                                                                             Put a license agreement in place. (But keep it short and simple.)
credits transfer for any accompanying graduate students. It is a rare faculty                               Put a Material Transfer Agreement in place.
                                                                                                                                                                                                                                                                                                                                                                                                  from the new institution

member who realizes that along with the lab notebooks and freezer samples, he or                                                                                                                                                                 Does it extend to all the new institution’s employees, or just those working with the faculty member?
she may also be moving intellectual property. No university wants to be surprised                                  Does the old institution or the new institution take over future distribution of the material?
                                                                                                                                                                                                                                                 Does it terminate if the faculty member leaves the new institution?
by a company’s proprietary material ending up on campus sans MTA, nor does the
tech transfer office want to puzzle out ownership of derived materials when the
                                                                                                             Can the new institution commercialize modifications of the material?                                                               Can the new institution commercialize inventions made using the patent?
university does not have permission to possess the originals. And imagine a                                  Can the new institution commercialize inventions made using the material?
faculty member’s surprise to realize that his or her patent from the previous
institution might block continuing research at the new university. At the University                         If an MTA was not done at the time the researcher changed institutions, you can usually clean up                                 If an exclusive license agreement is already in place between the old institution and a company, any subsequent
of Virginia, we are developing “Moving Day Checklists” to prompt questions about                        any problems after the fact by putting a retroactive MTA in place between the old and new institutions.                              license between the two institutions is subject to the restrictions of the existing license.
IP transfers for both faculty leaving and faculty joining our institution.                              If there is commercial interest, an inter-institutional agreement may be more appropriate to include
                                                                                                                                                                                                                                                Is the field of use licensed to the company different from the field of use of the research by the faculty
                                                                                                        revenue-sharing between the two institutions.
                                                                                                                                                                                                                                             member at the new institution?
                                                                                                                                                                                                                                                 Was the original invention made using NIH funds? Did the original license agreement permit the sharing of                                               old institution licenses a faculty’s patent to a company; at
                                                                                                                                                                                                                                                                                                                                                                                                         the new institution the faculty member uses a method
                                                                                                        Sample proposal to the old institution that we have used in the past:                                                                research tools according to NIH guidelines?
                                                                                                                                                                                                                                                                                                                                                                                                         covered by the patent to invent a new technology not
             researcher personally signs an MTA on                                                     “Though the ownership issue involving the Materials is rather complicated, we are sure that, given enough research and legal             The company may grant the new institution a sublicense for research purposes in exchange for an option to                                              dominated by the prior patent
            behalf of both the old and new institutions to                                              assistance, we could determine with particularity which Materials are owned by you, and which are owned by UVA.                      any new inventions.
                                                                                                        However, we feel that such approach does not make a great deal of sense in this case, once one considers the transaction costs
            transfer a material he developed at the old                                                                                                                                                                                      Sample language we include in license agreements with a company:
                                                                                                        involved and small market for such Materials. Therefore, we would like propose that you permit the UVA Patent Foundation
            institution; at the new institution, researcher                                             to make the Materials widely available for licensing, to license the same to interested parties, and to share equally with you all
            modifies the material and there is commercial                                                                                                                                                                                    “Reservation by Licensor The above grant is subject to a reservation of rights by UVAPF for itself and UVA to practice under the Licensed
                                                                                                        licensing revenue we receive for such activities, irrespective of whether the Materials we license are owned by you or by
                                                                                                                                                                                                                                             Rights for educational, research, patient care and treatment, and other internal purposes. UVAPF further excludes from the license granted
            interest in licensing the modified material                                                 UVA. Each university would then distribute royalties according to their respective patent policies.”
                                                                                                                                                                                                                                             herein the right to bring an infringement action against, seek monetary damages from, or seek an injunction against, any Inventor or their
                                                                                                                                                                                                                                             present or future not-for-profit employers even after such employment has ended, for infringement of any of the Licensed Rights in carrying
                                                                                                                                                                                                                                             out not-for-profit research. Nothing herein shall be construed to require UVAPF to bring any such action against any such party. Such
                                                                                                        research reagents transferred from a third party to the old institution                                                              reservation shall further include the right to provide Licensed Know-how, and to grant licenses under the Licensed Patents, to not-for-profit
                                                                                                                                                                                                                                             and governmental institutions for their internal research and scholarly use only, in accordance with the NIH Guidelines for Obtaining and
                                                                                                            Chances are any original MTA from the third party to the old institution doesn’t allow subsequent                               Disseminating Biomedical Research Resources (as published in the U.S. Federal Register / vol 64, No. 246 – 12/23/99).”
                                                                                                                                                                                                                                                                                                                                                                                                    faculty member on sabbatical is subject to visiting institution’s
                                           researcher distributes material by personally               transfers. Try putting a new MTA in place directly from the third party to the new institution.
                                          signing the old institution’s standard MTA and                                                                                                                                                                                                                                                                                                           patent policy, but faculty member plans on working on research projects
                                          shipping material from the new institution                                                                                                                                                         patents from the old institution that dominate inventions made by the faculty at the new institution                                                  relatedto technology licensed by home institution to a company
                                                                                                        biological samples                                                                                                                    Put an inter-institutional agreement in place.
                                                                                                                                                                                                                                                 Do this after a new invention is made: it is easier to determine royalty sharing at this point.
                                                                                                            Put a Material Transfer Agreement in place, but first read the fine print of any agreement between
                                                                                                                                                                                                                                                 Should one institution take the lead in marketing both institutions’ inventions together?
                                                                                                        the old institution and a human subject donating the sample.
                                                                                                                                                                                                                                                 Be careful of illegal tying: the IIA cannot require that both institutions’ patents be licensed together.
                                                                                                                Does such an agreement allow the sample to be transferred to a new institution? Is
          researcher develops a commercially-valuable                                                  permission from the donors required?                                                                                                 Sample language we have used:
         screening assay at the new institution that                                                                                                                                                                                         “Licensing of Old Patent The parties agree that UVAPF shall have the responsibility and authority during the term of this Agreement: (a) to
         incorporates the material developed at the old                                                            Do other researchers at the old institution need continuing access to the samples? How                                   promote and market the Old Patent, both independently and jointly with UVAPF new invention, for licensing and commercialization; (b) to
         institution                                                                                    will this be accommodated?                                                                                                           identify and negotiate with appropriate parties interested in such licensing and commercialization rights for the Old Patent; (c) to enter into
                                                                                                                                                                                                                                             binding license agreements or binding option agreements for the granting of an exclusive license in and to the Old Patent, including the right
                                                                                                                                                                                                                                                                                                                                                                                                  Other checklist items for the old
                                                                                                                   Does the new institution have the facilities and funding to maintain the samples?                                        to grant sublicenses for the same; and (d) to manage any such license or option agreements for the Old Patent. Old Institution hereby grants
                                                                                                                                                                                                                                             to UVAPF the limited exclusive license under the Old Patent, with right to sublicense or further license, solely for the purposes set forth
                                                                                                                  Are there any existing IP obligations regarding inventions made using the samples?                                        herein, so that UVAPF is able to enter into such binding agreements as contemplated in this paragraph above. UVAPF shall have no license
                                                                                                                                                                                                                                             under the Old Patent for any other purpose, and Old Institution agrees to grant no further licenses under the Old Patent during        the term
                                                                                                                                                                                                                                                                                                                                                                                                      Has all chemical waste been properly disposed?

                                                    researcher invents a new use for a company’s
                                                                                                                                                                                                                                             of this Agreement. UVAPF agrees to consult with Old Institution on the licensing strategy, commercialization efforts and            the                  Are all animal care and human investigation protocols closed?
                                                                                                                                                                                                                                             licensing terms. UVAPF will provide Old Institution promptly, upon execution, with a copy of all option or license agreements                 that
                                                   proprietary compound, but         there is no                                                                                                                                             include the Old Institution’s Patent, and such agreement shall be considered Confidential Information for the purposes of                this            Has all radioactive material been accounted for?
                                                   existing MTA that permits the
                                                   to possess the compound
                                                                                      new institution                                                                                                                                        Agreement. UVAPF will not enter into any fully paid-up license agreements for the Old Patent without the prior written
                                                                                                                                                                                                                                             Old Institution.”
                                                                                                                                                                                                                                                                                                                                                                                  consent of
                                                                                                                                                                                                                                                                                                                                                                                                     Are all controlled substances (e.g., animal anesthesia,
                                                                                                                                                                                                                                                                                                                                                                                                  analgesia) accounted for?

                                                                                                                                                                                                                                                                                                                                                                                                  Make sure the faculty member signs off on the checklist.

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