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Re: IP On Assistantship RESADM-L Member 20 Jan 2003 11:42 EST

I agree with Herb.  Based upon this description, it seems that
the IP would be subject to Bayh-Dole.  That the research program
may be broader than the original scope of the proposal may not
be the determining factor.  That the student was paid by the
federal grant when he/she discovered the IP generally is.   The
definition of a Bayh-Dole subject invention is "any invention of
the grantee conceived or first actually reduced to practice in
the performance of work under (this) grant..." I don't think you
can argue that it's not covered because the work exceeded the
scope.  Since the grant paid for the work it would be deemed as
having been conducted "under the grant" imho.  Of course, there
are the options Herb describes for salary charge corrections
(which could create another set of problems).  Good luck!

Jeff Myers
Southern Illinois University

> I would disagree.
>
> The individual is EMPLOYED to work on the federal grant.
Therefore all
> activity is supposed to be related to that federal grant.  If
the person
> worked on other sponsored activities, the salary should not
have been
> charged to the grant.  So the presumption must be that the
work was
> grant-related, and the IP must be reported.  This suggests
that the
> assignment of work for the student might have been improper.
Or,
> alternatively, that the work was within the PI's discretion of
expanding
> the work beyond what was in the proposal, something certainly
allowable
> under the regulations -- unless it was a change in the scope
of the grant,
> which again would make the work assignment improper.
>
> If it was discovered early that the work was mis-charged, a
change of the
> expense charge could made.  That would have to be done within
the
> parameters of your institutional policy on correcting
erroneous charges to
> federal grants.  If the change is made only after the IP is
disclosed,
> there would be a significant question as to the propriety of
that correction.
>
> There would also be some possible questions arising from the
institutional
> policy regarding IP.  I believe a policy that excluded
students -- or
> fellows (not the position you revealed for this student) --
from a share in
> the IP's rewards would be in violation of federal regulations.
>
> I suggest that there is no problem for the institution that
there is a
> federal interest in the invention...unless it is in direct
conflict with
> other contractual commitments with external parties, in which
case you may
> have a real mess to unwind.  Experience in my institution is
that the
> residual federal interest in IP causes no real problem in
exploiting that
> IP unless there is a direct conflict with other external
agreements
> regarding the exclusive commitment of IP rights to a different
sponsor.  It
> may require some education of potential IP licensors -- but if
a potential
> licensor does not understand how limited those residual
federal rights are
> in real life, that licensor may be too inexperienced to be
considered a
> viable licensor.  I also suggest that it is an INSTITUTIONAL
rather than
> departmental question as to what internal and external sources
have
> interests in that IP, and also in the manner of IP
exploitation that best
> serves the institution, the sponsor, and the inventor(s).
There may be
> knowledge and expertise in the department that aids the Tech
Transfer
> Office, but there should be no decision-making in the
department.
>
> This problem illustrates the confusion that is caused when a
department or
> laboratory draws student support from whatever revenue source
may be
> available without relating the work to that source.  Some
might argue that
> fraud is implied.  If this practice is commonplace, the
institution's
> research executives should learn more about the federal False
Claims Act!
>
> Chuck
>
>
>
>
> At 11:10 AM 1/19/2003 -0500, you wrote:
> >I've asked this question before but want a refresher.
First, the
> >ground work:  A graduate student is employed on a federal
sponsored
> >agreement subject to Bayh-Dole and the assistantship is
considered a 50%
> >employee appointment and that type of appointment is a
salaried position
> >not subject to local personnel act (i.e. not eligible for
overtime work;
> >get the "job" done, irrespective of total time).
> >
> >The aforementioned graduate student creates IP while working
in "the
> >lab" to which s/he is assigned to work while employed to work
on the
> >federal sponsored agreement.  The IP is the result of a much
broader
> >aspect of the discipline under which s/he is working towards
as
> >described by the federal sponsored agreement that is paying
his/her
> >salary.
> >
> >My argument is that this IP does not need to be disclosed to
the
> >federal sponsor and the federal sponsor accrues no rights in
the IP
> >because [its] relationship to the specifics for which the
sponsored
> >agreement was issued can not be related to the objectives (and
> >deliverables) of the sponsored agreement.
> >
> >Am I right?   Beyond this argument, what constitutes
sufficient support
> >for or against (so I can argue it with the feds or with the
academic
> >department) the reason to disclose to the feds or not...
> >
> >Please advise directly or via the list and thanks in advance
for your
> >assistance.  Apologies for those who receive this on the many
lists I
> >have posted.
> >
> >Thanks!
> >
> >Matt
> >
> >Matt Ronning
> >Associate Vice Chancellor and Director
> >Research Administration / SPARCS
> >North Carolina State University
> >1 Leazer Hall - Lower Level
> >Campus Box 7514
> >Raleigh, NC 27695-7514
> >919-513-2148 - Direct Line
> >919-515-7200 - Main Line
> >919-515-7721 - Fax
> >xxxxxx@ncsu.edu - e-mail
> >http://www.ncsu.edu/sparcs  - URL
> >
> >
>
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>
> Herbert B. Chermside, CRA
> Director, Sponsored Programs Administration
> Virginia Commonwealth University
> PO BOX 980568
> Richmond, VA  23298-0568
> Express Delivery Only:
>         Biotech One, Suite 113
>         Virginia Biotechnology Research Park
>         800 East Leigh Street
>         Richmond, VA 23219
> Voice:  804-828-6772
> Fax     804-828-2521
> OFFICE e-mail   xxxxxx@VCU.EDU
> Personal e-mail xxxxxx@vcu.edu
> http://www.research.vcu.edu/ospa.htm
>
> The Office of Sponsored Programs Administration will be moving
Wednesday
> January 8 throuigh Friday January 10.  We are moving from
Sanger Hall to
> Biotech One, in the Biotech Research Park, 800 East Leigh
Street, Suite 113.
>
> Proposals can be dropped off in Sanger Hall through January
10.  Monday
> January 13 we will be in full operation in our new home.  We
will do our
> best to respond to real emergencies while moving; otherwise,
expect about 3
> days lost time.
>
> We will retain our VCU mail box, #568, but express or other
physical
> deliveries will come to our new offices.  Phone numbers and e-
mail will
> stay the same, but computers and telephones will be down 1 to
3 days.
>
>
>
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