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IP ownership on industry contracts Zoya Hamilton 14 May 2010 15:11 EST

Dear Colleagues,

I found out from a colleague at Tech Transfer at my university that some
industries are balking at negotiating IP ownership because, according to
them, some universities started giving away their IP rights in the last
few years. To quote one industry representative, "several years ago it
would have been impossible for a company to negotiate a contract that
would not assign IP to a university. But times are different now.
Several schools (and names of schools were given which I won't repeat)
are willing to give away their IP rights so we will just contract this
work to them".

IP ownership is a huge issue for us. Some of our buildings are funded by
tax-free bonds, thus making us subject to the IRS guidelines prohibiting
giving away intellectual property (to be exact,  there is a very small
percentage of income exempt from this regulation, but it is so small
that in practice it means that no sponsor-funded IP can be given away).
I imagine not all universities are in this situation. For those of you
that have the flexibility to give away IP, what are the circumstances
when you are willing to do it? For those of you that are like us, how
often do your collaborations fall apart because of this issue?

Also, in view of the comment from the company, do you think we should
all stick to our guns and be unwilling to give away IP? We would
certainly have better collective leverage, but is there even a way to
climb back up that slippery slope?

Thank you for the input into this conversation.

Zoya

--
Zoya Hamilton, CRA
Sr. Associate Director, Research Administration
Office of the Vice Provost
Tufts University
Tel (617) 636-6709
Fax (617) 636-2917
http://researchadmin.tufts.edu/

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