Moving Day Checklist

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Moving Day Checklist
Following the IP when Faculty Change Institutions
Marie Kerbeshian, Senior Negotiator, University
of Virginia Patent Foundation David Hudson,
Associate Vice President for Research and
Graduate Studies, University of Virginia
Ghosts of patents past . . . patents from the
old institution that cover research activities
the faculty is conducting at the new
institution ? Put a license agreement in place.
(But keep it short and simple.) ? Does it
extend to all the new institutions employees, or
just those working with the faculty member?
? Does it terminate if the faculty member leaves
the new institution? ? Can the new
institution commercialize inventions made using
the patent? ? If an exclusive license agreement
is already in place between the old institution
and a company, any subsequent license between the
two institutions is subject to the restrictions
of the existing license. ? Is the field of
use licensed to the company different from the
field of use of the research by the faculty
member at the new institution? ? Was the
original invention made using NIH funds? Did the
original license agreement permit the sharing of
research tools according to NIH guidelines?
? The company may grant the new institution a
sublicense for research purposes in exchange for
an option to any new inventions. Sample language
we include in license agreements with a
company Reservation by Licensor The above
grant is subject to a reservation of rights by
UVAPF for itself and UVA to practice under the
Licensed Rights for educational, research,
patient care and treatment, and other internal
purposes. UVAPF further excludes from the
license granted 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 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
Disseminating Biomedical Research Resources (as
published in the U.S. Federal Register / vol 64,
No. 246 12/23/99). patents from the old
institution that dominate inventions made by the
faculty at the new institution ? 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.
? Should one institution take the lead in
marketing both institutions inventions together?
? Be careful of illegal tying the IIA
cannot require that both institutions patents be
licensed together. Sample language we have
used Licensing of Old Patent The parties
agree that UVAPF shall have the responsibility
and authority during the term of this Agreement
(a) to promote and market the Old Patent, both
independently and jointly with UVAPF new
invention, for licensing and commercialization
(b) to 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 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 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 of this Agreement. UVAPF
agrees to consult with Old Institution on the
licensing strategy, commercialization efforts and
the licensing terms. UVAPF will
provide Old Institution promptly, upon execution,
with a copy of all option or license agreements
that include the Old Institutions
Patent, and such agreement shall be considered
Confidential Information for the purposes of
this Agreement. UVAPF will not
enter into any fully paid-up license agreements
for the Old Patent without the prior written
consent of Old Institution.

• Whats in that styrofoam cooler shipped from the
  old lab to the new lab?
• research reagents developed by the faculty member
  at the old institution
• ? Put a Material Transfer Agreement in place.
• ? Does the old institution or the new
  institution take over future distribution of the
  material?
• ? Can the new institution commercialize
  modifications of the material?
• ? Can the new institution commercialize
  inventions made using the material?
• If an MTA was not done at the time the
  researcher changed institutions, you can usually
  clean up any problems after the fact by putting a
  retroactive MTA in place between the old and new
  institutions. If there is commercial interest,
  an inter-institutional agreement may be more
  appropriate to include revenue-sharing between
  the two institutions.
• Sample proposal to the old institution that we
  have used in the past
• Though the ownership issue involving the
  Materials is rather complicated, we are sure
  that, given enough research and legal assistance,
  we could determine with particularity which
  Materials are owned by you, and which are owned
  by UVA. However, we feel that such approach does
  not make a great deal of sense in this case, once
  one considers the transaction costs involved and
  small market for such Materials. Therefore, we
  would like propose that you permit the UVA Patent
  Foundation to make the Materials widely available
  for licensing, to license the same to interested
  parties, and to share equally with you all
  licensing revenue we receive for such activities,
  irrespective of whether the Materials we license
  are owned by you or by UVA. Each university
  would then distribute royalties according to
  their respective patent policies.
• research reagents transferred from a third party
  to the old institution
• ? Chances are any original MTA from the third
  party to the old institution doesnt allow
  subsequent transfers. Try putting a new MTA in
  place directly from the third party to the new
  institution.
• biological samples
• ? Put a Material Transfer Agreement in place,
  but first read the fine print of any agreement
  between the old institution and a human subject
  donating the sample.
• ? Does such an agreement allow the
  sample to be transferred to a new institution?
  Is permission from the donors required?
• ? Do other researchers at the old
  institution need continuing access to the
  samples? How will this be accommodated?
• ? Does the new institution have the
  facilities and funding to maintain the samples?

Abstract When faculty change institutions,
there are a host of administrative tasks for both
the former and new institution, ranging from
stopping/initiating payroll to clearing the old
and new laboratories of chemical waste to
assuring that academic credits transfer for any
accompanying graduate students. It is a rare
faculty member who realizes that along with the
lab notebooks and freezer samples, he or she may
also be moving intellectual property. No
university wants to be surprised by a companys
proprietary material ending up on campus sans
MTA, nor does the tech transfer office want to
puzzle out ownership of derived materials when
the university does not have permission to
possess the originals. And imagine a faculty
members surprise to realize that his or her
patent from the previous institution might block
continuing research at the new university. At
the University of Virginia, we are developing
Moving Day Checklists to prompt questions
about IP transfers for both faculty leaving and
faculty joining our institution.
Other checklist items for the old institution ?
Has all chemical waste been properly disposed? ?
Are all animal care and human investigation
protocols closed? ? Has all radioactive material
been accounted for? ? Are all controlled
substances (e.g., animal anesthesia, analgesia)
accounted for? Make sure the faculty member
signs off on the checklist.
What have we missed? Contact us
patents_at_virginia.edu [phone]
www.uvapf.org