The Fine Line with Intellectual Property

Recent headlines have been booming with intellectual property (IP) conflicts of interest. From Pennsylvania to Texas, lawsuits are being filed, jobs are being lost, and start-ups are being put under scrutiny.

At the University of Texas at Austin, Richard Miller, the school’s first Chief Commercialization Officer, resigned in late December after being questioned about his financial interest in start-ups licensing technology from the university. Miller had been a great asset to the school generating $25.6 million in licensing revenue, 29 new licensing and options agreements, and 58 U.S. and foreign patents. However, his ambitious entrepreneurial background also spurred personal investment interests in three start-ups. Miller divested his holdings in the three companies and still chose to resign despite the university admitting no conflict of interest had yet taken place since no technology had officially been licensed from UT.

In January, the Abramson Family Cancer Research Institute at The University of Pennsylvania announced a filing against Craig Thompson, former Director of the cancer center. The complaint claimed that Thompson co-founded Agios Inc., a company focused on developing novel cancer-metabolism drugs, with IP from the university. During his 12 years with the university, Thompson led groundbreaking research on the metabolism of cancer cells. He is now accused of “knowingly misrepresenting” to Agios that he had sole rights to the research.

Brian O’Shaughnessy, an IP lawyer at Buchanan, Ingersoll & Rooney PC, acknowledges the blurred boundaries of IP, “it is common for universities to specify that researchers can spend 20% or 25% of their time doing consulting work or engaging in initiatives focused on private enterprise such as start-ups; but there is often not enough clarity stipulating what this work can involve, and what separates it from the work that is being done for the university.

All universities outline their IP policies publicly, and some universities even provide examples of potential conflicts of interest. So what is causing the disconnect? Are universities not clearly informing employees about these publicly posted IP rules and regulations? Are researchers not reading the fine print and taking the risk of mixing private and public work?

Tell us about your experiences working around the fine line of IP rights.

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