From the Director: IP Policy Q&A

Many people are unaware, but most universities, including Emory, have formal intellectual property (IP) policies. At first glance it might seem counterintuitive to the university mission of creating and sharing knowledge, but the policies are written in a way that both encourage scholarly activity and the open exchange of ideas while balancing the potential to commercialize new inventions. What these polices say is that if one happens to make an invention that could end up as a new product then the institution owns the invention – but in return, as part of the deal, the institution fronts various costs associated with protecting the IP and gives the inventor a share of the revenue. At Emory, it’s not only a personal share of revenue to the inventor, but also a share that goes to the individual’s lab, department and their school. The IP policy breaks down how this revenue is distributed within the University. Surprisingly, researchers often get excited not about the personal share of revenue but about the research funds that can support the lab that can come from it. This is largely because these funds don’t come with requirements on what kind of research they are put towards. IP policies are meant to be an incentive for the people and support behind innovation at the institution.

Can I divert/re-assign my personal share?

Yes you can. It comes back to the fact that we are trying to motivate faculty as much as possible. Sometimes employees divert their personal share to their research, for at least a set amount of time.

Can I appeal the distribution formula for my technology?

Cliff Michaels photo

Cliff Michaels

Yes, it is possible, but by and large the general split between the inventors, department, school and university is adhered to except in special circumstances. At Emory there are mechanisms for handling the most common disagreements over a distribution; most often the disagreements have to do with split of the personal share among the inventors. If the inventors are unable to agree amongst themselves on how to divide the personal share, then what the policy says is in the absence of an agreed upon distribution all inventors get treated equally. Most often though, we end with an unequal distribution that is agreed upon among by the inventors depending on who contributed the most. If this is still deemed unfair by someone they can appeal for review by senior administration

Does Emory assert ownership over student IP?

Emory does not assert ownership over undergraduate student IP, unless they are working in a lab or under a grant.

Can/How do I request a release of my IP so that I can pursue commercialization personally?

You can – at Emory you have to petition/request it to be released/assigned to you, and while we do have this happen it’s uncommon. OTT may look at an invention and decide not to pursue patenting. If the inventor still wants to pursue commercialization, we give them the ability to petition to have the invention released and then they can pursue as they choose. Any release/assignment also has to take into account any obligations Emory may have to a funding source, like the federal government.

What happens to my revenue/ownership when I die?

The revenue will then get passed on to your heirs. We have had cases where this happens, and the revenue was passed on to the spouse. It is an ongoing obligation on our part.

What happens to my revenue/ownership when I leave Emory?

If researchers leave Emory they will continue to receive their personal share, although the lab share must stay within the university and is typically shifted to their department.

How can I bring my previous IP from another institution when I come to Emory?

If it wasn’t invented here, then OTT can work out an arrangement a previous employer or former university to manage that IP. This is done through something called an inter-institutional agreement (IIA). We typically don’t manage other’s IP unless Emory owns at least a portion of it, but often new faculty will come with prior inventions, and then they add to it or make a new invention here the best way to commercialize the IP is to bundle all of those inventions together. That’s the most common situation, one where we enter into an IIA to manage former IP along with current/new IP.

What is a scholarly work in layman’s terms?

A work product developed by faculty in pursuit of scholarly activities. What faculty write and publish, and opinions that they put forth are exempt from the IP policy as part of academic freedom. We want to encourage academic activity, we don’t want the IP policy to become a barrier or impediment. It isn’t always 100% clear as to whether certain IP is a scholarly work or not. For example, a book that took $20,000 dollars of administered time at the institution or maybe even had a $100,000 grant supporting it poses the question of whether it is a scholarly work or not and may require a case by case review.

What is considered Emory support?

This can be more challenging than it might seem to define. Someone sitting in their office using an Emory computer is not considered Emory support for the purposes of determining whether or not the IP is a scholarly work. Good examples of Emory support are when faculty are commissioned to do the work, or there is a sponsor who has paid the institution, and this money went into research in the form of a grant supporting the work. Just using Emory resources, like the library or computers, is not typically the kind of Emory support that would change the definition of scholarly work.

What is considered part of my duties?

Generally, Emory owns two types of intellectual property for an employee. One is intellectual property related to one’s normal course of duties at the institution, and the other is where they utilize Emory support. The former is what can be the most difficult, figuring out what is deemed related to one’s normal course of duties. It isn’t frequent but it can be challenging. Once, a biochemist at Emory invented a ping pong paddle. That was clearly not part of their duties and therefore Emory did not own that IP. Emory is only trying to own IP that is related to one’s work (including their area of expertise), resources, and facilities here at Emory.