Recap

 

In the last edition of IP Bits we considered the case of a US visiting scientist that contributed to an invention at an Australian host university, in relation to one of the host university’s research projects. See Don’t Assume you Own the IP  #1 - Visiting Scientists Part 1

 

 

We concluded that:

 

1. IP created by a visiting scientist at a host university will be owned by the visiting scientist’s employer, not the host university

2. an assignment by the visiting scientist to the host university will be ineffective because the visiting scientist has nothing to assign, the IP being owned by the visiting scientist’s employer, not the visiting scientist.

 

That case study also demonstrated how a visiting scientist’s employer had unreasonably inflated expectations of its share of commercialisation revenue and even insisted that it take the lead in commercialisation, even though the host university’s employees had invented 27/28ths of the IP being commercialised and had already started negotiations with a multinational company interested in a worldwide license.

 

So, how should a visiting scientist be dealt with to avoid these issues?

 

 

What should we anticipate?

 

We can anticipate that the collegiality of scientists is such that they will talk to each other about their research projects. They share information, their research successes, as well as their research challenges.

 

We therefore can anticipate that in the course of the visiting scientist’s interaction with the host institution’s staff:

 

1. the visiting scientist may invent or create IP in relation to the host institution’s research projects, as occurred in the case study the subject of the last edition of IP Bits, and

2. the host institution’s employees may invent or create IP in relation to a project the visiting scientist is working on, which is a project from the visiting scientist’s employer institution.

 

We cannot stop this from happening. It is not planned. But scientific collegiality means it happens.

 

It results in the ownership of IP becoming fragmented, being partly owned by the employer institution and partly owned by the host institution.

 

Fragmented ownership of IP impedes its commercialisation.

 

 

Avoiding the fragmentation of IP ownership – students

 

It is to avoid this fragmentation of ownership of IP and the resulting impediments to commercialisation that we go to a lot of trouble to obtain assignments of IP from students.

 

 

Avoiding the fragmentation of IP ownership – visiting scientists

 

Best practice is to employ the same degree of care and thoroughness in the way students are dealt with, to visiting scientists.

 

That means a Deed of Assignment of IP is necessary.

 

 

A Deed of Assignment that does not work

 

A Deed of Assignment of IP from the visiting scientist to the host institution will not work.

 

As we have already concluded, the visiting scientist does not own the IP the visiting scientist creates – it is owned by the visiting scientist’s employer.

 

That is because, either:

 

1. the employment contract between the visiting scientist and employer institution provides that the employer institution owns the IP created by its visiting scientist, whose duties include the duty to invent or create IP, or

2. (as is customary in the US), at the same time as the visiting scientist signs an employment contract, the visiting scientist also signs in favour of the employer institution a Deed of Assignment of Future Created IP.

 

 

A Deed of Assignment that does work

 

The Deed of Assignment by which the IP created by the visiting scientist at the host institution on a host institution project, to be effective, must be one by which the owner of the IP – the visiting scientist's employer - assigns to the host institution.

 

 

What else should such a Deed of Assignment say?

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It is customary in a student deed of assignment to provide for the student assignor to share in commercialisation revenue as an inventor or creator in the same manner as the institution’s staff.

 

Similarly, a Deed of Assignment by which the visiting scientist’s employer institution assigns to the host institution would be expected to provide for the assignee host institution to share commercialisation revenue with either:

 

1. the visiting scientist in the same manner as the host institution’s own staff, or

2. the visiting scientist’s employer, for distribution to the visiting scientist in accordance with the latter's own policies.

 

 

Timing of Deed of Assignment

 

Desirably, such a deed of assignment by the employer institution to the host institution should be signed before the visiting scientist arrives at the host institution.

 

At some institutions, that practice – finalising the signed Deed of Assignment before the visiting scientist arrives at the host institution - is mandatory and routinely implemented.

 

At some institutions having such a mandatory practice would be difficult.

 

And there lies the risks illustrated by the case study in the last issue of IP Bits.

 

 

Is an Inter-Institutional Agreement good enough?

 

It may well be good enough.

 

Whether it is an assignment by the employer institution to the host institution, or the grant of a license by the employer institution to the host institution of the employer institution’s share of the IP the practical result is the same, the host institution secures the whole of the IP.

 

In either case financial terms are agreed, either a share of the inventors’ commercialisation revenue is to be shared with the visiting scientist personally, or a share of the gross commercialisation revenue is shared with the employer institution.

 

 

Reciprocation

 

Above, we anticipated two scenarios:

 

1. the visiting scientist may invent or create IP in relation to the host institution’s research projects, and

2. the host institution’s employees may invent or create IP in relation to a project the visiting scientist is working on, which is a project from the visiting scientist’s employer institution.

 

When seeking a Deed of Assignment from the employer institution, it may be worthwhile to anticipate and provide for the second scenario as well as the first. It is equally likely.

 

When that second scenario is anticipated and provided for as well, finalising the deed of assignment with the employer institution before the visiting scientist arrives at the host institution seems to be achieved in a more expeditious timeframe.

 

 

Does the Visiting Scientist sign anything at all?

     

Although the visiting scientist does not sign anything by which IP is assigned, the visiting scientist having nothing to assign, the visiting scientist should nevertheless personally sign a confidentiality agreement by which the visiting scientist will maintain in confidence, and not use, any of the host institution’s IP, without its prior written consent

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