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Conflicts of Interest
Bennett J. Berson
March 9, 2011
Topics
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 Thoughts for inventors engaged
with non-university entities
 Navigating the academiccommercial relationship
 Your responsibilities
 Conclusions
Inventors
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 Companies take very seriously the idea of
“clear title” to their assets
 Know UW’s invention policies
– WARF owns federally-funded inventions
 Rights can revert to inventor if neither WARF nor
funding agency pursues patent rights
– Inventions made without federal funds
belong to inventor
 Inventor can exploit rights to such inventions
Inventors
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 More complex situations…
– Invention under sponsored research agmts.
 Sponsor obtains rights to invention
 WARF may also have rights if invention is also
federally-funded
– Inventions made at more than one institution
 Competing policies
– Inventor as founder of start-up company
The bottom line
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 The facts and circumstances of
your situation dictate whether you
have a conflict of interest
Inventors
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 Stanford v. Roche
– Inventor “agreed to assign” to
Stanford his rights in inventions
– Inventor subsequently “assigned”
rights in future inventions to Cetus
(now Roche)
Inventors
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 Stanford v. Roche
– Stanford patented PCR test for to
measuring [HIV] in plasma
– Stanford sought royalties from Roche
– Roche refused, citing superior rights
– Roche won on intermediate appeal
– US Sup. Ct. arguments last week
Inventors
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 Bayh-Dole Act
– Simplifies transfer of federally-funded
inventions from universities
– Supreme Court is considering
 Do rights initially vest in institutions?
 Do institutions need to “obtain” rights
before they can “retain” rights?
 Does later actual transfer trump earlier
agreement to transfer?
Navigating
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 Read/understand legal documents
– Material transfer agreements
– Federal grants
– University policies
– Consulting agreements
– Employee agreements
– Works for hire
Navigating
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 Read/understand legal documents
– Sponsored research agreements
– Collaboration agreements
– Visiting scientist agreements
– Confidentiality agreements
– Equipment leases
– Fee-for-services agreements
Navigating
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 For university-related matters,
University counsel can assist
 For non-university commercial
activities, seek independent legal
counsel for
– Company
– Company founders
– Professors acting as consultants
Navigating
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 Attorney-client relationship
– UW’s atty represents UW
– WARF’s atty represents WARF
 WARF’s atty at the US PTO
– Company’s atty represents company
– Bank’s atty represents bank
 Those attorneys can’t represent
you or your company
Responsibilities
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 Use university resources for
university purposes
– Employees and students
– Facilities
– Equipment
– Information (data, records, etc.)
 Use company resources for
company purposes
Responsibilities
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 Time commitments
– Research
– Teaching/mentoring
– Service
– Administration
Responsibilities
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 If licensing technology from WARF,
understand license limits
– What can your company do?
– What can you do at the company?
– What barriers exist between university
lab and company lab?
– Which hat are you wearing now?
Responsibilities
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 Discuss rights to later inventions
– Don’t assume that company can use
technology developed in university lab
 Take advantage of UW campus
resources
– Graduate school COI committee
 www.grad.wisc.edu/research/policyrp/coi/index.html
– UIR, OIR
Conclusions
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 Where you stand depends upon
where you sit:
– You are not the company
– Your lab is not the company lab
– Your graduate student is not your
company’s employee
Conclusions
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 Diligence prevents headaches
– Do it the right way
– Dot every i; cross every t
– Ask questions
– Take the smell test
– Take the smell test again
– Take the smell test one more time
Conclusions
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 If your idea/invention/product is
valuable, others will challenge your
rights and your company’s rights
 Ugly looks even uglier under the
microscope of a lawsuit
 Losing legal strategies
– “I’m new at this”
– “I didn’t understand”
Conclusions
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– “Which hat now?”
 When in the lab?
 When at the company?
 When discussing new ideas?
 When at an academic or industry
conference?
 When exercising, showering,
daydreaming?
– Not always easy question to answer.
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Thank you!
Bennett J. Berson
March 9, 2011