Answers to your intellectual property questions

 

How does the University determine who owns intellectual property that is developed by Pitt faculty, staff or students?

 

The University has adopted two policies related to ownership of intellectual property: one for patent rights and the other for copyright. In general, the University claims ownership and control of all inventions, patents, patentable developments or related know-how developed by its faculty and students. Therefore, when an innovation is developed, the innovator must promptly submit an Invention Disclosure Statement to Pitt’s Office of Technology Management. Similarly, the University asserts ownership over certain kinds of copyright-protected intellectual property created by faculty and staff — for instance, computer software developed at least in part on the University’s computer systems.

 

When a Pitt faculty member writes a scholarly book, does the University have any right to the work?

 

The University affirms that, except as specifically exempted, faculty and students are entitled to claim copyright ownership, including world-wide rights, in the following works authored by them: books; articles; educational coursework; similar works that are intended to disseminate the results of academic research or scholarly study; popular fiction or nonfiction works; poems, musical compositions; and other works of artistic imagination. If the copyrighted work was produced in the course of their University employment or under the supervision and control of the University as “works made for hire,” the copyrighted interests in such works automatically vest in the University.

 

If a Pitt faculty member collaborates on research with faculty from another university, how is the ownership of the resulting innovation determined?

 

Ownership is determined by the employment relationship of the innovators. Collaboration may result in intellectual property that is jointly owned by both of the collaborators’ employers. Pitt’s Office of Technology Management will cooperate with its counterpart at the collaborating institution on management of any jointly owned intellectual property. For example, Pitt has in place a Master Inter-Institutional Agreement with Carnegie Mellon University that provides a framework for cooperation in commercialization.

 

How does external research funding affect ownership of intellectual property developed at Pitt?

 

Under the Bayh-Dole Act, the University is required to claim title in any invention conceived or reduced to practice at the University in the course of any federally funded research. The University asserts ownership over intellectual property developed by its faculty and staff, even when the research is funded by industry.

 

What intellectual property rights does the University offer to industry partners that sponsor research and development efforts by Pitt faculty?

 

First, the University does recognize the pre-existing intellectual property rights of sponsors. It also offers to sponsors the right to negotiate a license to any new inventions that are developed under the Sponsored Research Agreement. However, to stay within the “safe-harbor” provisions of the Internal Revenue Service’s Rev. Proc. 97-14 (which pertains to “private use” of tax-exempt bond-financed facilities), such licenses must be considered commercially reasonable, and the compensation must be determined at the time that the intellectual property is created. By retaining ownership, the University also ensures that a faculty member is not blocked from continuing to conduct research in a particular area.

 

When Pitt researchers share tangible forms of intellectual property information, such as a newly developed cell line, with researchers from other institutions, does Pitt maintain rights in the material that is transferred?

 

The University does assert ownership over such materials. By using a Material Transfer Agreement (a form that is available on the Office of Research Web site), the University’s rights in the material are preserved, including rights to any progeny or derivatives of the material being transferred. An MTA also assures that the recipient understands any limitations placed on the use of the material.

 

How much royalty income can Pitt innovators expect from innovations that are licensed by Pitt to industry?

 

The inventors, as a group, will receive 30 percent of the net revenue received from any patent licensed by the University. The creators of copyrighted materials, as a group, will receive 50 percent of such net revenue. In both cases, keep in mind that license revenue will be used first to reimburse the University for any unreimbursed patent expenses and other expenses associated with the commercialization of the innovation.