Prevent Faculty Disputes from Turning Into a Declaration of War
Originally presented July 13, 2010

Gaining the trust and cooperation of faculty in tech transfer efforts is a difficult task under even the best of circumstances. But as all-too-many TTO managers can attest, disputes with researchers can quickly spread like a nasty virus among faculty and destroy the delicate bonds you’ve worked hard to solidify, severely undermining your ability to secure disclosures, encourage start-up formation, and gain marketing and patent prosecution assistance. At the very bottom line, deal flow can become severely clogged since licensees and investors simply do not work with IP that involves reluctant, distrustful, or downright uncooperative inventors.

Disputes can take many forms, but the most common and arguably the most difficult to manage revolve around inventorship issues. When these issues arise, it’s critical that they be met with tact, responsiveness, administrative support, and an approach that addresses faculty concerns while also protecting the university’s interests. Failure to handle brush fires promptly and with the right response can set off an inferno of ill-will, negativity, and ultimately lawsuits that can consume precious resources and damage your TTO’s efforts for years to come.

That’s why we’ve lined up tech transfer/legal experts to provide detailed guidance on navigating the thorny issues so often involved in these disputes. This program provides a unique combination of legal advice from Jean Baker, PhD, JD of Quarles and Brady and real-world examples and lessons learned from SUNY-Stony Brook’s Chester A. Bisbee, Ph.D. JD:

Prevent Faculty Disputes From Turning
Into a Declaration of WAR!

Here’s what we’ll cover in this down-to-earth, practical program:

• When does a faculty inventorship dispute stop being an intellectual property law issue and start becoming an employment issue?
• How inventorship disputes can affect patentability and/or license-ability
• The law behind inventorship and “intellectual contribution”
• Delicate issues with inter-institution collaborations
• When (and when not to) engage outside counsel to settle a dispute
• Ensuring your faculty contracts work for you, not against you
• Strategies for averting IP ownership disputes
• Dealing with the fallout and keeping a dispute from becoming “viral”
• Case examples of “war” and “peace"

Plus, you’ll get an in-depth review of current standards and case law from key decisions involving research institutions.

Presenters

Jean Baker, PhD, JD, is the head of Quarles & Brady’s IP Group and has almost 20 years of experience in patent and trade secret law, drafting and prosecuting chemical and biotechnological patent applications and issuing patentability and infringement opinions. Her technical background includes practical experience in molecular biology, microbiology, and chemistry. Dr. Baker has special expertise in the fields of transgenic micro-organisms, plants, and animals and recombinant DNA techniques, including production and use of modified proteins. She has drafted and prosecuted many patent applications for numerous university and research institution clients in a variety of technologies.

Chester Brisbee, PhD is the Director of Technology Licensing and Industry Relations at SUNY Stony Brook. Prior to that, he was Director of Technology Management at the University of Massachusetts Medical School and also was a Senior Licensing Officer in the system-wide licensing office in the Office of the President at the University of California. Before working in university technology licensing, Dr. Bisbee was a patent and licensing attorney in a full-service law firm and a business development consultant at Arthur D. Little after being an industry scientist at Biogen Idec. Dr. Bisbee has licensed Nobel-prize winning RNAi technology and, most recently, has supervised the licensing of Xiaflex, a collagenase treatment for contracture diseases. He was also involved in prosecuting patents and drafting licenses supporting the launch of Pfizer’s Caduet.