Work Product and the ‘Forgotten’ Rights

As we’ve discussed previously (perhaps even ad nauseum), one of the most important terms to be negotiated for any award is the ownership of intellectual property created under the sponsored research.  When the sponsor is a government agency, clauses regarding copyrights and patents routinely write themselves.  However, when your funder is a non-public entity, there is more latitude available to carve out the rights that each party will receive.

Many parties will focus their interests on protecting a project’s identifiable IP, such as a possible invention or a piece of computer software, but attention should also be paid to the materials, data and other information produced the course of the research, sometimes referred to as the Work Product.

For example, a PI may collect hundreds of pages of results following the administering of a questionnaire, which would not qualify as either a possible invention or a ‘commercial’ copyrightable material.  Who, then, should own these results?

Or what about the progress reports that the above PI submits to the sponsor that details the work performed up to that point, a preliminary conclusion to the studied hypothesis, and perhaps a new method for disbursing the questionnaires?

In some circumstances, a sponsor will demand ownership of all Work Product, and require the Institution to ask for permission prior to its use.  Needless to say, this restriction severely compromises not only a PI’s future related research activities, but also may cause an awardee to curtail its efforts so as not to generate anything beyond the minimum standards of the grant or contract.  Additionally, under the above terms, there is an inherent restriction on publication.  At some institutions, JHSPH included, this is a deal-breaker for which exceptions are made in only the rarest circumstances.  At others, however, a publication restriction can be included provided that certain considerations are addressed.

Notwithstanding any other clauses within the given agreement, the Institution’s primary interest is to retain full ownership of the Work Product.  However, when we are presented with a Work Product clause that provides blanket rights to the sponsor, we will at least negotiate a license back to JHSPH for non-commercial research purposes, which should assuage the concerns of both parties.  For the sponsor, they can be assured that the results of their funded project will not be shared with a third party and beget a commercial enterprise that could compete or otherwise inhibit their own business practices.  For the Institution, the license provides them an avenue to continue with their primary goal, namely the furtherance of research for the public good and the opportunity for the PI to publish his findings to the community.

Consequently, it’s important for ORA personnel to not only learn whether anything patentable may arise during the course of a PI’s research, but also have a firm understanding of any Work Product that will be produced to ensure that rights are protected accordingly.