Virginia Tech's Board of Visitors adopted a new IP Policy as of June 1, with two primary revisions - one focused on student entrepreneurs and one focused on when the University may "give back" IP to the Inventor.
The change in the policy language relating to student inventors clarified that, in general, the University does not claim ownership of student-developed intellectual property - including IP that may be developed in connection with coursework. Generally speaking, the three exceptions to this are:*
- If the student is an employee of the university (or otherwise paid by the university for the work) and the IP is developed as part of their work.
- If the IP is developed under a sponsored research or other program under which third parties (including government agencies) may have rights to the IP by virtue of agreements with the university and/or the faculty researchers running the project.
- If, in developing the IP, the student uses university resources not generally available to others (in the context of IP developed as part of a course, the test is whether the university resources were made available to all other students taking the course for credit).
This overarching policy has always been in place, and this change is more of a clarification. There has been a fear among student groups that the university will take IP developed by students in general, though this is not the case. Virginia Tech Intellectual Properties (VTIP: the organization that manages the University's IP) has tried to combat this fear, but the paranoia has lingered. At one point there were policies put in place with dollar amount thresholds in an attempt to provide some clarity (e.g., if the student develops IP without using $10,000 or more in university resources, then it belongs to the student). But the difficulty in putting a value on use of resources made that difficult to apply in practice, so these didn't really provide the desired clarity.
Giving IP Back to the Inventor
The other change is a new section of the IP policy stating that the University may decide to release IP back to the Inventor in cases where the University and VTIP decide not to pursue protection or commercialization. This has also always been an option, whether or not stated in the policy itself, and VTIP has released some IP back to Inventors in the past. Under the revised policy, VTIP and the University still hold a lot of discretion on whether or not to release the IP back to the Inventor, and there aren't yet formal guidelines or procedures on how VTIP may make this decision. Perhaps adding this section to the IP policy will at least give rise to a discussion on what policies and practices make sense here.
We work with a lot of faculty inventors and many of them feel that the University should adopt a free agency approach posited by the Kauffman Foundation (an approach which, as you can probably imagine, is strongly opposed by AUTM, the Association of University Technology Managers). Many universities are currently experimenting with different approaches to this question of if and when to release IP to the Inventors. Every university has different philosophies on its goals and purpose with respect to its IP and the potential for economic return from it (and these philosophies change even within a university over time), so this is not an easy question to answer.
Because of university politics ("What?!" you exclaim. "There are politics within the university?! I'll not believe it!"), the potential for economic return, the risk of missed opportunities and feelings that naturally attach to someone's inventions, this question is a particularly sensitive one among faculty inventors, tech transfer organizations (e.g., VTIP), the university administration and the administration of individual departments and institutes within the university.
Because of its role, VTIP can be put in a troublesome position when pressured to release IP back to the Inventors, but at the same time is required to meet budgets, produce revenue, meet patenting and/or licensing goals, etc. Not to mention the tongue-lashing some would give VTIP if Virginia Tech IP is released to an Inventor who goes on to make billions of dollars with it, without having to pay Virginia Tech any royalties (some would feel the opposite, but I think the voices of criticism would be loudest or most influential here, at least in the near future). In other words, I would not expect VTIP to freely begin giving away IP to Inventors unless the University clearly and unequivocally states that it has a strong policy in favor of this, and adopts economic and political structures for VTIP which support this. The risk to VTIP of a misstep is just too strong. However, I have spoken with the head of VTIP on this topic and he is completely in favor of generating thoughtful discussion and developing guidelines on IP release which make sense and protect both the interests of the University and the faculty Inventors.
In the end, these revisions themselves probably do not change the game that much. But the change does indicate that the University's leadership is keenly aware of the importance of its policies on entrepreneurship within its classrooms and laboratories. And if these changes generate more discussion, which generate more clarification, which generate more changes, and so on, this is a very good thing.
* Note that these are general summaries of the IP Policy and should not be relied on as legal advice. You should review the exact language of the IP Policy to determine your rights in any particular instance.