The Right Stuff

I’m looking for recent stories in which a university technology licensing office “did the right thing” and released its interest in an invention even though it had reason to believe that the invention was not worthless.   I am especially interested in instances in which the university office had a right under its policy or extramural contract or employment agreement to require assignment and declined, or having obtained assignment, reassigned.

I am not interested in situations in which a university licensing office reviewed an invention and found that it had no right to claim the invention and so did not.  That is “the correct thing” but it’s not very interesting.  Furthermore, I’m not interested in the waiver of stuff found to be non-patentable over prior art or too poorly developed to be reviewable or past the bar date.  I am less interested in waiver of ownership where there are strings attached (such as paying the university’s patenting costs, or owing the university a share of royalties), but there may be some value in such stories.

What is the “right thing”, put this way?  That a university licensing office can see that the inventors are in a better position to develop the invention, or that the office lacks the resources or expertise to take the invention on, or that others are in a better position to manage the invention, or that university management will be a net loss to the invention or the directions that it is already headed.  It may even be as simple as responding affirmatively to a request by the inventors, or a research sponsor, or an entrepreneur that the university waive its interest.

It also may be that a university office, to do the right thing, has to come up with a way to show that it does not have an absolute claim on ownership.   For this, one might see an invention that is in the general area of inventors’ research work at the university, but the office works to identify a well formed argument why the inventors, in this instance, should retain title.   Again, well formed arguments do not include “it is worthless”  or “it is not patentable” or “we are barred by law from claiming it”.   They might include, however, “this will be better developed by you” or “we are authorized by policy to agree with your request” or “we have obtained an exception to policy to allow you to work directly with your investors”.  That sort of thing.

Now, the question I have is:  are there actually any such stories in the last, say, five years?

If you know of such a story, please send it along via the comments form or email to barnett at uw dot edu.

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