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Home › Topics › Basics of Intellectual Property › Disclosure of Inventions

Case Examples, Sarah Johnson

Case Example: Invention Disclosure

Topics Basics of Intellectual Property Disclosure of Inventions Case Example: Invention Disclosure
Bonita Morgan, Phd

Name: Sarah Johnson, PhD

Description: Sarah Johnson completed a research project while a PhD graduate student several years ago in which she engineered a unique peptibody, a combination of a protein and an antibody. She did a postdoc at another university, followed by two years working at a large, established biotechnology company.

Scenario: Sarah longs to start her own business that is more directly involved with clinical applications of proteins and antibodies. She feels the research she completed while getting her PhD could provide the foundation.

Question: Does the university still have the rights to this intellectual property?

Answer: Yes. By virtue of the Bayh-Dole Act, the university where Sarah was a graduate student holds the rights to intellectual property developed at their institution even if the inventor leaves. However, if the university has no interest in exercising its right to the IP, Sarah may be able to negotiate with them to obtain that right. They may ask for some payment in return. Sarah may want to hire a lawyer to act on her behalf in this matter.

Bayh-Dole Regulations – An NIH resource on this law regarding intellectual property that arises from research funded by the federal government, which says that the federal government gives control of such intellectual property to the university.

View Case: Part 2 – Early Steps for Finding Investors

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Topic Home Expand All
Intro to Intellectual Property
3 Articles
Types of IP and Their Protection
Intellectual Property FAQs
Resources on Intellectual Property
Disclosure of Inventions
3 Articles
Case Example: Invention Disclosure
What Is IP Disclosure, and What Impact Does It Have?
Non-Disclosure Agreement (NDA)
Patents
7 Articles
Definition: Patents
Preparing to Submit a Patent Application
Patent Application Key Elements
Patent Application Steps
Case Example: Agriculture Patent
FAQs About Patents
Resources on Patents
Licensing Agreements
3 Articles
Introduction to Licensing and Collaborative Agreements
University Technology Transfer Office (TTO)
Tips for University Licensing
Return to Basics of Intellectual Property
End Resources

This project is funded by National Institute of General Medical Sciences (Grants 1R43 GM131458-01 & 2R GM131458-02)


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