Duke University requires all employees to execute a written invention assignment agreement for inventions that employees make within the scope of their University research. This written invention assignment agreement helps Duke meet its obligations under its many sponsored research agreements, including federal grant awards that are subject to the Bayh-Dole Act.
Why DO I Need to Sign Invention Assignment?
The Bayh-Dole regulations for federally funded grants now require that institutions have a written agreement in which employees assign the right, title and interest in and to each invention made under the federal contract. The assignment helps ensure that Duke complies with its obligations under all research funding/sponsorship agreements, including non-federal sponsors.
The Faculty Handbook states “Inventions resulting from research . . . conducted by University employees in whole or in part on University time or with significant use of University funds or facilities shall be considered the property of the University” and “Employees shall upon request assign to the University all rights to such inventions . . . .” The timing of Duke’s request for the written assignment agreement has been moved to the attestation as a result of the government’s changes to the Bayh-Dole regulations.
What Is The Bayh-Dole Act?
The Bayh-Dole Act is a federal statute that created a uniform federal policy for the management of inventions and corresponding patents resulting from government-funded research. This policy is implemented through a standard clause that is inserted into federal funding agreements with universities. In general, under this clause, when the University receives a federal grant, the University must, among other things, grant rights to practice the invention to the federal government. Because of these requirements, it is important for Duke to secure its rights in inventions in writing and in advance so that Duke can meet its obligations under Bayh-Dole.
Is Duke’s Requirement That Employees Sign Written Assignment Agreements Unusual?
Most research institutions follow a similar approach as the result of the Bayh-Dole regulations and a 2011 U.S. Supreme Court case Stanford v Roche, which clarified that a University must have a present assignment of inventions rights in its faculty inventions to allow the University to have clear ownership over subsequent parties claiming that the invention was assigned to them. See Stanford University v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011).
What Happens If I Don’t Sign The Assignment?
If you don’t sign the assignment, it would be a violation of Duke’s requirement that all employees execute a written assignment of inventions to Duke upon request (see Faculty Handbook, 2019, Appendix P, page 10, Article IV C.). A failure to sign the assignment may result in Duke not allowing the researcher to conduct the proposed research.