Do Investigators Need Their Own Lawyers?

Investigators are often a key to success in the expanding world of collaborations between industry and universities. Yet, unlike the company and the university, the investigator is rarely represented by legal counsel. This is often the case whether the investigator serves as an independent consultant to the company or engages in company-funded research performed at the university. This situation may help to explain why university-industry relationships are plagued with controversies, including those affecting patents and ownership, publications, material exchanges, and increasing secretiveness. Yet the numbers of university-generated patents, licensing transactions, and funded research efforts have increased dramatically over recent years. Though companies and universities are always well represented in these matters, investigators themselves typically rely on the institution's legal counsel, or none at all. What, if anything, can be done about this? One solution that remains unexplored is legal representation for investigators. The patent laws themselves form the basis for many of the problems we see today. Indirectly, these laws permeate university- industry relationships, manifesting themselves in an overriding concern for two themes: confidentiality and ownership. In effect, these laws require that the inventor file patent applications first and disclose the invention publicly only after having filed. Reversing this sequence, even inadvertently, can render an invention unpatentable--doomed by the inventor's own "prior art." (For additional information, see F. Cowan, The Scientist, 12[7]:8, March 30, 1998.) Without strong obligations governing confidentiality (and publications), such problems can lie dormant like a time bomb ready to explode years later, when the resultant patent is subjected to the intense scrutiny of litigation. Patent laws also require that anyone who contributes to the conception of an invention be named as an inventor. In turn, any inventor, regardless of the scope of his or her contribution, can become a coequal owner of the resulting patent and can fully exploit it without the permission of the other owners. Yet what can a company do when it finds that the "Eureka!" of a project has been shouted by a colleague of the investigator, who was not supposed to be involved and has no confidentiality or assignment obligations? The failure to correctly name the inventors can similarly remain undiscovered and dormant until years later when revealed in the course of litigation; such a situation can invalidate the patent or complicate ownership rights. These fears serve as the basis for companies to impose seemingly onerous requirements on everyone involved. The university may be able to negotiate such matters, but not necessarily with the investigator's interests foremost in mind. In a consulting relationship, it is likely that the university will not be involved. Investigators themselves have few options available in handling such issues: They can study the issues themselves, ignore them, rely on the university, or hire a professional. But is it really possible (or cost-effective) for the individual to be represented? The university likely would argue not and would take a paternal tone in assuring the investigator that the administration will accommodate whatever concerns he or she may have. What is the goal of representation? Basically, it is: to allow investigators to establish whatever individual rights they may not have otherwise had; to assert rights they didn't realize they had; to avoid obligations they may not actually need to bear; and to better understand the obligations they do have. Counsel could be available at a number of defining moments, such as when the investigator enters a new university position, to review the university's agreement and policies and the impact of previous professional relationships. During the employment relationship, counsel could help the investigator to understand rights and obligations that arise in performing funded research, evaluating consulting opportunities, and perhaps seeking permission to spin off university technology. Counsel would also be useful well after the employment relationship has ended, to determine what rights and obligations may affect the investigator for years to come. Having all parties adequately represented can improve the overall process and help to achieve the objectives shared by everyone: patentable inventions with clearly defined ownership. Generally, any party to a legal relationship will fare better in a dispute if it can be demonstrated that the other party had, or at least had available, competent counsel at the time of entering the relationship. Perhaps the biggest obstacle to obtaining counsel for investigators is finding the right attorneys and adequately defining their roles. Relatively few attorneys are skilled in such matters--and an unskilled attorney can compound an already complex relationship. Such attorneys, however, are likely to already perform legal work for the respective university (or company) and could be precluded from working with investigators. Nor are individual investigators likely to provide attorneys with an equally lucrative practice--the work would tend to be sporadic and would create a potential conflict preventing the attorney from handling further work for the university, the funding company, or even a spin-off company. To be effective, the legal counsel process needs to be adopted by universities, in a manner analogous to the technology transfer process itself, by identifying qualified "investigator's counsel" or encouraging investigators to identify their own. Such counsel would be required to understand the university's policies, then would be given sufficient authority and independence to do the job. Each party would be required to understand and accept the role of the investigator's attorney and to effectively coordinate its efforts with the attorney's. Such an approach can work, if handled properly, and would serve to improve the overall process for all concerned. The few essential elements that the patent laws impose on such relationships can be adequately addressed in a manner that is fair to all, including investigators, but only if those investigators are able to stand on coequal footing with the other parties involved. Philip M. Goldman is an intellectual-property attorney with Fredrikson and Byron in Minneapolis.

Do Investigators Need Their Own Lawyers?

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