Ownership of Intellectual Property
As a nonprofit educational institution, it is essential for Carnegie Mellon to retain ownership of its intellectual property (1) to fulfill obligations the university has under federal regulations, (2) to assure that faculty are not blocked from continued research in areas of expertise and (3) to avoid tax consequences for university.
We understand that the issue of the university maintaining ownership of intellectual property is a concern for our industrial sponsors who sometimes do not fully appreciate the obligations and mission of the university. From our industrial sponsor’s point of view, asserting ownership in intellectual property is the only way they see to protect their competitive advantage and assure that proprietary information is not disclosed. We have found, however, that through various licensing options (nonexclusive or exclusive) with special provisions to protect a company’s proprietary information, we can provide the company with value for their investment in university research without putting the university at odds with federal regulations (e.g., assigning rights in background technology to a company without proper protections for the government’s interests) or tax regulations (e.g., performing a “work for hire” contract, which may be viewed under tax laws as a for-profit activity and has tax consequences for the university).
Additionally, under the university’s intellectual property policy, faculty have a financial interest in intellectual property developed at the university. The university cannot under the constraints of this policy enter into agreements without adequate protection for the faculty member’s financial interests.