THE PARTNER: TechLink, and Montana State University (MSU)
THE PROBLEM: The Department of Veterans Affairs (VA) manages more than a billion dollars utilized at about 80 productive research centers throughout the U.S. to advance basic and applied research to solve veteran-related healthcare issues. This research often results in ground-breaking inventions and patentable discoveries that lead to private-sector partnerships that frequently consist of direct licensing and collaborative research agreements.
More than 80 percent of VA researchers hold an appointment with at least one outside academic institution, and they are often obligated to assign invention rights to their employing institutions – resulting in a great deal of jointly owned intellectual property. In these cases, Invention Management Agreements (IMAs) govern technology transfer (T2) relationships between the VA and an academic partner; this agreement strives to achieve transparency and open communication between the joint intellectual property owners and hopes to ensure clear title while also assisting in reaching proper legal inventorship determinations. In 2019, the Department of Veterans Affairs Technology Transfer Program (TTP) began to consider taking heightened diligence concerning its academic partners’ and licensees’ invention disclosures and distribution of royalties to the VA. It became apparent, however, that its limited staff at the time did not have the bandwidth or technical experience to effectively enforce all the oversight provisions in its many IMA’s, licenses and research agreements.
THE SOLUTION: TTP expanded its staff and instituted a regular audit program, enforcing provisions of its IMAs and licenses. TTP looked to the VA Office of Business Oversight (OBO) for technical assistance in achieving this goal. TTP executed a service-level agreement with OBO to develop the T2 audit program to perform audits of academic affiliate partners with IMAs. Audits aim to confirm that the terms of the IMA between VA and its academic affiliate partners were being met, identify areas requiring improvement and provide specific recommendations as needed.
As OBO performed its audits, one of the unique questions was how to identify whether university partners disclosed all inventions to which VA scientists and researchers contributed. At one point, OBO requested the university to search its own invention database, but the team was hesitant to rely upon the university being audited to provide audit results because this reliance would create an audit independence conflict. To avoid this, OBO and TTP conceived of a solution to parse all available patent databases, cross-indexing university patent assignment information with available VA research employee information.
THE IMPACT: This innovative approach has identified more than 300 inventions previously undisclosed by academic partners to VA. The VA is not aware of any other federal agency performing audits of its affiliates or licensees, making these audits the first of their kind in the T2 field. This program represents a notable advancement in the practice of T2 – not only for the federal government but also having a wider impact on the national T2 ecosystem. Due to the auditing program, TTP has established better relationships with its Academic partners.