Innovation essential components limit investor mobility – including departure for startup

[Brenda M. "Preserving the Fruits of Labor: Impediments to University Inventor Mobility," Tennessee Law Review 89, no. 1 (Fall 2021): 1-66 heinonline gdi-tm]

The Intertwining of Labor and '1nnovation-Essential Components"

The ability of university inventors to depart from their parent ' • institution may be• constrained by numerous factors. Although inventors should be able to leave with their knowledge, skills, and experience gained from the parent university, 34 various considerations may inhibit mobility. I have coined the term "innovation-essential components" to identify important aspects of the innovative process that may hinder inventor mobility, such as intellectual property, data, grants, contracts, and other agreements and restrictions. Materials, inventions, and data created during the inventor's tenure are typically owned by the parent university.35Employment agreements often contain assignment clauses in which intellectual property-such as patents, trade secrets, copyright, and trademarks-are assigned to the parent university. 36 These agreements also typically indicate that any data, specimens, or laboratory notebooks are the property of the university, not the inventor.37 Without a license, inventors do not have permission to use the intellectual property, data, or even their own notebooks if covered by an agreement vesting ownership in those materials with the university. 38 Indeed, inventors cannot practice their previous inventions without permission after . they leave their original employer, even in situations where the patent covering the invention may not be valid. 39 Consequently, inventors' ability to move to another institution, or even start up their own company, may be severely hampered.