invention ownership across universities 3

[greycloud]

Hi guys

I'm working on an invention as a personal effort and would like to continue developing it with a university.

my question is what is the arrangement between the inventor and the university regarding the ownership of the invention?

Thanks for participating

 

[greycloud]

Greycloud,
Given that most universities work with student projects that for the most part are generated by the students themselves, or with requests from outside bodies for research into a program they have an interest in, with funding by that outside body . You may be regarded as an outside body with an interest. You may find that a university will not want to fund any research on a project you bring in, unless they believe there is a quid pro co and it benefits them. I had a college professor complaining to me that universities do not have much money for pure research, that most of what they did was by outside funding with an agenda/interest. Some universities have departments that take promising ideas from students and help them bring them to market, which is where the company I am involved in picked up.
Fully document any prior art , show how your device improves on that, then get it dated witnessed and signed. later you may need this to show you thought of it first. Then good luck in your endeavor .
B.E.

thanks for the explanation, in the discussion above the guys explained to me that universities will probably license the technology to some company as you described.I also understand a university might require full transfer of IP rights to it to help me do anything. what I want to ask you is based on your experience could a university impose a powerful contract on the licensed company, can it have the power to monitor the progress of development in that company? can it impose some penalties in case the company appears to be stalling development? I understand you can't talk about your specific project but any advise in general is helpful.

 

[MacGyverS2000]

Fully document any prior art , show how your device improves on that, then get it dated witnessed and signed. later you may need this to show you thought of it first. Then good luck in your endeavor.

That depends upon his location... if he's in the US (doesn't sound like it), all of that is irrelevant (first to file is the rule these days).

Dan - Owner

http://www.Hi-TecDesigns.com

 

[IRstuff]

"impose a powerful contract on the licensed company, can it have the power to monitor the progress of development in that company? can it impose some penalties in case the company appears to be stalling development"

As a pure licensing arrangement, no; since there's no investment from the university, there's no leverage.

TTFN
I can do absolutely anything. I'm an expert!
homework forum: //

http://www.engineering.com/AskForum/aff/32.aspx

faq731-376 forum1529

 

[greycloud]

As a pure licensing arrangement, no

And is there another way to achieve that.

 

[MacGyverS2000]

You are trying to get the University in on business success speculation... they will never do that. This is not the correct path to take, I'm not sure how many ways we can say it.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[IRstuff]

Universities are rarely provide venture capital; they have a fiduciary responsibility to protect their endowments, so only products that are ready to go and have a known demand would stand any chance of getting university funding.

TTFN
I can do absolutely anything. I'm an expert!
homework forum: //

http://www.engineering.com/AskForum/aff/32.aspx

faq731-376 forum1529

 

[greycloud]

You misunderstood my question. I asked Berkshire how can a university, if it can , follow up with a licensed company and withdraw its license in case a company starts stalling on the project. Please understand that my main purpose from this thread is to gather information so just because I'm asking about an option doesn't mean I'm gonna use it.

 

[MacGyverS2000]

As long as the University is getting its licensing fee, it could care less what the company does with it. If the University believes the company has a good chance of accomplishing its goal, it will likely include a per-unit clause. If the University thinks the company will fail, it will likely include a non-exclusivity clause. And so on. The University will protect its revenue stream at best as possible, regardless of what the company does.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[greycloud]

As long as the University is getting its licensing fee, it could care less what the company does with it. If the University believes the company has a good chance of accomplishing its goal, it will likely include a per-unit clause

and this license fee will continue to be paid regardless of project progress? is it a significant fee usually? what is a per unit clause?

 

[berkshire]

Universities can control how particular patents that, they control, are licensed and used, in the case of the product I am involved in, we were given a segment of the possible uses of the patent, and other companies were given licenses to develop , different segments, with all companies being told not to tread in each others territory . We went our merry way with it , other companies developed completely different products using the same basic principle ,and yes there are royalties involved.
B.E.

You are judged not by what you know, but by what you can do.

 

[mbt22]

and this license fee will continue to be paid regardless of project progress? is it a significant fee usually? what is a per unit clause?

It entirely depends on what you negotiate. I've seen up front fees in exchange for a perpetual and exclusive license, ongoing fees per year (not many of these) and simple per unit fees with licenses available to anyone who asks. A per unit fee is when they make a small payment for for every widget that is sold.

Do a market assessment of how much money your idea might make, and of how much it would cost to develop. Decide how much of the difference you think is fair for you. Calculate the return for the licensee, does it look fair for them given that they are assuming all of the risk? If you can't do this, pay someone who can and has done. If you want to be able to revoke their license based on lack of progress, how much less will you take and how do you define progess?

I'm tangentially relate to green energy R&D, and the number of unsolicited proposals often including full glossy business plans showing that they'll change the economics of energy, many granted patents and defined commericialisation plans numbers in the thousands per year.

Incidentally, also think about arising IP - if they come up with some clever tricks to make your device real and patent them, do you get a license? They paid for the development and thought of them. Suddenly if you revoke the license they can't do anything but neither can you.

Matt

 

[mbt22]

I'll say it again. Universities are not good at licensing. Their strong point is they control access to big swaths of IP and some smart people. You own the IP and are the smart person. They bring nothing to the table and will want a cut of the money. You need an experienced IP/licensing lawyer. You're setting up a business, so you'll need all the other professionals that brings.

Matt

 

[greycloud]

You're setting up a business, so you'll need all the other professionals that brings.

I will have to talk to some venture capital company or entrepreneur assistance groups to educate my self on this matter.

 

[GregLocock]

I strongly recommend reading

http://www.amazon.com/Burn-Rate-Survived-Years-Internet/dp/0684856212,

as an entertaining and depressing introduction to how startups work in practice.

Cheers

Greg Locock


New here? Try reading these, they might help FAQ731-376

http://eng-tips.com/market.cfm?

 

[greycloud]

I believe its a great book for the insight it offers on that important era in computer and internet technology but it is of little use to me since I'm in a complete different category here, besides its a very old book and a lot has changed.
may be I'll get it as a general read.

 

[IRstuff]

And so it ends...

TTFN
I can do absolutely anything. I'm an expert!
homework forum: //

http://www.engineering.com/AskForum/aff/32.aspx

faq731-376 forum1529

 

[greycloud]

for now,I might come later for more advise and I would like to thank all of you for participating and helping me clear out my options.

Best regards

 

[Maui]

For what its worth, the OP appears to originate in Kuwait.

Maui

 

[greycloud]

LOL, yes I am. why are u posting this?

 

[Maui]

Because of this from MacGyverS2000:

That depends upon his location... if he's in the US (doesn't sound like it), all of that is irrelevant (first to file is the rule these days).