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

 

[IRstuff]

The funding of companies is a different matter altogether; there may be investors, or it's self-funded. However, these investors are not necessarily those that funded the research in the first place.

TTFN
I can do absolutely anything. I'm an expert!
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[MacGyverS2000]

Either the professor funds it (the company) directly, or investors are brought in... universities do not fund companies, period.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[greycloud]

The Reading that I did goes with what you are saying; universities usually license inventions to other companies for royalty and rarely support startups and even then that doesn't mean they funded those startups.

Since I can possibly reach the working prototype stage my self my options are to license my invention to a company or companies but they will need to develop it to a usable stage first which means I can't know when to expect revenue.

My second option is to sell it to such company(s) but I will get a reduced price since the invention isn't fully developed.

My third option is to seek funding for starting a company to develop and sell my invention but I know nothing about running a company or a business or even making an estimate for money and time required to develop my invention.

My fourth option is to fully develop my invention with a university that will license it after wards ,maybe, to a company(s).

None of these options is simple and they require different levels of patent protection or confidentiality agreements.

having this discussion with you helped me a lot people, if you have anything more to say please go ahead.

 

[GregLocock]

As an example an ex-colleague who now works as a lecturer at a university set up a company to manufacture wheels. Other people he knew through work (primarily) provided the finances, and it is now well on the way to being a success story. Note that it took 11 years to get from a successful niche product (practically a prototype) to a real moneymaking business. Have you got 11 years wages saved up?

Raising capital to start a new company is incredibly difficult, partly because most innovations fail. Developing new products is also risky and expensive. To be honest the engineering is the easy bit, raising the money is the real work.

Keywords you might like to research

kickstarter

venture capital





Cheers

Greg Locock


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

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

 

[mbt22]

Universities are typically pretty bad at commercialising research. If you need further money:

Fund everything yourself (savings, bank loans, credit cards). You retain control, IP and all profits, but take all the risk and need to do (or pay someone to do) everthing yourself.
Small scale investors (friends, family, fools). May be legal issues with regulation of 'investments' in your country. Potentially all the advantages of the above, but now if you fail you take brother's savings/parent's pension down with you.
Venture capitalists. Will want a big slice of your company, but may have better contacts for selling the product. Their end game is usually to build a company and sell out for as much as possible.

My third option is to seek funding for starting a company to develop and sell my invention but I know nothing about running a company or a business or even making an estimate for money and time required to develop my invention.

This is probably your best line of attack. Whichever option you take, you need to be able to value the invention now - which means starting at where it makes/saves money and working back through development costs to see what's left. Double your development costs over what you think it will take, maybe double again to allow for the risk it won't work (and don't forget to discount future returns!).

Matt

 

[greycloud]

this option is the best paying if it succeeds but it is the most complex. I will require expertise to make the company and to develop the invention. I will have to look into how similar technological startups are put into motion.

I can go for licensing the invention which is the most trouble free option.However, I must choose a company that can develop it reliably and make sure they don't stall while developing it.

 

[MacGyverS2000]

I must choose a company that can develop it reliably and make sure they don't stall while developing it.

It is likely you will have very little (if any) control over this). They will see it as their money being spent, so they can move as fast/slow as they wish.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[greycloud]

You are correct. but I can set a date by which the licensee should start generating revenue or the contract is void. Off course this will be a matter of negotiation with the licensee.

 

[MacGyverS2000]

<chuckle> Good luck getting a company to sign that kind of a contract... you may be able to get reasonable accommodations put in for length of time, but in the end, the company may have no solid idea as to how long it will take to perfect a product for market. As such, they are unlikely to consider it all null and void simply because they didn't make an arbitrary deadline. Remember, it's their money at stake, so they get to make most of the rules (same with investors).

I wish you luck, but you may have to consider what seems reasonable and fair to most of us is often vastly different than what you can actually get written into a contract.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[greycloud]

Unfortunately what you say is correct, that is why I said its a matter of negotiation. I would think they wouldn't accept a license if they want to play around but then again maybe they are not professional enough or loose interest for some reason.

If it was your decision what would you do?

 

[MikeHalloran]

A physician of my acquaintance patented an invention, and my then employer contracted to help him commercialize it.

A half dozen proof-of-principle prototypes were distributed to test sites around the world, but the data they collected was worthless, since the basic machines didn't run consistently, and the data was recorded only as plots on graph paper. That was the state of the project when I arrived, five years in.

The doctor asked me how long it would take to make one that was suitable for the market.
I told him ten years from that date, given the normal product development process in that company, such as it was, and the strength of the company's commitment to the project.
The doctor admitted later that he was shocked at my estimate, and thought I was both crazy and incompetent.

A little less than ten years later, with me working part time on the project (all that was allowed), and stealing resources from other projects, we had built six identical pre-production prototypes that ran consistently and reliably, and their results tracked one another perfectly. They were probably too expensive for sale at a profit, but they were good enough to serve as a basis for value engineering, and to distribute to customers for evaluation of the technology.

Our crack Marketing department then decided that there was no market for the device, and they would vehemently oppose any effort to proceed further.
I was there the day the prototypes went into the dumpster.

For maybe a couple million dollars total, the company kept the device off the market for fifteen+ years.
I couldn't shake the thought that the delay was their intent all along, which was inexplicable to me, because it didn't compete with any of our products, and in fact used one of our products as a major component.

The doctor thought the technology would provide a very early detection mechanism for a worldwide pernicious disease, but he couldn't prove it with the data collected by the early primitive machines, and he was barely on speaking terms with the company by the time my prototypes were completed.

The doctor never got a dime out of the invention.

If you were expecting a happy ending to the story, I apologize.








Mike Halloran
Pembroke Pines, FL, USA

 

[greycloud]

Didn't he give himself any protection in the contract he signed with the company, or did he just have an oral contract with them?

 

[mbt22]

What is your offer? What leverage do you have to get a company to agree to develop something for you within your timescale and your definition of servious? What rights would you offer them to walk away if they think you're being unreasonable, and what happens to the money that they've spent and any know-how they've developed?

Based on your description, you're looking for a company that has the expertise to do product/process development with reasonable resources and capital to put behind it but does not have enough of an internal pipeline of ideas. Or you can persuade them that your idea is better than their own people can come up with.

The other interesting challenge will be getting someone internal look at it. Unsolicited ideas can be binned to avoid later accusations that an idea has been stolen. Finding the right person to sign an NDA and evaluate your idea will be key, so networking.

If the idea is patentable, how about looking at IP brokers? I know that they tend to be portrayed as "patent trolls", but selling licenses for someone who can't develop an idea themselves is the perfect use of the skill set.

Matt

 

[MikeHalloran]

I'm sure the doctor had a written contract. I have no idea what was in it.
I'm sure he never imagined the amount of delay, obfuscation, and confusion that he encountered.
At the time, there was a powerful individual in Marketing who asserted that the patent was trivial/ obvious/ worthless/ equivalent to a pre-existing crude technique with far less resolution and precision. ... but, AFAIK, the company never attempted to steal the technology, or do anything with it, other than bottle it up.
I would have gladly given my prototypes to the doctor instead of dumping them, but that simple act of charity was expressly forbidden. I guess the doctor had tried to exercise some penalty type clause in the contract, and our management got their nose out of joint about it.



Mike Halloran
Pembroke Pines, FL, USA

 

[berkshire]

Greycloud,
I have been involved in a project for the past 5 years that involved leasing details of a patent developed by a university.
This was presented to the principals of the company as a market ready device.
Since then I have redrawn and re-iterated the device at least 15 times, it has morphed way beyond the original patent and at least 6 new patents have been filed, and granted. I and a full time engineer together with a full time medical code compliance officer have now worked on this device, the company has raised at least 6 million dollars in funding and share capitol to the point that we are just now 5 years later about to go into series production with our " Market Ready " device. Because of non disclosure agreements I cannot give you any details , but you can see that even with a universities help, you may have a long row to hoe.
B.E.

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

 

[greycloud]

What is your offer? What leverage do you have to get a company to agree to develop something for you within your timescale and your definition of servious? What rights would you offer them to walk away if they think you're being unreasonable, and what happens to the money that they've spent and any know-how they've developed?

Based on your description, you're looking for a company that has the expertise to do product/process development with reasonable resources and capital to put behind it but does not have enough of an internal pipeline of ideas. Or you can persuade them that your idea is better than their own people can come up with.

The other interesting challenge will be getting someone internal look at it. Unsolicited ideas can be binned to avoid later accusations that an idea has been stolen. Finding the right person to sign an NDA and evaluate your idea will be key, so networking.

The answers to your question depend on what I'm bringing to the table and how developed,unique and promising my invention is.

My invention is in a hot area which is renewable energy.If you have heard about power buoys then my invention is very similar but I can produce motion in a still body of water. unfortunately, I don't have the knowledge to convert this motion into electrical energy or resources to build full scale prototype to produce usable power and that is where I mainly need help.

 

[greycloud]

Greycloud,
I have been involved in a project for the past 5 years that involved leasing details of a patent developed by a university.
This was presented to the principals of the company as a market ready device.
Since then I have redrawn and re-iterated the device at least 15 times, it has morphed way beyond the original patent and at least 6 new patents have been filed, and granted. I and a full time engineer together with a full time medical code compliance officer have now worked on this device, the company has raised at least 6 million dollars in funding and share capitol to the point that we are just now 5 years later about to go into series production with our " Market Ready " device. Because of non disclosure agreements I cannot give you any details , but you can see that even with a universities help, you may have a long row to hoe.
B.E.

I'm ok with it taking time if it needs to. My problem is in the licensing option whether its through a university or directly between me and a company. it contains the risk of the company failing to do its part of the deal for some reason as happened with the doctor that Mike mentioned above. given your experience do you think that a university can impose more powerful contract on a company and will it followup with the company to check its advance and if its playing around or not?

 

[berkshire]

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.

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

 

[IRstuff]

" I can produce motion in a still body of water. unfortunately, I don't have the knowledge to convert this motion into electrical energy or resources to build full scale prototype to produce usable power and that is where I mainly need help."

So, basically, you can't even mathematically prove that your idea works? Why do you need to build a full scale prototype when you don't even have a small scale demonstrator?

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

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

faq731-376 forum1529

 

[greycloud]

So, basically, you can't even mathematically prove that your idea works? Why do you need to build a full scale prototype when you don't even have a small scale demonstrator?

on the contrary, I'm now in the process of making a prototype or a small scale demonstrator as you called it. If you mean that I'm missing any proof my invention can generate electricity then that is not necessary, Any sustained mechanical motion can be converted to electricity and you don't need a proof for that.