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invention ownership across universities
3

invention ownership across universities

invention ownership across universities

(OP)
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

RE: invention ownership across universities

A contract will define it.
Put it in writing - signed.

RE: invention ownership across universities

The university will want some level of IP ownership, how much will depend on what you are bringing to the table and how good a negotiator you are. Universities are also pretty picky on what they are willing to work on, you will need to pique their interest to even get to the contract negotiation point. Keep in mind that working with a university is not the same as contract design work. They will staff grad students on your project, maybe not even a fulltime one. It will take much longer to get a deliverable out of them and you may not be happy with the quality of the result. They will also want to publish papers about the work they perform.

RE: invention ownership across universities

(OP)
I understand that their should be a contract but I believe some universities have specific IP policies. A university may take long to achieve a result but I believe that is better than developing my invention with a multi national corporation. Another problem for me is how to present my ideas to different universities without having the fear they might steal my idea

RE: invention ownership across universities

(OP)
Problem is how to get such an agreement if I'm contacting a university in another country

RE: invention ownership across universities

The few contracts I have seen basically make everything property of the university.

Mike Halloran
Pembroke Pines, FL, USA

RE: invention ownership across universities

Contact a lawyer... you're obviously in over your head, and anything we say will be useless when a lawyer gets his hand on it. It's not like you're going to write your own contract anyway, so go directly to the experts.

Dan - Owner
http://www.Hi-TecDesigns.com

RE: invention ownership across universities

Heed the contract and disclosure advice. Also, get the invention started with a university in your country. You will compound all of your problems by going to another country.

RE: invention ownership across universities

(OP)
I should contact a lawyer to discuss nondisclosure agreements before contacting other universities. The universities in the country I live on don't have the capabilities or the will or laws to support inventions so I have to look elsewhere. Thanks for you advise guys. If you have anything else to say go ahead.

RE: invention ownership across universities

Why can't you continue development on your own?
I.e., what do you expect a university to contribute?

Mike Halloran
Pembroke Pines, FL, USA

RE: invention ownership across universities

(OP)
I can develop a working prototype on my own but problems start there.

first patenting inventions is expensive and in which country should I patent it?

second making a prototype doesn't mean making a product and I need funding and technical expertise to reach that stage.

Third, I will need funding to start a business once I got my product ready and I don't have that either. This is what a university can help me do in exchange for a percentage of ownership and profit.

My other option is to sell my invention but I think that I need a patent in order to do that, not sure though.

RE: invention ownership across universities

From your last post, I think you may be heading down the wrong path...

Universities aren't really there to help you productize, they're there to research how to do something. They want to add patents to their IP list. If you can make a prototype yourself, then do it... the university will offer you little to nothing towards that goal. If you look at a university's IP sheet, it's just that, a listing of IPs they are willing to license to folks who wish to put it into a product. But they're not in the business of making said product. They will not generally help you with funding, either, that's what venture capitalists do.

Dan - Owner
http://www.Hi-TecDesigns.com

RE: invention ownership across universities

(OP)
I get what you are saying, but let me rephrase what I said about the product part. universities won't make a product to commercialize but they can develop prototypes of actual size to show its full industrial potential ; take American universities for example, they cooperate with many industries including NASA to produce prototypes used directly in industry.then again, they might be getting funding for these projects.

Regarding funding, there are startups started by inventors who made their inventions with their universities, so do you think they had a third party funding.

let me know what you think.

RE: invention ownership across universities

No, they generally do not. Otherwise, the third parties would have done the startups. Generally, university professors start companies based on their own research at the university, that was funded by the university, and with license from the university.

TTFN
I can do absolutely anything. I'm an expert!
homework forum: //www.engineering.com/AskForum/aff/32.aspx
FAQ731-376: Eng-Tips.com Forum Policies forum1529: Translation Assistance for Engineers

RE: invention ownership across universities

(OP)
"that was funded by the university"

I'm not very clear on what you mean, do you mean that the research was funded by the university or that the university funded both the research and the company?

RE: invention ownership across universities

(OP)
then who funds such a company usually? if your telling me that neither the university or a third party would do the funding.

RE: invention ownership across universities

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

RE: invention ownership across universities

(OP)
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.




RE: invention ownership across universities

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: Eng-Tips.com Forum Policies http://eng-tips.com/market.cfm?

RE: invention ownership across universities

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.

Quote (greycloud)

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

RE: invention ownership across universities

(OP)
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.

RE: invention ownership across universities

Quote (greycloud)

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

RE: invention ownership across universities

(OP)
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.

RE: invention ownership across universities

<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

RE: invention ownership across universities

(OP)
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?

RE: invention ownership across universities

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

RE: invention ownership across universities

(OP)
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?

RE: invention ownership across universities

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

RE: invention ownership across universities

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

RE: invention ownership across universities

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.

RE: invention ownership across universities

(OP)

Quote (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.

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.

RE: invention ownership across universities

(OP)

Quote (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.

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?

RE: invention ownership across universities

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.

RE: invention ownership across universities

" 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: //www.engineering.com/AskForum/aff/32.aspx
FAQ731-376: Eng-Tips.com Forum Policies forum1529: Translation Assistance for Engineers

RE: invention ownership across universities

(OP)

Quote (IRstuff)

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.

RE: invention ownership across universities

(OP)

Quote (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.

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.

RE: invention ownership across universities

Quote (berkshire)

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

RE: invention ownership across universities

"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: //www.engineering.com/AskForum/aff/32.aspx
FAQ731-376: Eng-Tips.com Forum Policies forum1529: Translation Assistance for Engineers

RE: invention ownership across universities

(OP)

Quote (IRstuff)

As a pure licensing arrangement, no

And is there another way to achieve that.

RE: invention ownership across universities

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

RE: invention ownership across universities

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: //www.engineering.com/AskForum/aff/32.aspx
FAQ731-376: Eng-Tips.com Forum Policies forum1529: Translation Assistance for Engineers

RE: invention ownership across universities

(OP)
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.

RE: invention ownership across universities

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

RE: invention ownership across universities

(OP)

Quote (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

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?

RE: invention ownership across universities

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.

RE: invention ownership across universities

Quote (greycloud)

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

RE: invention ownership across universities

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

RE: invention ownership across universities

(OP)

Quote (mbt22 )

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.

RE: invention ownership across universities

(OP)
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.

RE: invention ownership across universities

(OP)
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

RE: invention ownership across universities

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

Maui

RE: invention ownership across universities

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

RE: invention ownership across universities

Because of this from MacGyverS2000:

Quote:



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).

RE: invention ownership across universities

That was in reference to documenting prior art, which depends upon the patent laws of the country you file in.
B.E.

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

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