Who owns the IP on the commercial aspect of my PhD?

June 25, 2008 10:36 PM

IntellectualPropertyFilter: Who owns the IP on the commercial aspect of my PhD?

Hoping to warm myself by the economic glow of my ideas sometime in the future... help me plan now.

I'm currently working through a practise-based research PhD in Design, which in simple terms means I design something and write an exogesis about the work, or the other way around - I would research, then create something as an extension of that research. I've definitely over-simplified the practise-based PhD model in this description, but it's a good start.

In my case, I'm doing the scholarly part of the research first, then designing. The practical part is a commercial idea that I have long nurtured in my imagination, and believe has the potential to be an extremely lucrative commercial 'thing'. When I think back on it, all the various creative and academic things I have done in my life have all been leading up to the creation of this project, and specifically, the idea has been something I have been designing, if only mentally, for years. I joined the University in order to give structure and weight to the creation of this project, as well as to access support and facilities - the brains trust that is the University.

It's also important to mention at this point, that I am a part-time student - not full time, and as far as the Uni is concerned, I only have access to supervisory support from professors - no workspace, technology, facilities or anything else. I do this work at home on my laptop, or in the Uni library, and meet my supervisor when I feel the need, usually off campus. The Uni has seen the merit in my project, from an academic stand-point, which is good because otherwise I'd be trying to pull this together without deadlines or expectations from others, meaning a completion date of sometime after I die... (ie. never)

SO! my question: Who owns the IP? How can I protect the IP on this project, so that if/when it is commercially successful, I benefit, not the university. I don't want to reach the end of the program, publish, then realise I don't have the full right to the income my work may provide. Is it best to keep the better part of the commercial part of the work separate from the assessment process (doubling my workload), or does it not matter a bit?

I have consulted everyone I can at the Uni, from supervisors through post-grad research department and the answers are so vague and differ so much...well, I'm not sure where I stand.
I have read the University's clear-as-mud policy on the issue. Actually, I probably don't get it because I don't really have the legal mind necessary to cut through the crap and get to the point. Also, this is the Uni's policy, and they're always going to tell me what they think my rights are from their prespective.

What I need is a legal advice. Can't afford that, so any ideas, hive mind?

posted by lottie to law & government (15 comments total)

In the United States, the university owns the rights to any IP you produce on their time/money.
posted by k8t at 10:43 PM on June 25

Analogize your idea into something else so that you can capitalize on your real idea once you have your golden sheepskin.
posted by rhizome at 11:02 PM on June 25

In the United States, the university owns the rights to any IP you produce on their time/money.

Actually, it depends. That's certainly true for staff members (although many universities now have profit-sharing and commercialization agreements). With a student, the issue is a lot cloudier. For staff, any product can be classed as work-for-hire. For a student, that may not be the case and can depend on how you are funded.

Im short: it depends.
posted by outlier at 11:09 PM on June 25

Hopefully someone with more knowledge of Australian law will pipe up, but it appears to me the relevant clauses are:
"The University asserts ownership of Intellectual Property created by students where:
a student participates in a research team whose members include staff members;
the Intellectual Property has been created with substantial contribution or use of University resources;
the Intellectual Property has been created as the result of pre-existing Intellectual Property owned by the University;
the Intellectual Property has been created as a result of funding provided or obtained by the University."
My interpretation would be that you're not on a research team (you've got an advisor, but you don't have people working alongside you)
It doesn't sound like it's been created as a result of university funding, but you're in the best position to know that.
It also doesn't sound like it's been created as a result of pre-existing IP owned by the university -- that would be something more on the order of taking something they've patented, modifying it, and patenting the new version.
I don't know what they consider to be a "substantial contribution or use of University resources" -- my interpretation would be that you're not receiving substantial resources, since you don't have use of their technology, workspace, etc, but I think this is the biggest potential sticking point.
Based on that analysis, you should be in the clear. On the other hand, if it does become a substantial commercial success and the university decides it wants a piece of the action, it would take up to two-thirds of your revenues if it was successful in claiming ownership. Your best bet at protecting it, short of separating it entirely, is to be aware of the above limitations and avoid using university resources, taking their funding to work on it, etc.
Also, have you tried talking to any professors at the law school? They may have a better handle on how the university implements the policy.
posted by katemonster at 11:21 PM on June 25

IANAL but Actually, I think your policy is pretty clear:
The University will not generally claim ownership of Intellectual Property created by students except in the circumstances described below......

Where a student's supervisor makes a contribution to the creation of Intellectual Property the Intellectual Property will be owned jointly by the student and the University. The University asserts ownership of Intellectual Property created by students where:
- a student participates in a research team whose members include staff members;
- the Intellectual Property has been created with substantial contribution or use of University resources;
- the Intellectual Property has been created as the result of pre-existing Intellectual Property owned by the University;
- the Intellectual Property has been created as a result of funding provided or obtained by the University.

So, if your professor is not making a contribution to the creation of the Intellectual Property, you are not part of a team, no substantial use of University resources, no funding and no use of pre-existing materials. If you read further down in the document, you may need to disclose the work to the appropriate office and get clearance that you do meet the requirements to own it completely.
posted by metahawk at 11:22 PM on June 25

First, you need to consider that advice from your supervisor certainly might count as a contribution to the work. While a PhD student I worked on a few projects with literally zero input from my supervisor, my PhD thesis project was not and really could not be one of those things. If you don't want the university to claim partial ownership of the work you ideally should sort this out beforehand, with your university's research office. A statement from your supervisor might not be good enough.

It is important to figure out what "intellectual property" you are trying to protect. Patents, copyrights, trademarks, and trade secrets are dramatically different creatures. If you want to patent an invention you need to start taking the legal steps to protect it now.

Your university's research office says:

There are various arrangements for ownership of project IP. An early discussion with a business development manager from the Industry Engagement and Commercialisation Team is highly recommended to determine the arrangements that may apply to your individual situation.

Yes, talk to those people.

What I need is a legal advice. Can't afford that, so any ideas, hive mind?

If you can't afford legal advice, your idea probably isn't going anywhere. If your idea is actually worth anything, then the cost of the legal advice will be a drop in the bucket. You will need it eventually and it is best to have the advice from someone working for you rather than for the university.
posted by grouse at 1:13 AM on June 26

I also ANAL... But I concur - as you've described it, it would seem that the IP on your creation is clearly yours. Assuming the University isn't funding you, you aren't building on top of IP the University already owns, you're more or less going it alone (advice from a supervisor would be fine) and you're doing most of it with your own resources.

What you could do, I suppose, if you're concerned is draft a small letter saying that inline with the university's stated policy on Intellectual Property (4.1.6) you are asserting your whole ownership of the IP created by you pursuant to your PhD studies. Sign and date it, ideally get your supervisor to sign and date it also and then store it away somewhere safe. It's unlikely that you'd ever need it but in the case of a challenge it would demonstrate clearly that you aimed to hold the rights exclusively and did so, to the best of your knowledge, according to the policies of the University. I wouldn't be legally binding, but would be useful as a method of proving your intentions and the understanding under which you created your property.

While legal documents are great it is often almost as good simply to have clear and well documented statements of intent and understanding that can be used to back up any claims you have to make later. They aren't iron clad (but nothing is) but they are better than vague recollections and he-said, she-said... Or so a lawyer advised me not all that long ago.
posted by sycophant at 1:24 AM on June 26

What grouse said, doubly so.

If this is worth serious money, it's worth a consultation with an IP lawyer. These are really difficult legal issues, with many dollars riding on the line.
posted by paultopia at 2:13 AM on June 26

This isn't exactly the same case, but for a uni project (Bachelor's level in Australia) I made up some badges with interesting slogans. The slogans were based on course lectures, but the designs were created by me.

The lady who made them into badges for me were quite interested in my designs and suggested I sell them. I asked my lecturer about it and he said it was fine for me to sell them if I wish, just to do it after assessment.

Our Student Guild has a free lawyer that shows up every so often - try asking your guild or student services to see if they can recommend a free or affordable lawyer.

QUT, my uni, has Blue Box, a uni section that specifically deals with the commercialization of students' intellectual property. Their website may have some useful information for you.
posted by divabat at 3:16 AM on June 26

Taking the contrary position - if the idea is that lucrative, then what's the PhD for?

If you hope to lend your invention some kudos through the academic process then don't you think the University should be able to benefit in some fashion? Maybe not through ownership of the IP, but in some fashion.

During my research, it was made clear than anything that came out of the project, whether pre-existing ideas or not, was owned by the University. In the end the resulting company was co-owned between the University's VC arm and the researchers responsible for the work.

Another possibility is to patent your idea in the first instance, then the University's exploitation would be mitigated by the patent.
posted by unsliced at 3:42 AM on June 26

In Australia (pdf), a patent may only be granted to a person who is the inventor, a ‘person’ (e.g. an individual or a company) entitled to have the patent assigned to them/it, a person who derives title to the invention from the inventor or assignee or, in cases where the person is deceased, their legal representative. Most countries work on principles similar to the old British law concept of ‘master and servant’, that is, if you make an invention in company time using company materials in a field of relevance to the company’s business, and it is not unreasonable that you could contribute to an innovative idea as part of your work, the invention belongs to the company as of right. Paid researchers fall squarely into this category.

Decisive will be your formal relationship to the Uni. If you receive any sort of pay, especially as a paid researcher, you probably don't have much claim to the patent.

Nonetheless, must jurisdictions require the assignee to provide some remuneration to the inventor. In Japan and Germany this is directly linked to the commercial value of the patent. In Australia, YMMV.

Spend some coin with an Austalian patent attorney and find out.
posted by three blind mice at 5:37 AM on June 26

Another issue to consider: have you published your research? If the research was published over a year ago, and no patent application has been filed, it's possible (not certain) that it is in the public domain. Here's a page on the 1-year grace period in Australia. Also, if you're looking at filing in countries other than Australia, some countries have no grace period at all, so you couldn't get a patent in those countries if the invention was published even one day before the application was filed.
posted by DevilsAdvocate at 6:40 AM on June 26

The situation very much depends upon the actual facts of your situation. Since you do not want to potentially jeopardize your ability to patent the work in the future by revealing it here you really should consult with an IP attorney who can assess your situation and apply the law to your particular facts to help assess ownership here and to provide you with guidance on how to minimize the chances of their being a dispute with your university or of losing such a dispute. That you had conceived of this idea prior to university and that you are perfecting it using your own resources seems encouraging though.
posted by caddis at 6:59 AM on June 26

I've worked in an intellectual property / technology transfer office for a US University. It very much depends on the IP policy of the school. Our office was always willing to sit down with a student/professor/whoever and discuss how the university IP policy would affect them and their work. I'll also add that, at least at our office, we presented the IP policy very clearly and if we did not have ownership we were very willing to say that it wasn't ours. Whatever you do, sort this out far far before even the potential for money comes along, because it always changes things.
posted by striker at 11:10 AM on June 26

I forgot to add - Don't be afraid or hesitant to go talk to your University's research, tech transfer, tech development office. Talk it over with them and you'll get a good understanding. Get it in writing if you need to. Then, if you're not happy with the result and don't agree, consult an IP attorney.
posted by striker at 11:12 AM on June 26 [1 favorite]