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Introduction to Intellectual Property, Part 3 — Issues in Ownership

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If I file for a patent in the U.S., does it cover international patent claims?

When you file for a patent in the U.S., it is important to think through the different market applications of your product or service. Will you do business in a foreign country? If so, which countries? If not, would someone in another country using your IP be a barrier to your company’s success?

Filing for a U.S. patent does not cover your claims internationally, but rather gives you the right for a given amount of time to pursue international coverage. It is important to weigh the risks of filing fees vs. not being covered in another country.

What are the costs associated with filing internationally?

The cost to file internationally depends significantly on the country in which you file, how many countries, and whether you file through the Patent Cooperation Treaty (PCT). The costs can range from a few thousand dollars to more than $100,000 dollars if you decide to file with dozens of countries.

It is also important to note that filing a PCT may cost more than filing in each country individually, but it should streamline the process. As well, it will allow for a 30-month window (from initial application in U.S.) for filing rather than a 12-month window under the Paris Convention.

Will a PCT application cover all countries?

Filing a PCT application will cover more than 100 countries (or contracting states). There are a few key countries that are not covered in the PCT, such as Afghanistan, Iran, Iraq, Pakistan and Taiwan, as well as many smaller countries. Visit the World Intellectual Property Organization website for more information.

If I file for a patent, do I own it?

Determining whether you own IP can be very simple or very complex. If you own your own company or are not otherwise employed and you file for IP, then you more than likely own it. If you work for a corporation or research organization (such as a university), there likely will be an employment contract stating who owns the IP. It is important to speak with a lawyer about whether you own the IP and whether you have a right to it. Many employment contracts will outline the process of disclosing new IP and associated ownership issues. Universities, for instance, tend to have a streamlined process for disclosures and evaluating IP for commercial viability. If you work at a university, speak with your research or technology transfer office.

I’ve worked with many startup owners who left corporate jobs to start companies when they had a great idea. Many of these ideas were created while on the job (although most likely they were fleshed out at home). If your employer can prove you created a piece of IP while on their payroll, they may have a case for ownership, which can halt any progress on starting your business. Consider speaking with your HR department about IP ownership issues if you are still at your job. If you feel comfortable that your idea has no merit to your organization, ask for a release of ownership from your management or HR team.

Do I have the exclusive right to license my patent if my partner and I both own the patent? Does he/she?

This is a difficult topic, and I recommend speaking with an IP attorney about specific cases. IP ownership is a complex topic when multiple parties are involved. My understanding is that if two or more names are on the application, then each party own 100 percent of the right to use that IP. That means if you start a company and upset your partner, he/she can license the IP to a competitor. It is important to discuss rights with your partners/other owners as well as an attorney to put safeguards in place. For instance, many investors will require that all ownership rights be assigned to the company before funding in order to reduce these risks.

How do I license a patent from a university? Why would I?

Universities spend millions of dollars researching and developing technologies, so why not start your company based on a piece of existing IP? The Office of Technology Commercialization (OTC) within a university will be helpful in discussing what technologies are available for license. It is important to work with them first as they are the gatekeepers of contracts and terms. Work with the OTC to understand the stage of the technology, what information they have available about the technology and how far along they are in the patent process. Partnering with universities can be a great way to kick-start your company without investing significantly in research and development.

On the other hand, you should be aware of issues in tech transfer from a university. First, the IP developed may be a result of government-funded projects or sponsored research. If this is the case, others may lay claim to the ownership and may have the right to license/use it. Look for an exclusive, worldwide license when evaluating IP. Secondly, IP developed at universities is often there for a reason. That reason may be good (bright young scientist has breakthrough) or bad (issues in commercial viability or technology has not been thoroughly developed). Not all technology developed at a university is commercially viable. Do your homework, evaluate the market and understand the competition. Also, remember that scientists and researchers are not product developers. The technology may be years of development and millions of dollars away from being a product.

If I license from a university, how much will it cost?

The beauty of partnering with an organization that does not receive most of its income from licensing is that the OTC will often be flexible with you. Typically, the OTC has invested tens of thousands of dollars in filing for the patent associated with the tech you are interested in. In this case, they would prefer some cash up front to cover their hard costs. From here, the flexible nature of licensing comes in. Often, you will see a mixture of upfront cash, equity exchange and even royalty agreements in a licensing contract. Remember that each university and type of technology will be different.

If I do research with a university, will I own the IP?

Often, there are IP ownership issues associated when commercial entities and universities work together. The single most-important factor is for both parties to sit down and discuss their standard practices and expectations. Many commercial entities may not know that universities tend to work on the premise that the university owns IP developed by the university in partnership with a commercial entity. If the commercial entity brings IP to a partnership, the IP will remain with the company, but the university may own any new IP developed. If these discussions are upfront, both parties can be protected and reduce risks by laying out an ownership plan.

This concludes my three part series on Intellectual Property basics. I hope these nuggets of knowledge are beneficial as you pour through an IP strategy at your organization.

Jeremy Vickers

Jeremy Vickers is the executive director of the Institute for Innovation and Entrepreneurship, where he leads a team focused on cross-campus startup activity and entrepreneurship curriculum. Prior to his arrival at UT Dallas, Jeremy was at the Dallas Regional Chamber from 2011 to 2015 as the vice president of innovation. He led strategy and program implementation to support building the North Texas innovation ecosystem. Read more articles

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