[labnetwork] IP/Patent strategies for clean rooms

[Demis D. John]

Your employment contract will often answer some of the question of
ownership.  Different Univ's have slightly different policies, but commonly
it's something like:

*If* University Employees (profs, staff - NOT industry lab-users) *use the
university's equipment/services* to invent/develop some idea, then the
university get's first rights to patent - you have to at least ask them.
You might notify the university of a particular invention, and they decide
*not* to patent it ("first right of refusal"), in which case you may do so
yourself at your own cost, and full ownership.  This happened to a number
of UCSB inventions which were still commercialized.

Some university's IP policies are much more generous that companies.
Company IP rights are that you often get *no* royalty, and are *required* to
patent entirely on behalf of the company.  University policies on the other
hand may grant 10-30% royalties on a patent that the Univ paid for, and
they may market it themselves to try to make money, *and* you can still
start a company and license your patent from the university.  A number of
UCSB patents were commercialized this way. They have an interest in
patenting an idea that you can then commercialize for them, making both of
you money.  So it could be in your benefit to let the Univ. pay for and
file the patent, and then your startup licenses it when ready.

You university will usually have an office staffed by experts in these
topics - you should ask them directly.  Our Office of Research has always
been extremely helpful and transparent about these topics, one 30min
meeting/seminar answering many such complex questions.

For a shared-use lab with companies, our agreements must specifically state
that the university does *Not* own IP developed by the companies'
employees, using the shared-use lab.  (Otherwise companies would never use
the lab!).  (These ideas must be developed by Non-Employees of the
university.)


Here are the terms I found for Cardiff, from here
<https://www.cardiff.ac.uk/__data/assets/word_doc/0007/32794/code-of-practice.doc>
:
4.2       Ownership



IP generated through research and teaching activities conducted during
employment at the University belongs to the University, and staff must
notify the University of any invention or other intellectual property with
potential commercial value.


Undergraduate and postgraduate students are not employed by the University
and, as such, may own IP which they are solely responsible for producing.

*IP or University expertise can also be exploited by creating spin-out
companies.*  The University encourages and supports the establishment of
appropriate spin-out companies and has developed a number of funding
mechanisms for this purpose.  Research and Innovation Services will work
with staff in developing business proposals and obtaining the necessary
University approvals.  Research and Innovation Services will also assist in
locating sources of finance for spin-out companies.  For further
information on establishing spin-out companies and similar enterprises,
contact Research and Innovation Services.


I *believe* this suggests you can file a record of the invention,
potentially have the university patent it for you (with your help), and
then license the patent with your startup company. Check with RIS though.


Also, remember a patent is also a "peer-reviewed publication" of sorts
("peers" being at the patent office I guess).


––––


For a shared lab where your income originates in people using your lab, we
have found that publishing Staff-developed info on our wiki
<http://wiki.NanoFab.ucsb.edu> publicly or in publications
<https://wiki.nanofab.ucsb.edu/wiki/Research#Publication_Lists> increases
the visibility of the lab, while most importantly, helping lab users
achieve good results faster.

We thus opt for dissemination, to be as helpful as possible to our lab
users.


-- Demis (contact info <https://wiki.nanotech.ucsb.edu/wiki/Demis_D._John>)
*Reminder*: The NanoFab has a publications policy
<https://wiki.nanotech.ucsb.edu/wiki/Frequently_Asked_Questions#Publications_acknowledging_the_Nanofab>


On Sat, Jan 18, 2025 at 11:47 AM Hüseyin Yagci <YagciH at cardiff.ac.uk> wrote:

> Hello Labnetwork,
> My clean room offers process development services to both researchers and
> industry. I am working closely with couple of the engineers, and we are at
> the point that warrants a discussion about intellectual property. We are
> considering applying for a patent, but it is relatively costly and it will
> likely to be owned by the university as they are going to apply for us. We
> are mostly in it for the bragging rights (which can be satisfied with a
> paper submission, instead of a patent) but it has brought many questions to
> fore for us; e.g. if CR engineers develop a device as a service but CR &
> engineers are paid for it, who holds the rights to the IP? What if it was
> an accidental discovery (i.e. not a deliverable for the development
> service)? Is it to the CR's best interest to keep it in house, or develop a
> patent library? Is there an approach that works to serve both CR and
> researchers? Our clean room is at a weird intersection where it is not
> clear if the main customer base is the researchers or the industry, and I
> am wondering if there is a clear answer to that.
>
> Many thanks,
> H. Bilge Yagci
> Cardiff University
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