Technology Developed as part of College Course, IP Ownership

dhmtbjdhmtbj subscriber Posts: 1
I am a recent college graduate with a degree in Mechanical
Engineering.  As a senior capstone design project my team of Mechanical
Engineers developed a gearbox design and submitted a provisional patent
through the school`s technology transfer department.  The idea for the
project along with all concepts and designs were generated by the team
members and the only involvement from the school was that we had a
faculty adviser checking in once a week and giving minor advice on
managing the project as it went along and that we were using the
school`s resources meant for the project.  Since graduating, the group
has continued to work on the design and gained exposure through an
innovation competition put on by a technology commercialization company
specializing in technology transfer and licensing services for
intellectual property.  From there we met with a consultant from this
company and another contact of his and began looking at different
applications of our design such as using it in green energy
application.  Recently this company has expressed interest in acquiring
the right to patent our idea from the school, paying for the patent,
and working out a deal with the team.  We are familiar with how
patenting works, how licensing works, etc, but are unclear as to what
part of the ownership of the IP belongs to the school and what belongs
to the team.  The team is considering different options for taking our
design forward ranging from simply licensing the IP to starting a
company and developing the technology further ourselves.
1. Considering the limited involvement of the school is it possible
to control the majority of the IP?  We were told verbally early in the
process that this school was not out to take the ideas of students so I
am fairly confident they will work with us.
2.  If the school doesn`t pay for the patent does the group have legal right to a percentage of the IP?
3.  Assuming the school owns part of the IP, is it going to hurt
the group to work with the outside company due to profits being split
three ways instead of 1 or 2?
4.  Does anyone have experience
working with a school`s technology transfer department or a technology
commercialization company?
5.  If you have any experience with a similar situation, any general
advise, information, options, etc it would be excellent to hear about.
Thank you in advance!
Jay

Comments

  • dhmtbjdhmtbj subscriber Posts: 1
    Craig, thank you for the advice.  We have considered this and we have a few lawyers that are relatives or friends who have offered at least some guidance free of charge.  I think one of our major troubles is that we are all recent graduates and money is very tight.  Might be a necessary investment though.
    Jay
  • DeenaEsqDeenaEsq subscriber Posts: 0
    Jay,
     
    Here`s what I would suggest.  Because you`re talking about patent, I would suggest that you find yourself a good PATENT lawyer.  I`m not one and although I can look up the answer to your question the same as your relatives can, there may be nuances to the situation that can only really be understood by a patent lawyer.  Patent law is a very specialized field. 
     
    That being said, I would imagine that one would talk to you as an initial consultation before you retained him or her (which most attorneys will) and let you know what they thought the merits of your situation and whether you are in a position to claim intellectual property rights in your invention. 
     
    If you don`t know a patent attorney, call the bar association in your state and get a recommendation.  When you think about how much money a licensing deal could provide for you, it`s worth the up front cost...
     
    Just my $.02...
     
    Deena
    ______________________________________________________
     
    Any opinions are offered without knowledge of the specific law of your jurisdiction and with only the limited information provided in your post.  No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation.  Any advice given here is not intended to create an attorney-client relationship in any way.
     
     
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