Separate your concerns. Don't throw away your PhD for a patent you may not end up getting anyway. That would be a tragic situation.
WRT to the patent, consult an IP attorney. IANAL, but I suspect their advice is going to be get your PhD, separate from the university, start a company, apply for the patent as part of that company. The university may, or may not, sue you for royalties. Ask your IP attorney now what that means - because obviously there are expenses to running a company and you shouldn't have to give up 60% of your income and pay your expenses from what's remaining.
Don't ask randos on the internet for legal advice. Take everything I've said with a grain of salt - you really need to see an IP attorney.
Thank you. I've consulted a few IP lawyers and I'll reach out to more. Its a dicey and expensive work to delve into, but I'll give it another shot.
Personally, I think it is ok to ask randos on the internet for legal advise. It's just another data point along the path of trying to figure this thing out. Thanks again.
I used to work in VC and have dealth with university commercialization/IP offices.
1) If it's serious, you need to lawyer up. It might not be now but if you can get some investors involved they could help with getting legal resources. If it's medical devices, you'll need investors anyways. One issue is this gives investors a lot of leverage to negotiate their interests against you.
2) The university office absolutely does not care about how "little" they gave you. Their perspective will be they've given you plenty, as office/lab space and anything else were not part of the deal (unless you have it in writing), and they've subsidized your funding. It's not "fair" but it is what it is.
3) This scenario is quite common, and one of reasons I tell grad students to negotiate this stuff first and pick your school wisely. Some schools are way better than others in allowing their academic staff commercial freedom.
4) You can make it a PR issue for them, to push the narrative of "university stifles innovation via obscure bureaucracy" but it's a risky strategy.
There are usually always room to negotiate/maneuvre, but you need the right contacts and political support within the university to pull it off.
Talk to a VC as well. Or more than one, and ideally ones that are in the medical device space and have done similar deals with others from your university. If they are interested then they can apply pressure on the university too, to get to a solution that works for everyone.
Besides talking to a relevant lawyer and finishing your PhD...
1) Talk to other people who have gone through the adventure and get some idea of how it went for them. Both before they finished the PhD and after they started their business. Currently you have little idea of how that works and you are not the first person to go through this course.
2) If your objective is to start a business, then licensing fees and royalties are only a small part of the adventure, costs and profits. And the tech transfer office absolutely has incentives to negotiate: their job, nominally, is to get stuff out there. You just don't know yet how these offices negotiate - what the usual terms are.
What it might end up looking like, is - by contrast to the entire business - a smallish licensing fee and smallish royalties (ongoing payments per device), of which 40% (perhaps) would go back to you personally. As opposed to going to your business which will be a different legal entity and ownership entirely. Your income stream personally and your business' income stream are very different things. Depending on how things go, your share of ownership of the business can be quite small (as opposed of ownership of the invention). Lower than 40% most often, and still be an extremely valuable piece of the pie. And the two things are separate assets for you: interest in the invention and interest in the business.
3) By the time the business has an actual product, it's pretty likely there will be several patentable inventions in the business. The one pre-PhD, the university one, being just one of several, the rest owned outright by the business or others. Which probably matters in the discussion of licensing terms and royalties.
1) I know this is not helpful now, but each time before or early while starting a degree (BSc, MSc, now PhD) I have clarified the IP position with them. My current university wants to retain bright people and starts from a very fair position IMHO.
2) Does the university actually claim all of the IP? 40% might be OK if it would provide you support from now that it had not before. It might also negotiate on your points if you don't go in like a bear with a sore head. I don't expect university IP people to be reasonable, but sometimes they are. And if you walk away from this then it is less likely to go anywhere good, and the university loses too.
3) You can't open source what is not yours. If the university does have an IP claim and you put that IP in public you could be in serious legal do-do. You might have your PhD award blocked/withdrawn at a pinch.
4) It is pretty well always possible to work round a patent. I have some patents to my name, and they were helpful in the sale of the business IP, but I remain sceptical of patents' inherent worth in the main.
So, I suggest, get through your viva, and negotate hard in good faith for a better deal.
2. Yes they claim 100% of the IP and only offer 40% of the royalties. That I am sure of.
3. Good advise. I'll keep that in mind, thank you.
4. This is helpful information. I hear you saying that if I patent the thing now, I could still make some tweaks and patent something else similar in the future...
Talk to an IP attorney, be prepared to have them represent you. Their job is to find either legal statute or a contractual gap to quash the claim on your IP.
I haven't, I will check them out, thank you. I've only tried ones I found online. I have two friends to just recommended IP lawyers they know personally so I'm reaching out to them now.
If it was not ‘medical device’ I would say (4) just graduate and file a patent and take your chances that the university never finds out. [1]
As it is a ‘medical device’ I would say the whole thing is a corrupt system of patronage that will make you device cost 5x more than it should and since your royalties will be inflated by said corruption you can afford to pay the trolls.
My main fear for you is that if you get the technology transfer office involved they might try to stop you from getting a patent because they might make a calculation that it is not worth their while even if it is worth your while. Don’t let them torpedo your getting a patent or let your resentment get in the way of getting the patent.
[1] Funny I worked on a search engine for patents and one of our customer persona was a TTO that wanted to catch any affiliates who filed a patent without telling them. I’m willing to bet many of them were too cheap to buy it, just as they are often too cheap to do the work to get a patent or that they make patents that would be cheap expensive and decide not to file them because of bloated process and gold plated IP lawyers.
I really appreciate the advise. I've considered this too. Am I opening myself up to being sued in the future by the university? I'm worried I'll put in years of effort and eventually the university will just claim they actually own everything.
Around my Uni I have seen people get away with murder when it comes to just about every element of process around money and that if they have a problem then yeah you might have to settle out of court.
A VC told me this about disputes: if your business fails there is nothing to sue over, if it succeeds then you are rich and you can afford to pay…. Look at the movie The Social Network you might be rich and feel angry that you are paying money to people who seem like parasite but you are rich!
Seriously though the model of the TTO is to reject the vast majority of possible inventions, spend $20k on patents with a less than 10% chance of a payout on each one. It's a better business model for them to spend a fraction of that on a lawyer to write you a really scary letter and get a settlement for half of what they think you owe them. They might be happy to get a donation and you get something with your name on it.
40% of a large pie can still be large. 40% of a small pie is small.
Doesn't this mean that you get 40% back on the licensing fees you pay them to commercialize, but you keep everything else for actually making and selling it? And if GE Healthcare licenses it you get 40% of those royalties?
Rather than looking at what you might not get, what might you actually get? Is this really worth something? And did you get your PhD only to make a boatload of money, or to make a difference?
I got my PhD to make a difference. I'm worried that my university, which btw is partnered with one of the largest investment firms in the world, only wants to hoard this idea, and has no genuine desire to foster the technology into the world.
I also got my PhD to lend myself legitimacy, which can then be used to make money, which can then be used to usher in a better future. I've tried the ascetic path, but I felt isolated and like I was shying away from the world.
There is a bit of a chip on my shoulder as well. I think this university is a moral failure, and I feel like they are trying to screw me over every chance they get. The last thing I want to see is my idea being stolen and hoarded by this place. I'd rather die on that hill then just hand it over.
What's the ascetic path? Between being a monk and a multimillionaire by 40, there is quite a spectrum.
I get that being a PhD is quite an investment (having a couple close family members with doctorates). One has made a really good difference, not world-changing but still. They've led quite comfortable lives. Not in a field that would be as lucrative as yours for simple employment.
Get the IP counsel.
I do hope you make more advances that can improve people's well-being.
Decades ago, the UC system let a prof start a business from his IP that the university had. The payment was free use within the UC system. Given that the company succeeded, that was a small price to pay. Perhaps that kind of understanding still holds? Lawyer up and try to find out...
> They claim that they get all the IP and I can get 40% of the royalties
Forty percent of royalties sounds pretty good. I think that's similar to what my US uni gave me after getting a patent 20+ years ago during PhD research in engineering.
I can't imagine spending my time trying to bring this to market knowing that I don't own any IP and I have to give away 60% of the royalties to a corrupt and greedy university. I'd rather just give it away for free and see if someone else can do something with it.
Opensource would mean to relinquish all intellectual rights plus it could be seen as prior art in a patent later, so the fight to keep the patent would be weaker.
Thanks for the reply. I really believe in this technology that I've created and I want it to exist. I would like to be the person to make that happen, but if my universities gets all the IP, I just don't see it going anywhere. I'd rather give it all away for free to everyone then let the university control it.
If your university were particularly malicious, they could sue you for giving away their intellectual property - after all, they have legal rights to it. It's also potentially career suicide if you ever wanted to pursue a career in academia.
Confrontation is expensive. Not just financially when it involves lawyers, but also temporarily and emotionally.
Particularly if you are up against a well funded institution that is free to act amorally (which is not the same as immorally).
With regard to the IP claim, its validity simply doesn’t matter. You can’t afford to show its invalidity because the university has lawyers on staff (and if it has a law school alumni in the bar and on the bench). And of course many many other parallel claims to motivate resource allocation.
Get your degree and get on with life whether that involves trying to start a company or getting a job.
And if you are going to start a company, this is the sort of thing you will probably face regularly. Good luck.
Separate your concerns. Don't throw away your PhD for a patent you may not end up getting anyway. That would be a tragic situation.
WRT to the patent, consult an IP attorney. IANAL, but I suspect their advice is going to be get your PhD, separate from the university, start a company, apply for the patent as part of that company. The university may, or may not, sue you for royalties. Ask your IP attorney now what that means - because obviously there are expenses to running a company and you shouldn't have to give up 60% of your income and pay your expenses from what's remaining.
Don't ask randos on the internet for legal advice. Take everything I've said with a grain of salt - you really need to see an IP attorney.
I agree, if it matters get an attorney. (If it doesn’t matter, it doesn’t matter).
Thank you. I've consulted a few IP lawyers and I'll reach out to more. Its a dicey and expensive work to delve into, but I'll give it another shot.
Personally, I think it is ok to ask randos on the internet for legal advise. It's just another data point along the path of trying to figure this thing out. Thanks again.
Regarding "IP lawyers", patent filing and univerity IP licensing are rather different domains of activity. Find relevant laywers.
I used to work in VC and have dealth with university commercialization/IP offices.
1) If it's serious, you need to lawyer up. It might not be now but if you can get some investors involved they could help with getting legal resources. If it's medical devices, you'll need investors anyways. One issue is this gives investors a lot of leverage to negotiate their interests against you.
2) The university office absolutely does not care about how "little" they gave you. Their perspective will be they've given you plenty, as office/lab space and anything else were not part of the deal (unless you have it in writing), and they've subsidized your funding. It's not "fair" but it is what it is.
3) This scenario is quite common, and one of reasons I tell grad students to negotiate this stuff first and pick your school wisely. Some schools are way better than others in allowing their academic staff commercial freedom.
4) You can make it a PR issue for them, to push the narrative of "university stifles innovation via obscure bureaucracy" but it's a risky strategy.
There are usually always room to negotiate/maneuvre, but you need the right contacts and political support within the university to pull it off.
Good luck!
This is really valuable information, Thank you.
Talk to a VC as well. Or more than one, and ideally ones that are in the medical device space and have done similar deals with others from your university. If they are interested then they can apply pressure on the university too, to get to a solution that works for everyone.
Besides talking to a relevant lawyer and finishing your PhD...
1) Talk to other people who have gone through the adventure and get some idea of how it went for them. Both before they finished the PhD and after they started their business. Currently you have little idea of how that works and you are not the first person to go through this course.
2) If your objective is to start a business, then licensing fees and royalties are only a small part of the adventure, costs and profits. And the tech transfer office absolutely has incentives to negotiate: their job, nominally, is to get stuff out there. You just don't know yet how these offices negotiate - what the usual terms are.
What it might end up looking like, is - by contrast to the entire business - a smallish licensing fee and smallish royalties (ongoing payments per device), of which 40% (perhaps) would go back to you personally. As opposed to going to your business which will be a different legal entity and ownership entirely. Your income stream personally and your business' income stream are very different things. Depending on how things go, your share of ownership of the business can be quite small (as opposed of ownership of the invention). Lower than 40% most often, and still be an extremely valuable piece of the pie. And the two things are separate assets for you: interest in the invention and interest in the business.
3) By the time the business has an actual product, it's pretty likely there will be several patentable inventions in the business. The one pre-PhD, the university one, being just one of several, the rest owned outright by the business or others. Which probably matters in the discussion of licensing terms and royalties.
I appreciate you taking the time to write that out. It's helpful information and very clearly put. Great food for thought. Thank you.
1) I know this is not helpful now, but each time before or early while starting a degree (BSc, MSc, now PhD) I have clarified the IP position with them. My current university wants to retain bright people and starts from a very fair position IMHO.
2) Does the university actually claim all of the IP? 40% might be OK if it would provide you support from now that it had not before. It might also negotiate on your points if you don't go in like a bear with a sore head. I don't expect university IP people to be reasonable, but sometimes they are. And if you walk away from this then it is less likely to go anywhere good, and the university loses too.
3) You can't open source what is not yours. If the university does have an IP claim and you put that IP in public you could be in serious legal do-do. You might have your PhD award blocked/withdrawn at a pinch.
4) It is pretty well always possible to work round a patent. I have some patents to my name, and they were helpful in the sale of the business IP, but I remain sceptical of patents' inherent worth in the main.
So, I suggest, get through your viva, and negotate hard in good faith for a better deal.
And this will not be your last idea.
1. Yeah I figured that out the hard way.
2. Yes they claim 100% of the IP and only offer 40% of the royalties. That I am sure of.
3. Good advise. I'll keep that in mind, thank you.
4. This is helpful information. I hear you saying that if I patent the thing now, I could still make some tweaks and patent something else similar in the future...
Talk to an IP attorney, be prepared to have them represent you. Their job is to find either legal statute or a contractual gap to quash the claim on your IP.
Thanks for the reply. I've talked to 3 now. I haven't gotten great advise. That's an expensive route to take as well.
There are good patent attorneys: I used one. (And my brother is one!)
Have you tried (say) Marks & Clerk?
I haven't, I will check them out, thank you. I've only tried ones I found online. I have two friends to just recommended IP lawyers they know personally so I'm reaching out to them now.
If it was not ‘medical device’ I would say (4) just graduate and file a patent and take your chances that the university never finds out. [1]
As it is a ‘medical device’ I would say the whole thing is a corrupt system of patronage that will make you device cost 5x more than it should and since your royalties will be inflated by said corruption you can afford to pay the trolls.
My main fear for you is that if you get the technology transfer office involved they might try to stop you from getting a patent because they might make a calculation that it is not worth their while even if it is worth your while. Don’t let them torpedo your getting a patent or let your resentment get in the way of getting the patent.
[1] Funny I worked on a search engine for patents and one of our customer persona was a TTO that wanted to catch any affiliates who filed a patent without telling them. I’m willing to bet many of them were too cheap to buy it, just as they are often too cheap to do the work to get a patent or that they make patents that would be cheap expensive and decide not to file them because of bloated process and gold plated IP lawyers.
I really appreciate the advise. I've considered this too. Am I opening myself up to being sued in the future by the university? I'm worried I'll put in years of effort and eventually the university will just claim they actually own everything.
Around my Uni I have seen people get away with murder when it comes to just about every element of process around money and that if they have a problem then yeah you might have to settle out of court.
A VC told me this about disputes: if your business fails there is nothing to sue over, if it succeeds then you are rich and you can afford to pay…. Look at the movie The Social Network you might be rich and feel angry that you are paying money to people who seem like parasite but you are rich!
Seriously though the model of the TTO is to reject the vast majority of possible inventions, spend $20k on patents with a less than 10% chance of a payout on each one. It's a better business model for them to spend a fraction of that on a lawyer to write you a really scary letter and get a settlement for half of what they think you owe them. They might be happy to get a donation and you get something with your name on it.
40% of a large pie can still be large. 40% of a small pie is small.
Doesn't this mean that you get 40% back on the licensing fees you pay them to commercialize, but you keep everything else for actually making and selling it? And if GE Healthcare licenses it you get 40% of those royalties?
Rather than looking at what you might not get, what might you actually get? Is this really worth something? And did you get your PhD only to make a boatload of money, or to make a difference?
This is all very valid, thank you.
I got my PhD to make a difference. I'm worried that my university, which btw is partnered with one of the largest investment firms in the world, only wants to hoard this idea, and has no genuine desire to foster the technology into the world.
I also got my PhD to lend myself legitimacy, which can then be used to make money, which can then be used to usher in a better future. I've tried the ascetic path, but I felt isolated and like I was shying away from the world.
There is a bit of a chip on my shoulder as well. I think this university is a moral failure, and I feel like they are trying to screw me over every chance they get. The last thing I want to see is my idea being stolen and hoarded by this place. I'd rather die on that hill then just hand it over.
What's the ascetic path? Between being a monk and a multimillionaire by 40, there is quite a spectrum.
I get that being a PhD is quite an investment (having a couple close family members with doctorates). One has made a really good difference, not world-changing but still. They've led quite comfortable lives. Not in a field that would be as lucrative as yours for simple employment.
Get the IP counsel.
I do hope you make more advances that can improve people's well-being.
Decades ago, the UC system let a prof start a business from his IP that the university had. The payment was free use within the UC system. Given that the company succeeded, that was a small price to pay. Perhaps that kind of understanding still holds? Lawyer up and try to find out...
Very interesting piece of case law, I'm going to look more into that. I appreciate it.
> They claim that they get all the IP and I can get 40% of the royalties
Forty percent of royalties sounds pretty good. I think that's similar to what my US uni gave me after getting a patent 20+ years ago during PhD research in engineering.
I can't imagine spending my time trying to bring this to market knowing that I don't own any IP and I have to give away 60% of the royalties to a corrupt and greedy university. I'd rather just give it away for free and see if someone else can do something with it.
Opensource would mean to relinquish all intellectual rights plus it could be seen as prior art in a patent later, so the fight to keep the patent would be weaker.
Thanks for the reply. I really believe in this technology that I've created and I want it to exist. I would like to be the person to make that happen, but if my universities gets all the IP, I just don't see it going anywhere. I'd rather give it all away for free to everyone then let the university control it.
If your university were particularly malicious, they could sue you for giving away their intellectual property - after all, they have legal rights to it. It's also potentially career suicide if you ever wanted to pursue a career in academia.
I would just add that, consider that the chances that it will be commercially useful for you are lower than what you think.
If it comes to gutters, leak it, open-source it, and seed it via torrents as well. Just don't do it in your name.
My advice is to decide what you really want.
Confrontation is expensive. Not just financially when it involves lawyers, but also temporarily and emotionally.
Particularly if you are up against a well funded institution that is free to act amorally (which is not the same as immorally).
With regard to the IP claim, its validity simply doesn’t matter. You can’t afford to show its invalidity because the university has lawyers on staff (and if it has a law school alumni in the bar and on the bench). And of course many many other parallel claims to motivate resource allocation.
Get your degree and get on with life whether that involves trying to start a company or getting a job.
And if you are going to start a company, this is the sort of thing you will probably face regularly. Good luck.
This is all very helpful stuff to think about. Thank you.