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
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!