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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

Hi Jay,
From what you`ve written, I`d strongly encourage you to get whatever is the fee, and hire your own attorney. The school has their interests, the companies involved have theirs, and NOBODY is looking out for you guys, the inventors.

There`ve been cases here and there where even with contracts and so on, inventors can profit from their work. I`m not an attorney, but I know for sure that unless you have a skilled lawyer who specializes in these types of situations, you could lose all that work.

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

Jay, you`ll definitely speak with not just one, but a couple of those family friends. They each have different specialties, I would assume. The key topic of discussion is how much it will cost for which type of lawyer.

From there, you can likely work out various deals with whomever is the lawyer your friends recommend. You don`t have to pay all the money right away, remember. You almost certainly will be able to have 1 preliminary meeting with the eventual lawyer, who will suggest what may happen, and about how much it would cost.

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Deena B. Burgess, Esq.
www.ebusinesslawgroup.com
Offering Affordable Legal Solutions to Online Businesses
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Yup, Deena`s saying the same thing, and highlighting the reason. Imagine if you invented the next automatic transmission, for instance, and lost the patent. Then suppose your gearbox ends up in every automobile ever made from this day forward. Compare the money you`d spend on a good patent attorney, with the residuals you`d get from the invention.