Intellectual property from PhD to industry

[wegener_fan]

Hi everybody,

I'm newbie and I would like to have your opinion on the following issue (I've search in past topics but could not find anything relevant):

I am very close to finish my PhD and as major outcome I've developed some IT tools which can be quite appealing for industry.
I am evaluating the "jump" from academic to R&D into industry, in this process I believe that these tools could be a good selling point.

What is the general regulation in these matters in terms of intellectual properties? I mean, the university has certainly rights, but what is my position? How freely can I exploit these tools, especially if there will be a commercial use?

I am planning to consult the competent office here in the university, meanwhile I would like to hear from you if you want to share your experience, any suggestion is very welcomed!

 

[fss]

Patenting your tools would be the best thing to do.

 

[Vanadium 50]

You may have signed an agreement that this is "work for hire" and that if there is any patenting, it will be the university who patents this.

 

[twofish-quant]

I am very close to finish my PhD and as major outcome I've developed some IT tools which can be quite appealing for industry.

I'm skeptical that this will be that useful. One thing is that industry often has some business requirements that are not obvious to people in academia, and productizing software turns out to be a real huge pain.

I am evaluating the "jump" from academic to R&D into industry, in this process I believe that these tools could be a good selling point.

You are probably much better off putting those tools on the internet where anyone can download and use them, and where you can use them as marketing material for why people should hiring you.

Patenting or putting things under a restrictive copyright is going to make you a lot less attractive. One of the people that I work with is the maintainer of a major open source package. This works because our company can use his tools, and if he comes up with any improvements these go back into his open source system.

If the package were under restrictive copyrights or patents, then we couldn't use it. It would be an extreme pain to negotiate terms of use, it it's likely that we'd just hire someone else.

Patents and closed source software are only useful if you plan to start your own company. They are deal-breakers if you plan to work for anyone else.

What is the general regulation in these matters in terms of intellectual properties? I mean, the university has certainly rights, but what is my position? How freely can I exploit these tools, especially if there will be a commercial use?

Most universities have technology licensing offices that deal with this, and you can ask them. My guess is that you'll find that the pain and agony of having to deal with IP issues makes it more effective to just release the software under GPL, LGPL, or BSD.

 

[fss]

Patenting or putting things under a restrictive copyright is going to make you a lot less attractive.

Sorry. ********. Patenting gives you more legal recourse if someone else starts profiting off of your IP. It has nothing to do with making you more or less attractive, and does not preclude you from posting your tool on the internet for consumption.

If the package were under restrictive copyrights or patents, then we couldn't use it. It would be an extreme pain to negotiate terms of use, it it's likely that we'd just hire someone else.

That is not correct. You would have to license it, which may or may not take time or money. If it's truly the best package for the job, it should be worth it.

 

[chiro]

Also the decision to patent is a very big deal especially for an individual. It takes a lot of time and a lot of money and you need a lot of both if you really want to do it well.

It's not a fact that you will be protected just because you have a patent. Your claims have to broad enough but not too broad that they are unreasonable and they have to be specific at the same time so that the patent is fully described.

In conjunction with the above, it may well turn into a legal dispute with the university if certain issues crop up.

I do know for a fact that universities (some of them but probably most of them) have a department that handles intellectual property matters like the the one the OP describes. It is probably a good idea to speak with them directly. You'll get a lot of questions answered from "Do you think its worth the trouble to patent", to "In what sense does the university own or have specific rights to the IP?".

Also a note for fss with regards to patents.

Patents cost a lot of money, but defending them is exponentially more costly. If a big company creates new technology that you think has infringed on your patent and you want to take it to court, you will find out just how much it takes to defend your case.

It's not something to think lightly that just because you have a patent, your immune to any of the consequences such as the above.

 

[twofish-quant]

Patenting gives you more legal recourse if someone else starts profiting off of your IP.

In practice in software, it doesn't. First of all, you are going to have to hire a ton of lawyers to enforce any patent, and second, if you try to enforce a patent against anyone non-trivial, they'll counter-sue you for the fifty patents that you inadvertently violated.

Copyrights are much more useful. If you want people to use your software you can put it under LGPL or BSD licensed. Things that are pure-GPL we can't use if it is not a standalone package.

It has nothing to do with making you more or less attractive, and does not preclude you from posting your tool on the internet for consumption.

If you post your tool, and you haven't filed, then your patent is invalid. Also, if you do have something patented and you make it clear that you will enforce the patent, no one will use the tool.

That is not correct. You would have to license it, which may or may not take time or money. If it's truly the best package for the job, it should be worth it.

The amounts of money involved are well in excess of an individual's salary. What happens in practice is that if you have two large companies, they both have tens of thousands of patents, and you usually end up with a cross-licensing agreement. It's mutually assured destruction because if A sues B for patent infringement, software being what it is, B will sue A.

Ironically, this only works if A and B are doing useful things. If A and B are both large software houses they know that they've likely hit each others patents, so they won't sue either other. The problem is that if B is a firm that is made of just lawyers with no real products, B can blackmail A, and A can't countersue, because B doesn't produce anything. This happens quite a lot.

Copyrights are different. It will take you two minutes to copyright and put your software under a license, and half an hour to register your copyright. Also "independent work" is a defense against copyright infringement but not patent infringements. It's also pretty cheap to sue someone for copyright infringement.

 

[twofish-quant]

It's not a fact that you will be protected just because you have a patent. Your claims have to broad enough but not too broad that they are unreasonable and they have to be specific at the same time so that the patent is fully described.

And if you try to enforce it, it will boil down to who can hire the better lawyers, and it's probably not you.

Also the above applies only to software and business process patents. I do think that patents are useful in manufacturing and in the biotech industry, but it's a total mess in software. The other thing is that I'm not against IP as a concept (copyrights are great), but the specific rules and details regarding patents and software creates a total mess.

Patents cost a lot of money, but defending them is exponentially more costly. If a big company creates new technology that you think has infringed on your patent and you want to take it to court, you will find out just how much it takes to defend your case.

We are talking in the millions of dollars. Note, that several million dollars is pretty trivial for a large company (they've already hired the lawyers). Also big companies eat lawsuits for dinner, I remember legal counsel once giving a talk in which they mentioned that at any given time, we were involved as a defendant in several *hundred* lawsuits.

Also because the PTO has been issuing patents for software left and right and because independent discovery is not a defense against patent infringement, if you try to sue Megacorp, their legal team will countersue for the ten patents you violated.

It's not something to think lightly that just because you have a patent, your immune to any of the consequences such as the above.

And a lot of it depends on what you want to do with your life. There are people in the world that do nothing but fight patent lawsuits, but I'd rather write software.

 

[wegener_fan]

thanks all for the feedback!
you gave me some food for thought!

I didn't consider the GNU license before, but I must admit that could be an option.
It would be easier to implement. I'll discuss this possibility with the university and last but not least, with my supervisor.

 

[ZapperZ]

Per what Vanadium has said, before you license, patent, or copyright anything, check with your supervisor FIRST, and then the appropriate university dept. Chances are, you were PAID for your work, either via an assistantship, or some other form, and you used the university's facilities, etc. Any result that you obtain is owned (either in whole or partially) by whoever paid you to do the work. If this was done out of public money, i.e. you were paid out of a research grant from NSF or DoE or other public entities, then you are implicitly bound by the agreement of the funding contract.

Zz.

 

[wegener_fan]

Per what Vanadium has said, before you license, patent, or copyright anything, check with your supervisor FIRST, and then the appropriate university dept. Chances are, you were PAID for your work, either via an assistantship, or some other form, and you used the university's facilities, etc. Any result that you obtain is owned (either in whole or partially) by whoever paid you to do the work. If this was done out of public money, i.e. you were paid out of a research grant from NSF or DoE or other public entities, then you are implicitly bound by the agreement of the funding contract.

Zz.

I gave that for granted, I mean it would be difficult to do such operation in disguise anyway :)

My post aimed to collect some idea and experiences from you, which could help me in any related discussions.

cheers

 

[Astro_Dude]

People have already covered sort of covered it, but not only would the University likely have a claim to it, but the NSF or whatever funded your grant might also.

For instance, some of my grants explicitly say I can't patent anything I make under that grant.

 

[twofish-quant]

People have already covered sort of covered it, but not only would the University likely have a claim to it, but the NSF or whatever funded your grant might also.

Also, it will be a useful exercise because you'll learn why most companies will run away screaming if you mention the word patent. You'll find yourself spending weeks trying to figure out who owns what, and you'll often find that it's not clear, and a good lawyer can argue the issue one of ten different ways.

Not that bad if you are interested in law. Really good if you are a highly paid patent lawyer. Sort of stinks if you aren't, and you just want to get something done.