What in my PhD thesis is my intellectual property and what's the Uni's

[joshthekid]

I am currently writing my thesis and basically the conclusion is, in part, a statement about how this work can be built upon. I received a post-doc that is almost a natural extension of my thesis. One of the reasons I accepted it was so I could work on some ideas that I have had that I never had time for.

However, it's not clear to me if I own the rights to those ideas, especially if I include them in my thesis. I know when I started I signed a form basically declaring that intellectual property, in terms of patents, belonged to the University.

I also understand that because my advisor sponsors me he also has some rights to my work. I am concerned, that if I vaguely outline an idea and then go to my post-doc and further develop the idea and publish if things could get messy, especially since I have already signed a similar document on intellectual property rights for my post-doc institution once I start there.

In my opinion I own my expertise on the subject, as the development of these ideas would require my expertise, any publications I make in the future on these ideas is simply me practicing my expertise but I am not entirely sure?

 

[Dr Transport]

If you secure the copyright on your thesis (like I did), the ideas and work is yours. If you patented something from it while a student, if the university was part of the filing process, part is theirs.

 

[sysprog]

I think that it would depend in part on the specific contents of your agreement.

 

[CrysPhys]

If you secure the copyright on your thesis (like I did), the ideas and work is yours. If you patented something from it while a student, if the university was part of the filing process, part is theirs.

<<Emphasis added>>

I am not legally qualified to comment on copyrights. However, I will refer you to these two basic information circulars issued by the US Copyright Office:

Circular 1 (Copyright Basics): https://www.copyright.gov/circs/circ01.pdf

Circular 33 (Works Not Protected by Copyright): https://www.copyright.gov/circs/circ33.pdf

In particular, the second circular discusses what is not protected by copyright law.

ETA:

If you secure the copyright on your thesis (like I did), the ideas and work is yours. If you patented something from it while a student, if the university was part of the filing process, part is theirs.

<<Emphasis added.>>

Even if the university were not part of the filing process (i.e., the student decided to file for a patent on his own), the university and other parties may still have rights (depending on any prior agreements). Again, depending on any prior agreements, the student may not have any rights of ownership at all in any ensuing patent; in which case, all of it is theirs.

 

[CrysPhys]

I think that it would depend in part on the specific contents of your agreement.

Yes this. OP: Check with your current university and your future university whether they have an intellectual property office or representative. If so, discuss these issues with them first. A lot depends on the specific wording of the agreements, type of intellectual property, and what you plan to do. Depending on what your concerns are, you might want to consult with an IP attorney of your own.

With respect to patents, if your thesis work was funded in part or in whole by a government agency (such as NSF, DOE, or DOD), the US government may be a joint owner in any patent that issues. <<ETA: In many cases, the US government is not a joint owner but maintains certain rights.>> Similarly, if your thesis work was funded in part or in whole by an industry partner. All this depends on the specific agreements. And the university likely has their dibs as well. You may be an inventor, but not necessarily an owner at all.

Besides ownership of patents, you also need to check for other restrictions. A number of years ago, I served as a mentor to a PhD student who got totally screwed by her advisor. A chunk of her thesis funding was via a grant from a start-up that her advisor was a principal in. Buried in her paperwork was a restriction that she could not publish her work without permission from the start-up. Also buried in her paperwork was a non-compete clause for X years that severely restricted what she could work on after her PhD. Caveat: This was a particularly egregious case.

 

[Andy Resnick]

However, it's not clear to me if I own the rights to those ideas, especially if I include them in my thesis.

The polite thing to do (and a necessary first step) is to have this honest conversation with your advisor.

In my experience, the advisor will allow the new PhD to go forth with ownership of their own work. The new PhD then gets to compete against their advisor for funding.

 

[CrysPhys]

The polite thing to do (and a necessary first step) is to have this honest conversation with your advisor.

In my experience, the advisor will allow the new PhD to go forth with ownership of their own work. The new PhD then gets to compete against their advisor for funding.

<<Emphasis added.>> Depends on ownership of what aspects of their own work. As I wrote above, specifically with respect to ownership of any patents that may ensue, that's not necessarily up to the advisor. Depends on agreements among the student, the advisor, the university, and the funding parties. Similar to the case in industry. A scientist or engineer will invent something as part of his employment, and patents it. He will be listed as the inventor on the patent, but often the owner will be the company who employs him. Again, depends on specific agreements.

ETA:

The polite thing to do (and a necessary first step) is to have this honest conversation with your advisor.

In my experience, the advisor will allow the new PhD to go forth with ownership of their own work. The new PhD then gets to compete against their advisor for funding.

<<Emphasis added>>

OP: If you're on good terms with your advisor, then as a matter of courtesy, I agree it would be good for you to discuss these issues with him first. Even then, you should check things out with the IP offices of your present and future universities. Professors are not always well versed in intellectual property. The situation has grown more complex in recent years specifically with respect to patents. At many universities, the patent portfolio is not owned by the university per se, but by a separate legal entity setup by the university. Though a priority of the university may be to encourage open intellectual pursuits and open collaboration, the priority of the separate legal entity might be to monetize the portfolio; i.e., make money. So the attitude and perspective of the separate legal entity may well differ from that of the professors and academic administration.

 

[jrmichler]

It is normal practice in industry for a corporate employer to own all patents. The inventor gets to list the patents on his/her resume. This can lead to interesting situations. At one point, I had a business selling a machine that I had invented, where I was paying royalties to my ex-employer to use my own patent. It was a good deal for both of us.

I had a conversation with a dean of engineering on the same subject. The university owns all patents that they pay for, plus the patent rights to anything invented by a university employee. His advice was that, if I though I had invented something significant on my own time and wanted patent rights to it, to wait until I had left the university and then apply for the patent using my own resources.

In both industry and academia, you own what is in your head with some temporary restrictions if you signed an NDA.

 

[f95toli]

Unfortunately., the only answer anyone can give you is "it depends".
Remember that patents is only part of the story, there is also the question about who owns the IP you might have developed as a PhD student and that is not limited to things that were patented.

My suggestions would be to ask yourself if the (potential) IP has any commercial value, i.e. could it be developed into a product or service (ideas that "only" lead to the publication of papers do not count).
If the answer is no, there is generally speaking no problem; people moving and taking ideas with them is just how academia works. That said, you should of course read the agreement you signed.If the answer is yes you need to seek advice from someone. You should talk your adviser and he/she will most likely need to ask the IP people at the university.
Note also that if the work was funded by a grant and is part of a larger project there could also be clauses in contracts or collaboration agreements that apply.

The legislation around IP is very, very complicated and it is impossible to give any general advice.

 

[Dr Transport]

To add to what I said, when I filled out my graduation paperwork, I had the option of the university filing for an international copyright in my name only, at the time it was $50 and I did it gladly.

It has come in handy, another university wanted my codes but didn't want to pay me to run them, the polite answer was "they are my intellectual property and I alone will run them and supply the output for a fee".