When an academic researcher decides to file for a patent, where does the budget to pay for the patent-related costs typically come from? From the academic researcher's budget? From the University's intellectual property/legal budget? From somewhere else?
When an academic researcher decides to file for a patent, where does the budget to pay for the patent-related costs typically come from?
In my experience, in the United States, patenting is typically provided as a service by the university, budgeted to its intellectual property office (or equivalent).
Since the university typically owns the rights to all work done by its employees, it is more or less compulsory for them to use its services if they wish to patent. Moreover, many of these organizations will actively solicit interactions with faculty and offer them assistance in patenting as otherwise many faculty will not bother to patent things the university might be interested in licensing.
For most universities, this office is probably able to effectively pay for itself via licensing fees, though there might be any number of complexities in how the actual accounting might be done.
Usually bigger universities with fundamental and applied research departments have distinct funds and departments dealing with patents, IP and advising, coordinating and realizing start-up business ideas and companies. This is more or less necessary, as often you have to hire patent-lawyers to set up the patent in a professional manner. In Germany such departments are even prescribed, to be allowed to submit proposals for distinct bigger funding programs by the local state or industry and private/industry foundations to fund start-up ideas and R&D projects to build prototypes for market entry.
Patent registration and fees for non-national areas like europe or worldwide are also quite expensive. With an academic salary, you would have to be very convinced by the patent/idea to spend the money and invest time to write the patent on your own. Even then, if you do necessary tasks like patent literature research on your own, you need a patent-lawyer advising you. And their services are not cheap at all in general.
There exist also funding options, specially to get money which can only be used for the registration and payment of fees for patents. The incentive for a researcher to register a patent can also be very different from university to university. At my university a researcher registering a patent (property of the university) with the help and money of the university will get 30% of income generated from selling the patent or licensing fees. To my knowledge this number at my university is relatively high, but reasonable, as universities not as rich as ivy league universities or located in start-up-areas like San Fransisco with risk-aware and -willing investors, mostly generate income from selling patents or licensíng fees. With success rates of start-up's below 10%, money for founding a company nearly always has to come from private investors or national funding programs. For public universities this business is to risky.
As the minstries of resarch and economy also have huge funding programs to support development of new technologies in collaborations/consortiums of public research institutes and private companies, especially through funding from the european union for small and medium enterprises (SME's), dealing with IP rights and possible patents and ownership in the consortium often has to be already outlined in funding proposals and contracts are negotiated before the projects starts and money is granted.
I have no clue what the situation is like in very innovative and start-up focused areas like the silicon valley, but the case of Germany will rather be the normal case due to limited budget and financial means most universities face. Though I would be very interested to hear what the situation for researchers at public institutions in the silicon valley is like.
2In Germany, if the researcher is employee of the university the invention is actually owned by the university. University decides whether they'll file a patent - if so, they pay the fees, and the researcher gets 30 % of gross income of the patent (i.e. after those fees etc. are subtracted). 30 % is fixed by law for university employees, employees of other research institutions are subject either to industry ruler or to non-university rules for public service. If the university doesn't want the invention, it goes to the inventor who then can file a patent on their own. Jun 1, 2019 at 21:09
@cbeleites thanks for the addendum. Implicitly I meant that the patent is property of the university and the researcehr gets 30%, didn't know the number is the same everywhere. Would be interesting to know under which circumstances (fixed staff, PhD student, etc.) a researcher has to ask the university or can file directly on his own. This probably also influences the answer to OP's question. Can you point to the exact law? Jun 1, 2019 at 21:42
It is probably not to your advantage to do it yourself. Not just the initial cost of filing and a good search, but the legal costs of defending the patent in the future can be huge. Big companies can squash lone researchers via legal filings that must be answered.– BuffyJun 1, 2019 at 21:56
1The law is "Gesetz über Arbeitnehmererfindungen" [law about employee inventions] in short Arbeitnehmererfindungsgesetz or ArbnErfG gesetze-im-internet.de/arbnerfg. The crucial factor is whether the inventor has an employment contract and whether the invention touches anything the employer (uni) does. So, Bachelor/Master students and PhD students who are not employed by the university (e.g. scholarship) keep their inventions. Everyone else has to notify university (unless the contract has a non-standard additional clause that says they don't need to). Whoever gets the patent, pays. Jun 1, 2019 at 21:59
@Buffy even for most german universities such patents fights are too costly/risky. From my experience, if the idea/patent is not unique/breakthrough in some way, just a modification/extension of an industry patent/method, universities are not inclined to file the patent at all Jun 1, 2019 at 22:30