11

I am about to finish my masters in stats and in order to graduate I was told that I need to sign a document stating that any patents that I filed while enrolled at the university, belonged to the university. My first question is, is this normal? My second question is, I did file a patent during my enrollment, however, it was with my employer and had nothing to do with my school work, will this cause some sort of conflict of interest?

EDIT: I am in the US. Also, the patent was filed by my employer with me as the inventor.

||improve this question
  • 1
    Who told you this? – Scott Seidman Nov 18 '19 at 16:13
  • 18
    Please edit your answer to tell us what country you're in. The IP laws in the US are very different from those in other countries. Also keep in mind that there are at least two separate issues here: (1) Is it perceived as "normal" for a university to try to bully you into signing this after the fact? (2) Does signing such a document have any legal force? (Possibly not, but you probably need a lawyer to advise you on this.) (3) Was your patent automatically owned by your university because you were working for them? (Probably not, in the US, but again, talk to a lawyer.) – user1482 Nov 18 '19 at 21:59
  • 3
    Did you personally file the patent, or did your employer file it with your name as the inventor, pay the filing fees, and pay the patent agent who helped to draft, etc? The second option would be the commonest one for a patent relating to your employer's business activities, and in that case you personally have nothing to declare. – alephzero Nov 18 '19 at 23:49
  • 2
    Why didn't they ask you to sign this at the the beginning of your enrollment like every other university? This is effectively contract renegotiation. – zero298 Nov 19 '19 at 13:38
  • 1
    Considering you filed a patent during your enrolment while with an employer, you should definitely consult their legal team as well. Don't sign away what isn't yours. – Mast Nov 19 '19 at 18:36
27

Yes, it is normal. Universities often require this - especially of faculty, but also, often enough of students.

You have an issue that you can probably work out with the university. If the patent wasn't related to your work in the educational program, then the university probably has no real claim. But the lawyers for your employer and for your university should probably both be informed of the situation and have a chance to discuss it.

But given your statement that it has nothing to do with the university, I would expect you to get a waiver. Or perhaps just a modified document exempting that one project or (better) making it clearer that it only applies to patents that were, in some way, supported by the university.

But I wouldn't make assumptions and I wouldn't sign the document without advice of a lawyer.

||improve this answer
  • 1
    Would you think it best to inform my employer's lawyers and let them settle it? – CumminUp07 Nov 18 '19 at 13:12
  • 11
    That's where I'd start. Point them to the office that handles IP for the university. But provide pointers in the opposite direction also. – Buffy Nov 18 '19 at 13:16
  • What precisely do you consider is normal? (I think I'm claiming the opposite: academia.stackexchange.com/a/140212/22768) – user2768 Nov 19 '19 at 10:48
  • 1
    @user2768, such requirements are common, but, yes, notice is given. However, that notice might just be the stated policies of a university that the student is "assumed" to agree to when enrolling. Faculty normally "agree" to such things, but without a formal signature of a specific document. But, your very presence is taken to imply that you agree to abide by those policies. Whether this is appropriate or not is open to debate, but it is common and therefore "normal" in that sense. – Buffy Nov 19 '19 at 13:22
  • 1
    Thanks for the clarification. For patent rights, I suspect that no rights can be obtained without a formal signature of a specific document, but I'm no expert. – user2768 Nov 19 '19 at 13:26
22

My first question is, is [being told to retrospectively assign patent rights] normal?

No: Assigning any patent rights in advance is normal, doing so retrospectively is not.

My second question is, I did file a patent during my enrollment, however, it was with my employer and had nothing to do with my school work, will this cause some sort of conflict of interest?

No: The school seemingly have no rights, presumably your employer does. Note that retrospectively assigning rights to your school will create a problem, moreover, you could be personally liable (e.g., if you assigned rights to two parties).

||improve this answer
  • 1
    Assigning rights to more than one party is quite possible in general: e.g. by non-exclusive license. – cbeleites unhappy with SX Nov 18 '19 at 15:48
  • @cbeleitessupportsMonica An employer is surely unlikely to share rights in general. – user2768 Nov 18 '19 at 16:16
  • 1
    The retroactivity of the copyright assignment is really not the issue here. Every university I know of has rules and regulations that state that just by virtue of being an employee or student, the patent belongs to the university. In reality, there is no need for a paper to be signed -- the paper is the work contract. The fact that the university would like to have a signed paper just for patents is an insurance, but not a copyright assignment -- the assignment has happened long ago (implicitly). – Wolfgang Bangerth Nov 18 '19 at 18:03
  • 10
    @WolfgangBangerth: First off, this is not a copyright, but a patent. They are different types of intellectual property. Also, if you're referring to the US, then your understanding of the law is wrong. See academia.stackexchange.com/questions/68873/… . The law on this is fairly complicated, but it is simply not true that a university automatically owns your IP because you were a student there, nor is it true that they can make it so simply by stating a policy. – user1482 Nov 18 '19 at 21:34
  • 2
    AFAIK the answer can be different for different states (at least in a normal workplace; not sure if academia is any different) in the United States. – user541686 Nov 19 '19 at 1:14
5

If you filed a patent having nothing to do with the university, and then sign a paper saying that the university is the assignee for any patents you filed with the university during your time there, OF COURSE there is a possibility that one impacts the other. You may be ceding exclusive ownership on behalf of your employer -- and there have been cases where such things have been upheld in court (see https://en.wikipedia.org/wiki/Stanford_University_v._Roche_Molecular_Systems,_Inc.)

If it's valuable and important, you need to be careful, and being careful means hiring a lawyer. You should certainly not sign anything that every other student has not been asked to sign.

||improve this answer
  • I doubt that Stanford v. Roche is applicable here: it sounds like the OP has already assigned the patent, and so can't assign it to the university. – Mark Nov 19 '19 at 0:10
3

This very much depends on your local legislation.

As @Buffy says, in some countries this is considered normal. In other countries, it is not normal and any such agreements may even be void.

To give an example:
The latter would be the case e.g. here in Germany, IP of a non-employed student stays with the student and requiring them to sign over their rights as prerequisite for graduation would be considered duress and make the contract void (plus possibly making the professor liable to corruption charge due to abuse of power).

OTOH, it is usual here to negotiate signing over IP rights later on: once the student is finished with their graduation, they are in a position to freely negotiate e.g. patent licenses.

Last but not least, an employer (unlike a univeristy as a school) by default has certain rights (e.g. has a right to know of the invention and then possibly to decide whether they want to patent it and compensate you or whether they leave it up to you).

||improve this answer

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.