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I'd appreciate your advice on my current situation a lot!

So I'm an international phD student getting close to graduate. My research advisor got so interested in my recent project and he's working on filing a patent out of it with the institution's office for the related work. Seems like he'll start the company as well based on the project.

Followings are the questions I have. As I do not have the experience or knowledge on such a situation, I'd appreciate your help so much in advance.

  1. To guarantee any potential rights that I can possibly claim as a co-inventor, is there anything I need to make sure with my PI during the patent filing process? For instance, although I am not gonna accept his offer to work in his company, would it be still possible to secure my equity as a co-inventor or so?

  2. In case my PI wants to exclude me out of the patent filing or any financial benefit created out of it, is there any way I can claim my portion?

Thank you so much for your time checking this, and any advice would be appreciated.

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  • Probably better to ask this on legal.se, I would say. Really I would probably consult a lawyer. Mar 9 at 6:51
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Disclaimer: I'm not a layer so the answer is not an advice but a collection of thoughts based on my experience. And each particular situation can have many facets which one with limited knowledge may not foresee. Also intellectual property law varies from country to country, so additional details would help answering.

I start from last question:

  • No, your supervisor can not exclude you from the patent as you are a coinventor. If she or he files the patent without you, you can claim against it in front of the patent office. Make sure you have some proofs of your authorship. If you had exchanged emails with your supervisor on this topic, it can be also useful. Note that in patent right public disclosure of invention leads to loss of patentability. In simple words if you tell someone (non-inventors) about invention and they can prove it, the patent application can be rejected.

  • The first one is the more difficult question. Here it strongly depend on your relations with your employer and country laws on intellectual property. In some countries having a contract with your employer would mean that intellectual property (IP) generated within this contract belongs to the employer. Depending on country you may keep parts IP of it or get only a bonus from employer. In situation you describe, it is difficult to give you an answer without knowing details of your contract and IP laws of the country. In any case typically the patent can be licensed to whoever wants to use (the startup company in your case) it by IP owner (inventors or/and your employer).

Hope it helps to proceed with more detailed search.

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  • The specific term is assignation - patents can have an assignee who has the rights (which is separate from inventors). Employers can contractually require a specific assignee.
    – user133933
    Mar 9 at 15:06
  • Right, thanks! "Assignee" - this is exactly how it is called in patents.
    – Vadim
    Mar 9 at 15:36

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