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During my recent research, I produced a little prototype which seems interesting enough for commercialization. I don't have the necessary resources to do it, so I naturally think about collaborating with industries. But in this case, I still would like to file a patent before the collaboration starts. Would this be a barrier for collaboration with potential industrial partners?

On the other hand, would it be useless to file the patent considering the possibility that the industrial collaborators can find ways to circumvent my patent by making non-essential modification? (in which case I don't have the resources to sue them)

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  • Do you work for a university? If so, ask your intellectual property office. May 11, 2015 at 18:15
  • @NateEldredge Yes I do. We have a KTO and I am consulting them. But I would also like to have some opinions here.
    – Troy Woo
    May 11, 2015 at 18:31

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As Nate notes in his comment, you should talk with your University's Office of Technology Commercialization, Intellectual Property Office, Office of Technology Transfer, Office of Industrial Programs, or equivalent (just to give a few key words to search for). However, you should be able to just talk with a potential industrial collaborator after signing a mutual non-disclosure agreement that includes the restriction not to exploit each others IP disclosed under the agreement for commercial gain without further negotiation. These kinds of NDA are common in work between industry and academia, and they allow for discussion to begin without everything having to be patented ahead of time. Your university's industrial office (as above) ought to be able to help you draft the NDA. Don't do it without the support of your university's attorneys.

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  • Thanks man. I wasn't going to. But just hope for the best and prepare for the worst.
    – Troy Woo
    May 12, 2015 at 16:05

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