06 November 2018
Patenting Inventions by Researchers in Universities
First Publication Date: 20th January 2010.
This is in response to a question asked by one of the researchers on our website with reference to the patenting of inventions by researchers in the University
For all the inventive minds working or studying in different Universities, idea of patenting their invention(s) is quite lucrative. With our experience of dealing with such situation, where a researcher wishes to apply for a patent, a number of issues should be catered before applying for the patent. In light of this, following guidelines are provided for the interested researchers.
1. First and foremost step for a researcher who wishes to apply for a patent is to make sure that there is no understanding (e.g. an agreement) between the University and the researcher relating to the ownership of Intellectual Property (hereinafter called as “IP”); It should be noted that if there is an existing agreement on ownership of IP in favour of the University, researcher may not be able to apply for the patent on his own name and might have to give away ( i.e., transfer or assign) the ownership rights to the University with respect to his invention. In case where researcher has obtained a no objection certificate from University to go ahead with the filing of the patent or if there is no understanding between the University and the researcher regarding the ownership of the invention i.e., either there is no agreement in place or IP ownership and/or transfer clause is not applicable or missing in the agreement, researcher will have to consider other issues.
2. One of the other issues that researcher needs to deal with is to see if University has a policy document relating to the inventions made by researchers, as in such a case invention will be owned by the University and the researcher may have to give away his rights to the University.
3. The other way, by which University may claim control over the invention of the researcher is by providing facilities and support to the researcher.The support may range from providing University’s resources, laboratories to the researcher for conducting experimentation to giving any financial aid to the researcher and so on. However, providing of such facilities and support to the researcher for the development of the invention may or may not necessarily imply that researcher has to give away his rights relating to his invention. That is if University claims control over the invention of the researcher without having an express understanding regarding the ownership of invention between the University and the researcher, the researcher may not have to give away or transfer his rights to the University, as nothing will bind the researcher to legally give away his rights to the University.
4. A researcher will also have to mention the names of the contributors to his invention such as professors or other such co-inventors, if any, who have equal ownership rights over the invention. While applying for the patent, it is important from the legal point of view to ensure that their names are adequately mentioned in the list of co inventors in the application for the patent. The absence of such measure may prove fatal to the researcher legally in the longer run.
Given the backdrop, a researcher should therefore note to make sure that no agreement binds him to give away his rights to the University, as in such case he will not be able to file for patent on his own name. Further, he should go through the policies of the University with regard to the ownership of the inventions, as then he may have to give away his rights. Finally he must also understand the level of support provided by the University to him for the development of his invention, as it may or may not imply that his rights over the invention should be transferred to the University.
Note: Please note that the Guidelines provided here are broad and non-exhaustive guidelines. Kindly consult a lawyer for specific advise.