Private interest in IP for college project

Question

this is my first question on Ask Patents and I'm new to this, so I want to thank everyone in advance for their understanding.

After completing my Senior Design, which is a capstone course for seniors at my university, I have been approached by a company inquiring about the intellectual property. We would love to have a patent and work with the company, however I want to ensure that we present the best possible image and handle everything in the most professional way possible.

The man with whom I spoke asked for a public summary of the design and a listing of all the times we had discussed and to whom we disclosed details. What does he expect in this public summary and what do I need to be wary of moving forward with this process?

The summary I had inferred to be a single page describing the functionality of the platform and its potential use cases. Should this include images? Is there a specific way of writing this of which I am unaware?

Thank you all for your help and I hope that this question was asked appropriately.

Answer 1

I'll start with a few basics.

To get an invention patent (there are also design patents to protect an ornamental design, I'm ignoring those now), the invention itself needs to be novel and non-obvious (over basically all prior public disclosures).

That means, any disclosure of how the invention works voids your ability to obtain a patent. In principle. There are a few exceptions, namely, if one of the inventors disclosed the invention, you can still file for a US-patent for one year (grace period for own disclosures). However, a European patent for example wouldn't be possible anymore. (There are other countries with a grace period, so some international protection is possible, but to a lesser extent).

So you can tell the company about everything that has already been published (oral disclosures in front of a few people not bound by secrecy do count). And that's probably what they are asking about. They can then judge if they want to work with you to file a patent. The risk is relatively low because your disclosures are prior art for their patent applications even if they did file without your consent ("stole your invention").

If you think there are still parts of the invention that are unknown to the public, the other answers already discussed a few points, but I'll reiterate.

• The universitys technology office might be helpful and you might be obligated to include them anyways

• An NDA would be "nice to have", but they might not sign one because it is a strong weapon against them coming up with your invention on their own. It's in most cases not a good business decision to sign one with an inventor.

• Try to not discuss specifics before having a deal.

If your invention is stolen, you can sue the stealing party, but, jokes on you, you'll have to prove it. I recently spoke with an experienced attorney in Germany who said he never had a case where it was even tried.

A last point, all this sounds worse than it is. Unless they can easily include your invention in an existing product, they probably want your expertise and having a patent additionally would be nice. Most firms don't steal your invention.

Answer 2

Let me preface this by saying I am not a lawyer. I do, however have quite a few patents. One very important thing to remember about obtaining patents is that public disclosure of your invention before filing can represent prior art and block you from obtaining the patent. Since patents go to the first to file it is an excellent idea to process a non-disclosure agreement (NDA) with anyone you discuss the invention with before filing. If you want to discuss the invention publicly, then try to describe what it does, but not how it does it. The company representative who asked for a summary of times and with whom the design was discussed is likely worried about patentability. An invention that isn't patented is much less valuable since other companies can copy it.

As you are at a university, I highly recommend you discuss potentially patenting your invention with the university's intellectual property department. Many universities can help you with creating NDAs and obtaining a patent and may even provide a patent attorney to draft the application. Although you may need to share the potential earnings with the university, it can be a good way to go because some schools are quite adept at out licensing. As DonQuiKong mentions in his comment, you may even be required to discuss this with your university. Since you used their resources and presumably discussed this with an advisor, they may legally have an ownership stake in the invention.

Answer 3

Take this with a grain of salt (not formal legal advice), but I would be a bit skeptical of the outside company. Although getting an NDA would be requisite for interacting with them (as Eric mentions), companies often will not go for this as it may preclude their rights relating to the subject matter even if they independently come up with it.

I feel the best way to approach it would be:

(a) have one of their in-house counsel file the application on the company's behalf for an interest in/ownership of the patent, but with attorney-client privilege in place (if that's even possible),

(b) have the company pay a third-party practitioner to draft the application for an interest in/ownership of the patent (in order to avoid NDA issues with the company), or

(c) have your university draft the application and have the company license from the university, as Eric suggests. Though assuming that your university doesn't have any rights to the patent (e.g. may depend if you used university equipment during development), I would preferably keep them out of the process, as they probably won't provide the best deal.

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Bottom line, I wouldn't disclose any specific subject matter to any non-attorney until you have an application filed.