I'm a postdoc at a university and made an invention I think could be patentable. I may want to use it for a startup in the future (likely in the US), and would like to have patent protection before publishing in academic journals (the work must be published as I will start my faculty search soon). I would greatly appreciate your advice as I am completely new to patents and just started to read up on it myself.
From what I gather filing a patent application myself would not be feasible financially, so I am considering approaching the university's technology transfer office (or equivalent). What are the pros and cons of doing so?
My understanding is that the university would be the sole patent owner and that as an inventor I would receive 30% of potential licensing fees.
- Is it conceivable that I could be listed as a co-owner?
- If not, do I have any control whatsoever about who the patent would be licensed to? I.e. would I have some kind of priority if I wanted to commercially use the idea myself?
- If I did found a startup, would it have to pay licensing fees to the university in order to use the patent I invented? How substantial are such fees, typically? Could the university as the patent owner deny me using my own invention?
- In summary: How would you recommend I proceed? My objective is to get patent projection before publishing, while maintaining as much control of my invention as possible.
Do I have a choice, even? My employer is a German university and my understanding is that the German Employee Inventions Act obliges me to disclose my invention. However, I have done almost all work outside official work hours and without use of university resources - does this make any difference? For context, I am planning to leave this university and Germany soon.
Are there any do's/don'ts I should know about in terms of strategy? (for example: "You should ask your university if you can be listed as an owner" or "don't file in Germany", etc.)
Bonus question: I am affiliated with a Max Planck Institute as well as said university, so I may have a choice which office to disclose the invention to. Are there reasons (e.g. more/less professionalism) to prefer one over the other?
Any advice is much appreciated!