Ask HN: My university wants all my IP (PhD Student) is there anything I can do?

Inventing a groundbreaking technology during your PhD can be incredibly exciting, but navigating the intellectual property (IP) landscape with your university can quickly become complex and contentious. Many universities, especially in the USA, have broad IP policies that claim ownership of inventions made by students, particularly if any university resources or funding were involved, even indirectly.

Prioritize Your Academic Future

The immediate and most consistent advice for anyone in this situation is to complete your PhD. Do not let this IP dispute jeopardize your academic standing or the culmination of years of hard work. Sacrificing your degree for a patent that may or may not materialize, or one that faces legal challenges, would be a tragic outcome.

Seek Specialized Legal Counsel

This is not a task for general lawyers. It's imperative to consult an intellectual property attorney who has specific experience with university IP policies and tech transfer offices. These lawyers understand the nuances of academic agreements, faculty handbooks, and the specific types of leverage available. While legal counsel can be expensive, it's a critical investment to protect your innovation and future business prospects. Simply speaking with patent filing lawyers might not be enough; you need expertise in IP licensing and university-specific disputes.

Understand the University's Perspective and Negotiation Avenues

Universities often view even minimal financial support (like a research stipend) as sufficient grounds for an IP claim. Their tech transfer offices (TTOs) have a mandate to commercialize university-owned IP. While their initial stance might seem unyielding (e.g., claiming 100% IP and offering 40% royalties), there is usually room for negotiation. TTOs have an incentive to get technology out of the lab and into the market, as an invention gathering dust brings no revenue. They have standard negotiation terms and models you might not be aware of.

Consider that 40% of royalties from a highly successful product, or from a major company licensing your innovation, can still be a significant amount of money. Furthermore, your personal royalty share from the university's license is separate from your ownership in a future business. By the time a business launches a product, it will likely have several patentable inventions, with your initial university-claimed invention being just one component. Your ownership share in the business could be quite valuable, even if your personal royalty on the initial invention is 40%.

Strategic Commercialization and Investor Involvement

If your goal is to start a business, securing investors, particularly those in the medical device sector, can be a game-changer. Investors bring not only capital but also legal resources and strategic connections. They might be able to exert pressure on the university to reach a more favorable agreement, understanding that a stalled IP dispute could hinder the venture's success.

Explore different licensing models. Historically, some universities have allowed inventors to start companies with the understanding that the university receives free use of the technology within its system. Such creative solutions might be negotiable.

Beware of Risky Strategies

Ideas like open-sourcing your invention or dropping out without publishing your dissertation carry significant risks:

• Open Sourcing: If the university has a valid IP claim, releasing the innovation as open source could be seen as giving away their property, leading to severe legal repercussions and potentially jeopardizing your PhD. Moreover, open-sourcing could establish prior art, weakening any future patent claims you or your company might pursue.
• Dropping Out/Not Publishing: This could mean losing your degree and severely impacting your academic and professional career without necessarily resolving the IP dispute. The university could still pursue claims based on the work done during your enrollment.

Proactive Measures for Future Innovators

For anyone considering a PhD or research position, it is highly advisable to clarify IP policies before commencing your studies. Some universities are more accommodating than others in allowing academic staff commercial freedom. Understanding these agreements upfront can prevent future disputes.