To patent or not to patent - Page 1
Forum section: electronics / general

author: blueskull
author_rank: Unknown
timestamp: August 05, 2016, 03:14:06 pm
content: I'm currently being employed by an university (NC State Univ), and I have a great idea that is patentable.According to our IP policy, I can not patent it along. All IPs generated during scope of employment belong to the university.I do not have intention of suing anyone using my design, but I need to disclose it so no one else can patent it.I want a patent so that if I start a business after graduation, a patent would be a good way of market our advantage.Also, Chinese government gives quite some supportive policies to companies with some patents, plus I will have an American MSEE and PhD as well by then.As well, I have to plan for starting a business locally in the US, if Hillary's "green card for every employed STEM graduate" proposal gets passed.Finally, years of patent lawsuits are something I can NOT afford, and I do not have that time either.FYI, I'm graduating in 2 years. I've already passed Qualify and am already working on my dissertation project.

author: vodka
author_rank: Frequent Contributor
timestamp: August 05, 2016, 04:05:05 pm
content: QuoteWhy is it a bad idea ? If you desenvolupe his idea at his home that is not illegal. Other thing is that you use the lab university or you work on his idea during the workday.

author: nctnico
author_rank: Super Contributor
timestamp: August 05, 2016, 04:09:21 pm
content: IMHO it makes only sense to apply for a patent if:1) You have enough money or are able to find investors to commercialise your idea succesfully2) You have enough money to enforce the patentDo realise that a great idea isn't a guarantee for commercial succes!Regarding whether the IP belongs to the university or not is a thin line. Did you spend resources (computers, test equipment, time) they provided to you on your idea? If not it would be hard to prove for them the idea belongs to them. If you are serious I'd seek advice from a lawyer about this.

author: Brumby
author_rank: Unknown
timestamp: August 05, 2016, 04:35:42 pm
content: If you are working on paid hours that were paid for by the university, then I think you will find you will have no option but to include them. As I understand it, even developing something using their facilities will entitle them to an involvement.Universities take out patents to help with funding - so I might suggest you find out who handles patents for the university and have a chat with them about it.

author: Brumby
author_rank: Unknown
timestamp: August 05, 2016, 05:15:29 pm
content: I'd be careful about what you claim as "your leverage".I'd be checking the fine print of that Patent Agreement before even considering the idea of publishing the idea to kill off patentability.I can't see them leaving themselves open to such a risk. I would bet that that's the sort of thing that someone would have tried in the past - and that today's Patent Agreement would have it covered.

author: nctnico
author_rank: Super Contributor
timestamp: August 05, 2016, 05:32:44 pm
content: As I wrote before: before you do anything or start negotiating you should really consult a lawyer. Bringing a lawyer to the meeting would actually be a very good idea! I'm pretty sure the university will have someone with a legal background attending the meeting and they may even try to f*ck you over (on purpose or by accident).Details worked out now leave no room for (mis)interpretation (and lawsuits) later on.

author: ECEdesign
author_rank: Regular Contributor
timestamp: August 05, 2016, 05:35:25 pm
content: It would be sort of unusual for an academic to patent instead of publish at my university. We are an R1 institution.

author: Kilrah
author_rank: Unknown
timestamp: August 05, 2016, 06:06:44 pm
content: I'd say between 1 and 2, but the choice probably won't be yours, it will be the Uni's. If THEY see a value in your idea and care about the $ it could generate they'll patent it and give you the deal in option 1. If not they won't bother patenting it but will neither help you do so, nor maybe even allow you to at all (in the form of "yes you can, but you have to include us, and we don't want to be pay for it" so that you'd have to bear the cost for them if you did). In which case you'd end up with option 2.Options 3 and 4... well, if I was in your Uni's management and read that you had even considered those, I'd probably throw you out on the spotNot sure I get 5)... you can't use the patent, AND get receive less? Why would you want that?Then if you have a choice to do 2) without them being able to object (and force 1)), it may depend on your intentions. If the most important to you is that technology to be used for the good of all, go for 2)... if you want to develop a business and really believe you can with that technology AND the given conditions, do 1). Note that 1) could lead to someone else paying for a license to use the technology but hiring you to work on it - i.e. you could as well manage the business or just work on the tech if you're not intested by the business side.So for me 1) would be the best option if that's something you find worth (little risk for you yet still significant potential), but IMO its not your call and will depend on the uni's management seeing the value in it or not.I personally hate patents and would rather create a good product that establishes a standard (i.e. keep everything secret until it's out) and continue to improve to stay on the leading edge to keep the advantage instead of relying on defending a patent, but then for someone who's in pure research that might not work and the school might not allow it. That you'll only know by discussing with them.

author: Scrts
author_rank: Frequent Contributor
timestamp: August 05, 2016, 06:34:27 pm
content: The University will have ALL rights to your patent, since they are employing you and you've generated the idea while working for them. Even if not, good luck proving that. Universities do patent stuff sometimes, but that's rare compared to publishing papers. On top of that, you must be very careful not to infringe any other patent while doing your product, because if you will catch someone infringing your patent, usually big companies counter-sue for their patent infringe. They sometimes even buy companies just for patents. So it's a very very risky decision to go on your own. I'd go behind the University, but state myself as an inventor. Unfortunately, you will not be able to do business if you'll leave the uni.

author: kfnight
author_rank: Regular Contributor
timestamp: August 05, 2016, 07:02:04 pm
content: A couple of my (former) co-workers recently got fired and are in court proceedings because they filed patents on their own dime and didn't tell the company.

author: CatalinaWOW
author_rank: Super Contributor
timestamp: August 05, 2016, 07:42:23 pm
content: First, I don't find patents very useful for individuals or small companies as a financial asset. Unless they are planning to sell out to a large company.Second, the university will have rights to your patent unless you can establish that it has nothing to do with your studies or employment. You have already said that it is directly involved, it is theirs. Of course that means they pay for establishing and defending the patent.Third, the exception to rule 1 is if you will be seeking employment with others. Patents are a very useful decoration on a resume, at least here in the US. Comparable to an advanced degree. It demonstrates your capability for creative thought. From your descriptions I suspect that it is maybe even more true in China. Make sure that as the university files for this patent you are listed as the inventor, with rights assigned to the university.

author: ez24
author_rank: Super Contributor
timestamp: August 05, 2016, 08:36:32 pm
content: Quote from: blueskull on August 05, 2016, 08:08:55 pmJust remember the paper the patent is on could be more valuable than the money it makes (per your desire to get a good job in China). I would be careful at the meeting and kiss their asses. Listen carefully and do whatever it takes to get them to apply for one. ie smile at everything they say and help THEM get the patent. Once they want it then politely ask if you can get any money to help with your studies.What I have not seen is the actual cost of getting a patent, I assume it is in the thousands because of the fees of a patent lawyer, patent searches, etc. (I guess at least 25k) so it is unlikely you could get one.

author: Kilrah
author_rank: Unknown
timestamp: August 05, 2016, 08:45:37 pm
content: Is a US-only patent worth much in China?

author: ez24
author_rank: Super Contributor
timestamp: August 05, 2016, 09:12:49 pm
content: QuoteI do not understand this. Does this mean that if you use your patent in a commercial product that you would have to pay and get 40% back? So you would have to pay 60% ?Seems to me that having a chance to become head of a railroad would be worth more than any fees.Could you ride the rails free? When you become head honcho, are you going to offer us members discounts to ride your rails (and using your patents)? Remember us humble members.ps For the meeting maybe you can do some background research on the committee and then FLATTER the hell out of them. As head of the Chinese Railroad, there will be plenty of people flattering you.

author: Kilrah
author_rank: Unknown
timestamp: August 05, 2016, 09:22:12 pm
content: Quote from: blueskull on August 05, 2016, 08:48:11 pmIsn't that only for the application? I.e. when (if) it gets granted, then it's dozens of $k/year to maintain it.

author: Red Squirrel
author_rank: Super Contributor
timestamp: August 05, 2016, 09:37:13 pm
content: How does that option of publishing in a paper work? Is that something they swear on, that if you do that they won't patent it? Like is that legal binding or could they still turn around and patent it anyway?The safest bet might be the unethical one of patenting it after the fact but just open source the patent. It will prevent them or someone else from patenting it in your face and stopping you from using the idea.I hate how companies can have these clauses though, my company has a similar clause, anything I do on my own time they technically own the rights to. I've never actually seen that clause used, but it's there. Anyone who retires is also not allowed to go work another job in the same field.

author: janoc
author_rank: Super Contributor
timestamp: August 05, 2016, 09:56:04 pm
content: Quote from: Red Squirrel on August 05, 2016, 09:37:13 pmIf something is published, it counts as prior art. Even if someone manages to get a patent on it (examiner has missed it, the applicant has not disclosed it, etc.), the patent would be trivial to invalidate.Opensourcing a patent is a bit of oxymoron - patent cannot be "closed sourced" by definition, because you are getting the patent in exchange for disclosing the idea to the public.Quote from: ECEdesign on August 05, 2016, 05:35:25 pmIt is not that unusual, universities often do both things (not necessarily for the same invention). I know academics that have both published and patented. Universities encourage it because they profit from the licensing royalties afterwards. A patent often counts for more than a publication when it comes to various evaluations as well. However, publishing is certainly more common, only exceptional ideas are getting patented - it costs money and time, both in short supply in academia.Of course, it is not applicable in every field, but in engineering and biosciences it is quite common.

author: Red Squirrel
author_rank: Super Contributor
timestamp: August 05, 2016, 10:00:38 pm
content: Quote from: blueskull on August 05, 2016, 09:46:31 pmIs that really the case? You often hear of stuff being patented even though it's something that's already been disclosed/used. Or stuff that is simply so primitive that it's just all around us already. Ex: "slide to unlock" and "rounded corners".Or does it have to be published in a very specific way in a specific place for it to count? Ex: you can't just publish it on your own site, it has to go to some official place?

author: Kilrah
author_rank: Unknown
timestamp: August 05, 2016, 10:07:38 pm
content: You probably refer to the common "patent pending".That means they filed an application for the patent (that's what has to be done before disclosing anything), then once that's done you can safely disclose (and use) the tech while the application is processed (that could take years). Others of course get access to the data at this point, and could start exploiting your tech if they wanted to gamble on the application being rejected.At the end of the long process you'll either be granted or denied the patent. If denied then anybody who has already used or would like to use the tech can do so freely, if granted then you get the right to sue someone who did.E.g for slide to unlock Apple would have filed a patent application for that prior to releasing any info about it or product that uses it. Then they start making and selling product, others copy, then a few years later they get their patent granted because they were indeed the first ones to apply for a patent on that thing that didn't exist before, and can sue the others.

author: CatalinaWOW
author_rank: Super Contributor
timestamp: August 06, 2016, 12:44:48 am
content: I don't know if patent law has changed, but at one time you had one year from public disclosure to obtain a patent. Publication does establish that it is your idea and not someone else's. I don't remember if the one year applied to the time to application, or time to grant. If the latter it would be a real gamble. With the university bureaucracy even an application in a year may be a gamble.

author: janoc
author_rank: Super Contributor
timestamp: August 06, 2016, 11:27:39 am
content: Quote from: Red Squirrel on August 05, 2016, 10:00:38 pmThe issues you are mentioning have little to do with publishing but everything to do with the idiosyncrasies of the US patent system (and Patent Office).To put it simply, the US patent office is not really doing their job and they often grant dubious patents that wouldn't pass the smell test elsewhere. Then they rely on the courts to "shake it out", what is valid and what isn't. That you have got a patent doesn't necessarily mean it is valid - only that someone gave you a piece of paper saying you have a patent. A lot of bogus patents shouldn't have been granted and are successfully invalidated later - often on the basis of pre-existing publications.Re Apple - Apple's "rounded corners" patent are a bit of a special case. That was something called a "design patent" and for those there are different (more lax) rules. It is more akin to a trademark protection of the (artistic) design than regular patents for inventions. In Europe these are not even called patents but a protected industrial design (or something to that effect).Re where to publish - it is best if the publication is well known, obviously. If you publish in an obscure journal or a website, it is unlikely that the patent examiners will find the publication during the examination process. However, strictly speaking, you can publish even on your website.There is also another way of publishing in some countries - e.g. our company is depositing documentation about our products with the government (a bit like a notary, but it is a special office dealing with it). That guarantees that we have an official paper trail about pre-existing state of the art should a competitor come and attempt to patent what we are doing. It doesn't afford us the patent's exclusivity of use, but it doesn't cost anything neither. And it is perhaps easier to do it like this vs getting an article published in a scientific or engineering journal, where you have various hoops to jump through - it has to be new, there has to be some scientific rigor, has to pass peer review, etc.Patents are expensive, even if you are not litigating them - they cost a lot to file and maintain (you have to pay annual upkeep fees for every country where you wish it to be valid). So if your goal is purely defensive, it is better to look for other options.

author: donotdespisethesnake
author_rank: Super Contributor
timestamp: August 06, 2016, 10:07:58 pm
content: Oh definitely 1). Let the university do the leg work and pay the fess, and you get a 40% royalty. That's a no-brainer. You will make the university happy and lead way to future collaborations, plus you have a patent in your name. If the patent is successfully licensed, you could get a chunk of money for no cash investment.Also if you have a success, you would have a better position in future to negotiate for future spin-offs. People will want to work with you.Trying to end-run the university will likely piss them off, involve you in legal action, and cost you money which you might never get back. Not worth the risk. It's been said that only 3% of patents actually make money for the inventors, the figure is probably higher than that, but even a sound patent is not a guaranteed pot of gold by any means.

author: b_force
author_rank: Super Contributor
timestamp: August 07, 2016, 11:44:53 am
content: In my opinion it all depends what you want to do with the patent.If it's just a brand new idea, but you don't want to deal with it later on, cashing would be the best way.On the other hand, for me it goes really against the whole principal of being a scientist/engineer.Science should be open and not controlled by patents.(It's already to annoying that we need memberships and pay for articles to read them)

author: Brumby
author_rank: Unknown
timestamp: August 07, 2016, 01:51:48 pm
content: If you want to encourage the pursuit of science, then patents are not all bad.They provide the creator with the opportunity to benefit from their efforts - at the cost of divulging the detail. A patent thus guarantees the knowledge will become public domain.

author: JPortici
author_rank: Super Contributor
timestamp: August 07, 2016, 02:23:56 pm
content: How do i see the whole thing..It is right that the uni have a control over the patents or at least the money aspect of it, after all they are paying for your employment, they are making it possible for you to do your research, aren't they? they are making an investment over you.for the same reason i won't complain too much that my employer is making far more money off my work that i am