IP Ownership Question
Discussion
A young friend of mine who is starting a business in the US has a developed and paid for a process patent for a liquid handling and treatment system.
However he cannot program and wants to go into a sales partnership with another company who have offered to write the software to automate his process so that it can be brought to market.
To me it looks like he will have to expose every detail of his IP and thereby runs the risk of losing control of it. Have I missed anything? Does anyone have experience of this type of situation? Is it realistically possible to safeguard his IP?
However he cannot program and wants to go into a sales partnership with another company who have offered to write the software to automate his process so that it can be brought to market.
To me it looks like he will have to expose every detail of his IP and thereby runs the risk of losing control of it. Have I missed anything? Does anyone have experience of this type of situation? Is it realistically possible to safeguard his IP?
The patent is supposed to be the protection - as long as someone can afford to take action if there's a breach. Has it been granted in the countries which will be involved in the development process ?
He probably also needs to get a watertight contract drawn up which ensures that the developers pass IP in the software back to him.
He probably also needs to get a watertight contract drawn up which ensures that the developers pass IP in the software back to him.
As noted above, the purpose of the patent is to retain ownership of the invention for him. However, it won't affect ownership of copyright in the software code, so he should ensure that he has a watertight development agreement with them that deals with that.
It's a scary step, to let the invention out of your grasp and share it with others so that they can help. However, unless they're working in a large organisation that has all these resources on tap, it's a step that most of my clients need to take at some point. One of the purposes of intellectual property is to protect both parties in that scenario and define who owns what, so he's going about it the right way. In the end, if he doesn't feel that he trusts them with the invention then they're probably not the people he should be dealing with anyway?
Don't forget that if his first US filing date was less than a year ago then he can still file applications pretty well anywhere else outside the US, if he needs to. His patent attorney has no doubt advised him of that.
Oh, and good luck!
It's a scary step, to let the invention out of your grasp and share it with others so that they can help. However, unless they're working in a large organisation that has all these resources on tap, it's a step that most of my clients need to take at some point. One of the purposes of intellectual property is to protect both parties in that scenario and define who owns what, so he's going about it the right way. In the end, if he doesn't feel that he trusts them with the invention then they're probably not the people he should be dealing with anyway?
Don't forget that if his first US filing date was less than a year ago then he can still file applications pretty well anywhere else outside the US, if he needs to. His patent attorney has no doubt advised him of that.
Oh, and good luck!
patently said:
It's a scary step, to let the invention out of your grasp and share it with others so that they can help.
Yes this is a young guy starting to work with a global! Having worked for a global myself I know how one sided the deal can get.patently said:
Don't forget that if his first US filing date was less than a year ago then he can still file applications pretty well anywhere else outside the US, if he needs to.
Could you give me a link please so that I can understand this better.Smiler. said:
Is this PLC programming your mate is in need of?
Presumably, he doesn't have the premises/plant necessary to deliver the final product?
Yes PLC. Used a university there already and invested 30k in dev but the result was Presumably, he doesn't have the premises/plant necessary to deliver the final product?
unusable. The spec and flowcharts were good enough as it had been tested in VBA apart from the actual hardware I/O. He doesn't have s/w or h/w experience he is a chemist/thinker. It is start again time. Hopefully this time with this global who have the resources.
There are other considerations, if the individual is working at an organisation that say handles fluids and this is linked to the IP his employer may have a right to the IP not the employee.......check the employment contract. This is no different to say a student at a university who's training and research leads to an invention the University can lay claim to the IP as the project is not the property of the student but the university.
https://www.admin.ox.ac.uk/researchsupport/ip/
https://www.quora.com/If-Im-working-at-a-company-d...
https://www.admin.ox.ac.uk/researchsupport/ip/
https://www.quora.com/If-Im-working-at-a-company-d...
paul.deitch said:
Smiler. said:
Is this PLC programming your mate is in need of?
Presumably, he doesn't have the premises/plant necessary to deliver the final product?
Yes PLC. Used a university there already and invested 30k in dev but the result was Presumably, he doesn't have the premises/plant necessary to deliver the final product?
unusable. The spec and flowcharts were good enough as it had been tested in VBA apart from the actual hardware I/O. He doesn't have s/w or h/w experience he is a chemist/thinker. It is start again time. Hopefully this time with this global who have the resources.
If your mate wants any impartial advice be glad to help if I can.
Happy to sign an NDA
Toaster said:
There are other considerations, if the individual is working at an organisation that say handles fluids and this is linked to the IP his employer may have a right to the IP not the employee.......check the employment contract. This is no different to say a student at a university who's training and research leads to an invention the University can lay claim to the IP as the project is not the property of the student but the university.
https://www.admin.ox.ac.uk/researchsupport/ip/
https://www.quora.com/If-Im-working-at-a-company-d...
He was basically gifted the project by the original concept developer with the comment that he made more than enough money from his other patents! Sometimes it is an odd world. So his current employer would find it difficult to make a claim on that.https://www.admin.ox.ac.uk/researchsupport/ip/
https://www.quora.com/If-Im-working-at-a-company-d...
Smiler. said:
I have programmed PLC based systems for my own Building Control Systems. I've also designed stuff (hardware - not always PCB based) so I know the frustration of filling in the gaps whilst keeping powder dry.
If your mate wants any impartial advice be glad to help if I can.
Happy to sign an NDA
Thanks for the offer I will bear it in mind.If your mate wants any impartial advice be glad to help if I can.
Happy to sign an NDA
And thanks to all for the useful input here.
paul.deitch said:
patently said:
It's a scary step, to let the invention out of your grasp and share it with others so that they can help.
Yes this is a young guy starting to work with a global! Having worked for a global myself I know how one sided the deal can get.patently said:
Don't forget that if his first US filing date was less than a year ago then he can still file applications pretty well anywhere else outside the US, if he needs to.
Could you give me a link please so that I can understand this better.Gassing Station | Business | Top of Page | What's New | My Stuff