Any IP lawyers or pros on here?

[Filterlab]

In keeping with some recent eco-inventions we've created at one of my companies, we have an agreement in the pipeline with a university (not signed or agreed with yet) who are working with us on R&D.

The agreement has a section on intellectual property, but it's mesmerisingly ambiguous as to who will own the rights, bearing in mind we already have a patent on the idea.

Is anyone on here a specialist in this area? We have funding so I'm happy to pay for consultancy.

Thanks gents.

[mondie]

Not a lawyer but have some experience in this area. We undertake various projects with Unis in Wales and England and we always insist all IP sits with our company. In all cases bar one this has been agreed. It is the only way to proceed otherwise you open up all sorts of gray areas with Unis that are, for the most part, commercially quite naive.

[ej86]

Not a lawyer but I do work in IP. If you own the patent already for whatever it is then that should stay your unless your agreement gives any rights to pre-existing IP to them. Otherwise it’s only stuff that’s developed subsequently beyond the scope of your current patent which is in question. The simplest and most preferable arrangement for you would be for you to have first dibs on ownership of any new IP.

I suggest you do indeed want an IP specialist lawyer to look at the contract and advise.

Also need to be mindful of academics wanting to publish things in journals or at conferences which you may want to have patents filed on before they disclose.

[o u t a t i m e]

My wife i’s an IP lawyer. Message me if interested. Cheers.

[Wolfie]

I hold a few patents…. Nothing should be ambiguous…. Get it locked down and legally approved if you’re the original innovator

I assume you’ve been working under a NDA with the university…?

I have once, when an external organisation have added some real novelty to a development, included a couple of young engineers as co-inventors, but they had no further claim on the IP…. There is a difference between being named as a co-inventor and an owner of the IP…

[Filterlab]

Thanks chaps for all your replies and advice.

My wife is an IP lawyer. Message me if interested. Cheers.

I'll send you a PM shortly matey, thanks kindly.