Q: Do I get a share of money if some patents that I co-invented when I was a student is now sub-licensed by a company

I was a Ph.D. student working with my professor at University. We together applied for two patents, which were approved in the U.S. and Europe. My professor later started a company and licensed these patents from the University. Recently on the news, a large company sub-licensed these patents again from the company and the University. Down payments and loyalties are involved. My professor is reluctant to talk to me about his. My name is listed as a co-inventor on the patents. How do I know if I will also get some money if I can get any money from the licensing?

3 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: Sorry, I wish I had better news, but you very likely are not entitled to any money from the patent.

Generally, when you are a Graduate Research Assistant, you are getting paid, either as a salary or in lieu of tuition, to do research. You were getting paid. As with any university in the world, you probably signed an assignment the very first day as a condition of your hire at the university.

Now, if you were to have entered into a contract with the start up that you were going to be getting a piece of the revenue stream instead of salary, and if you were not using university resources, then you would have received cash on the back end instead of the front end. You most likely did not negotiate such a contract, because you would be aware of it.

But, if it is any consolation to you, even if you did not get any cash from your invention, your name is on the patent as the inventor, and they can't take that away from you. Also, because it is published, you are able to make any presentation on your invention based on what is stated in the patent; a patent is not copyrighted.

Marcos Garciaacosta and Timothy John Billick agree with this answer

Floyd Edwin Ivey
Floyd Edwin Ivey
Answered
  • Patents Lawyer
  • Kennewick, WA

A: It is likely that the University owns the Patents with the professor able to license from the University. You can probably find the Universities rights by contact with a University Administrator or Officer. Your rights as an inventor are probably owned by the University by your IP agreement or by the terms and conditions of the University.

Contact a Patent attorney.

Marcos Garciaacosta and Timothy John Billick agree with this answer

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: This is not a patent law question per se. This is more of a contract/employment law issue. Thus, you need to consult with an attorney from the state where you were a student. Frequently, Ph.D students sign agreements as they are being paid to teach or to work in the labs. These agreements will be relevant to this issue as they may state that anything you invent belongs to the university. I assume that you signed an assignment of your rights over to the university at some stage in the process.

Any good attorney will want to see copies of all relevant documents that you signed plus the university policies on how inventions/royalties are handled. This differs greatly from school to school.

NOTE -- you need to put this in context. If you were not in school but were employed with a leading research firm, it is quite possible that when you invented something of value that you would assign the rights to your employer (who was paying you to invent things) and you would get nothing beyond a round of applause at an annual meeting to recognize inventors.

To the extent that all rights flowed to the university and this professor took a risk by purchasing those rights, it would not be unreasonable for that professor to reap the rewards of that risk.

I am not offering a final opinion on your status. I am just trying to point out the landscape and advise you to gather up the relevant documents and pay for time for an attorney to review them and advise you.

I hope that this helps.

Kevin E Flynn, FLYNN IP LAW

Marcos Garciaacosta and Timothy John Billick agree with this answer

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