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(Message started by: collegestudent on Jun 15th, 2005, 1:10am)

Title: IP question
Post by collegestudent on Jun 15th, 2005, 1:10am
I'm an undergraduate student at a University and I am being sponsored this summer to do biotech research by this company.  The company is paying for the materials and my salary, and the university is providing the facilities.  The company just gave me an IP form that said they wanted all the rights to my work.......I know that once its completed they will try to patent an application or simply sell the thesis itself to a much bigger company.  I was thinking of writing up my own IP form instead of signing theirs.  What kind of percentage should I ask for?  

Title: Re: IP question
Post by collegestudent on Jun 15th, 2005, 1:14am
Keep in mind that I approached this company with the idea which was my original idea and I am creating the protocol and pretty much running the experiment on my own.....

Title: Re: IP question
Post by Wiscagent on Jun 15th, 2005, 5:34am
Since you are concerned about the contract, hire an attorney to review it in light of your concerns; if you then feel it is okay to sign, go ahead ... sign the contract and take the job.

The alternative is to not sign the contract and look for another job.  It is highly unlikely that the company would consider revising one of its standard contracts for a student - employee.

Title: Re: IP question
Post by JimIvey on Jun 15th, 2005, 9:56am
Richard gave good advice.  I'll just tease out a little more detail on your negotiation....

on 06/15/05 at 01:10:58, collegestudent wrote:
What kind of percentage should I ask for?

The strength in any bargaining position is in the attractiveness of the alternatives.  

What are your alternatives?  (rhetorical question)  What percentages are other companies offering you?  How important is this job to you?  Would your resume look as impressive with another job or no job at all this summer?

What are the company's alternatives?  (still more rhetorical questions)  What other candidates are there for your summer job?  Are they almost as impressive and/or desireable as you?  What percentages would the company have to give to attract those other students?  Or does the long term survivability of the company rest on attracting you to work there for the summer?

Now, let's look at what's at stake:  any invention that you conceive and reduce to practice in the summer.  Remember, patent inventorship is not doled out like authorship on a research paper; you actually have to invent the thing claimed in the patent application, and the thing has to be non-obvious.

I'm in no position to make any determination about the impact and/or value of whatever inventive contributions you might make in the span of a single summer, but something is telling me that it's not likely to have a significant commercial value (not based on anything about you personally but on the perception that most biotech breakthroughs don't come from summer interns passing through a research company a few months at a time).

I will make this suggestion, however.  If you believe that valuable ideas are currently in your head and that they might be the seeds of valuable IP, get that squared away before you start your summer job.  "Squared away" can be as simple as documenting your ideas as separate and your own before you start (hopefully, your contract excludes ideas you had before you start work there) or as complex and involved as filing your own patent applications on your ideas before starting work there.  

Lastly, a point implicit in Richard's post is worth reiterating.  What are the odds that you're speaking with someone with authority to modify the contract (i.e., with the authority to speak on behalf of the company and bind them in a contract)?  That's usually an officer of the company and/or an attorney for the company.  If you're not speaking with someone at that level, your contract is most likely a take-it-or-leave-it proposition.


Title: Re: IP question
Post by collegestudent on Jun 15th, 2005, 5:25pm
this is a small company that sponsors senior thesis projects, but they are paying me much more than they've ever given anyone before, we know that the experiment will work, and since the substances used are more naturally occurring, it deals more with applications since naturally occuring substances can't be patented, they have offered us the human pharmaceutical application rights if they can have the agricultural application rights, and we know of several larger agricultural companies they are planning on either selling our thesis to or selling the patent rights to, we have already ordered the materials and have already been partially paid upfront, but we were thinking of giving them 20% of the human pharmaceutical rights if my partner and i can each have 10% of the agricultural rights, do you think that is fair or attainable?

Title: Re: IP question
Post by JimIvey on Jun 15th, 2005, 6:22pm
I doubt anyone here can say whether your proposal is "fair or attainable".  Perhaps I didn't fully appreciate your relation with this company -- sounds like you have your own company and your own ongoing research.  However, the import of my prior comment is still relevant: what's fair and reasonable is somewhere between the least you're willing to accept and the most they're willing to give.

10% of agricultural use and 20% of human use sound like big numbers.  If so, now is not the time to try to skate by with free, off-the-cuff quips and half-baked opinions (no offense to the posters here).  In legal advice, like all things, you get what you pay for -- more or less.  (Again, no offense to the posters here.)  Go get some real legal advice from someone with licensing experience in the boitech realm.

Good luck.

Title: Re: IP question
Post by collegestudent on Jun 15th, 2005, 8:59pm
thanks for the advice, i am meeting with an expert on IP and patenting for biotech at my school as well as with a lawyer, but i was just trying to get a feel for things before i met with her, but thanks for the input, i appreciate it

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