Intellectual Property

[Gavster]

You guys are a bunch of talented cvnts with lots of experience so I was wondering if you had any experience with assigning IP?

It's a very simple ( ) question about a confirmatory agreement that I've been presented with, for a product that my business partner and I developed for a university.

At the top it lists:

1. the licensor (A university) and then 2. my Ltd company (The licensee).

It then goes on to list 3. Lead academic on the project by name and home address 4. Supporting academic by name and home address.

Then it continues onto the body of the agreement.

This list of interested parties at the top seems odd to me, surely it should list ONLY the licensor and licensee (e.g. Uni name and then my Co name), OR it should list those, PLUS all of the names of persons who worked on the development (e.g. the academics, myself and business partner)

I'm trying to work out whether to go back and scrub the academics names from that list, or to add mine. Does that make sense?

Any ideas?

[Jobbo]

You really need to look at what the obligations and rights of those other parties are. There may be a reason why they're party to the contract but it could be that they just get the rights to exploit.

I'm absolutely not an IP specialist. However I have encountered a university contract dealing with IP and they want all the rights, forever, for free - so consider very carefully what rights you're granting them, for how long and what the payment terms are. Universities aren't going to start a business based on your IP; they may be able to sell it on if your agreement gives them the right to, though.

[Gavster]

Thanks Jobbo. I think you're right, they literally want to stamp ownership over every last piece of development. I've discovered this through my work with uni's, because their reason for being and marker of success is not found in £££, it's through the number of papers and amount of IP they have their name on.

It's a complete PITA because it's a relatively small job and certainly not big enought to be spending out legal fees - nor do the potential earnings from it justify it either, it's not a piece of cutting edge tech. We're getting a 10 year licence for a small commission on each sale, which we're happy with, but it sounds like we just need to elbow our names onto the IP as much as possible.

[KiwiDave]

I work closely with copyright and IP here in NZ - primarily in setting rights and licensing agreements to our collections and those we acquire. I'd echo what Simon said in that uni's want everything, always. When it comes to this kinda thing, assume they're either up to something, or so used to a framework where they are reaching than even in a case where they're not trying to grab as much IP as possible, they've forgotten what normal agreements look like.

[Gavster]

Awesome, thanks Dave, really useful feedback