(Previous discussion continued)
Re: Intellectual Property Issues Herbert B. Chermside 27 Oct 1999 07:00 EST

Re: Intellectual Property Issues Herbert B. Chermside 27 Oct 1999 07:00 EST

I have used two approaches to the relative contributions to intellectual
property.

In research agreements between the university and external organizations
(usually commercial/industial) --  this, you realize is before any IP is
created -- we define by contract the proportion.  Usually it is equal
shares.  This is because patent law in the US (and, I think, in most
nations) considers an invention an indivisable whole.  This is realistic:
consider a team in which one person has a briliant flash of conceptual
inspiration and the other spends months in the lab reducing it to practice.
 Neither did it alone, and neither part can stand on its own legs.  Beyond
that, my usual agreement with a commercial sponsor will give them a
preferential position in acquiring our share of the rights, in practice, at
a royalty about 50% of a "market price" royalty  for the invention.  We can
agree to other arrangements, but only with persuasive reasons.

Thew other problem is relative inventiveness between/among our own
inventors.  I drafted our policy to assume equality of shares of
inventorship (for the reasons above) unless the inventors state a different
relative inventorship at the time the disclosure is made.  Only the
inventors themselves may set other than eaual shares, and they should do it
before they see $$$.

This applies to copyrights, too.  However,  sometimes copyrighted things
come from a committee, and when I handled Tech Transfer (we grew it to the
point that it supports its own staff, now!) I usually persuaded a group to
assign any "creators share" of royalties to some unit within the
organizatin that they all felt "deserved" some support.
Authorship/creatorship is usually easier to identify than inventorship,
but, as you know, a camel is ahorse designed by a committee!

There are other approaches.  So far, the only dispute we have had using
these involved two individuals whose real reason for disagreement was
personal hostility actually unrelated to their IP; IP was just the
battleground!

Good Luck!!

Chuck

At 02:07 PM 10/27/99 +1000, you wrote:
>Dear all,
>
>Greetings from Australia! This is my first incursion into the list but we
>in Australia have found it absolutely
> fascinating to find that the problems you encounter are very similar to
>ours.  Boy do I have a live one for
>you!   Would appreciate any answers or any advice that you guys can offer.
>An answer to me directly or
>to the list would be greatly appreciated.
>
>"We are having difficulty (along with most of the  rest of the world, I
>suspect) in assessing contributions to the development of intellectual
>property - I hope that someone out there has solved this problem, or at
>least can suggest some different ways of approaching it. If one of our
>researchers is undertaking research with individuals from  another
>organisation (company, institution etc.), and, say, an invention is made,
>how should the ownership of the invention be distributed? According to the
>contract, of course, but what should the contract say. If only the time and
>dollars invested by the organisations involved are taken into account, some
>quite unjust outcomes result, particularly with young or new researchers.
>On the other hand, how is it possible to assess what intellectual input has
>gone into an invention? Any ideas and/or discussion of this point would be
>welcome."
>
>
>Any suggestions?
>
>
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Herbert B. Chermside, CRA
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