Re: Intellectual Property Issues Richard Tomlin 31 Oct 1999 19:36 EST

Angeline Farmer wrote:

> "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."

There is no 'just add water' solution as far as I know - you have to do
your homework to understand the true value of the invention from the
point of view of the company, the role of your own people in the work,
and then make sure you get a fair return in your subsequent

A comment however : ownership is not the only, or even the most
important, issue.  In many jurisdictions (inc UK) joint ownership is a
real pain and should be avoided like the plague.  Which of you should
own is then a pragmatic issue based on who can make the effective job.
The other critical issues to be resolved in any consequent assignment
are (a) the flow of royalties and other rewards including performance
clauses; and (b) your rights to continue to use the results in further
research possibly with 3rd parties as partners.

Good luck


Richard Tomlin                       |    Centre for Higher
 |    Education Research,
tel: (+44)(0)191 222 6820            |    Joseph Cowen House,
fax: (+44)(0)191 222 8170            |    University of Newcastle,
e-mail:     |    Newcastle NE1 7RU, UK.

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