University trying to claim my IP
Hi all,
I'm a postgrad student in the UK and find myself in difficulty with regards to IP. I've created a patentable piece of new technology. Normally as a student the IP policy is clear- providing I am not working in collaboration with anyone (I'm not) or simply carrying out the orders of a supervisor (I didn't), the student remains the sole owner of the IP providing they haven't signed an IP waiver (I haven't).
This should be clear cut however it gets complicated. So, in my spare-time I have been doing work for some other researchers in the department. I was brought on board to work on various aspects of a large project for £10 an hour. The arrangement has been I would act as an engineering consultant on various problems and simply hand over an excel spreadsheet with the hours I worked on, I then received payment for said hours (via internal university payroll- BACS, so I have received two payslips). I have never signed any form of employment contract, NDA or any form of paperwork at any point of entering this agreement. I work as and when I like and have taken full control of the work I do. I have refused work recently due to other commitments and they have no commitment to provide me work. I have done this work with no input from the person who asked me to complete the work. I have also in addition for the majority of the time paid for supplies with my own money and received my costs back cash in hand (there have been two occasions where they purchased minor consumable ~£50 for me to use). To do the work, I used labs which I have access to as a student within the department. The patentable idea stems from being asked to solve problem x. I solved it with solution Y, which was never at any point suggested by my supervisors or employees of the university. Now they are asking me to tell them how to create solution Y so it can be patented. Only I know how to achieve solution Y (and have removed all samples/ notebooks showing how to achieve solution Y).
So, whilst working on a problem they wanted me to solve, I came up with solution Y. It turns out solution Y is (likely) patentable. Initially in discussions, my supervisor was very happy for me to be the sole inventor and suggested we patent under his spin out company with them paying all fees and negotiate some revenue. This was a reasonable solution. However, person B has decided to get involved with the situation and has now convinced my supervisor that I am an employee and therefore have no right to revenue. If this is the case, we will have to go through universities tech transfer department. I have the money waiting to pay for the patent to be filed but do not want to have to battle at an employment tribunal for doing so.
Where do you all think I stand? The reasons so far I think I am a consultant are:
- No form of employment contract ever signed of talked about
- I have complete control over when I work
- They have no commitment to provide me with hours
- I have the right (and have exercised the right) to refuse work when it has been asked of me and suggested employee C do the work (different to my solution Y) instead
- In the past in conversation, my supervisor has referred to me as an engineering consultant (nothing written though)
- I have paid for supplies in the past myself and received payment back
- I have only received payments after submitting a list of hours worked. This has usually taken a number of months to come through. Some weeks I've worked 1/2 hours, some weeks I have worked 30 hours.
The reasons I'm worried I may of fallen into some form of default employment:
- I have been paid via BACS and internal payroll
- I have a desk within the department (it could be argued I have access to this as a student)
- The couple of occasions I have used consumables purchased for me to use
- I have used labs within the department (though I do have access to these facilities/ equipment as a student)
I must be clear that I am not in anyway asking for professional legal advice (and will not think of any responses to be as such), but what do you all think? Does my situation sound like I am a consultant as I always thought or have a fallen into an employment contract and therefore will have to go through the universities tech transfer.
Thank you for nay help or useful info you can provide!
I'm a postgrad student in the UK and find myself in difficulty with regards to IP. I've created a patentable piece of new technology. Normally as a student the IP policy is clear- providing I am not working in collaboration with anyone (I'm not) or simply carrying out the orders of a supervisor (I didn't), the student remains the sole owner of the IP providing they haven't signed an IP waiver (I haven't).
This should be clear cut however it gets complicated. So, in my spare-time I have been doing work for some other researchers in the department. I was brought on board to work on various aspects of a large project for £10 an hour. The arrangement has been I would act as an engineering consultant on various problems and simply hand over an excel spreadsheet with the hours I worked on, I then received payment for said hours (via internal university payroll- BACS, so I have received two payslips). I have never signed any form of employment contract, NDA or any form of paperwork at any point of entering this agreement. I work as and when I like and have taken full control of the work I do. I have refused work recently due to other commitments and they have no commitment to provide me work. I have done this work with no input from the person who asked me to complete the work. I have also in addition for the majority of the time paid for supplies with my own money and received my costs back cash in hand (there have been two occasions where they purchased minor consumable ~£50 for me to use). To do the work, I used labs which I have access to as a student within the department. The patentable idea stems from being asked to solve problem x. I solved it with solution Y, which was never at any point suggested by my supervisors or employees of the university. Now they are asking me to tell them how to create solution Y so it can be patented. Only I know how to achieve solution Y (and have removed all samples/ notebooks showing how to achieve solution Y).
So, whilst working on a problem they wanted me to solve, I came up with solution Y. It turns out solution Y is (likely) patentable. Initially in discussions, my supervisor was very happy for me to be the sole inventor and suggested we patent under his spin out company with them paying all fees and negotiate some revenue. This was a reasonable solution. However, person B has decided to get involved with the situation and has now convinced my supervisor that I am an employee and therefore have no right to revenue. If this is the case, we will have to go through universities tech transfer department. I have the money waiting to pay for the patent to be filed but do not want to have to battle at an employment tribunal for doing so.
Where do you all think I stand? The reasons so far I think I am a consultant are:
- No form of employment contract ever signed of talked about
- I have complete control over when I work
- They have no commitment to provide me with hours
- I have the right (and have exercised the right) to refuse work when it has been asked of me and suggested employee C do the work (different to my solution Y) instead
- In the past in conversation, my supervisor has referred to me as an engineering consultant (nothing written though)
- I have paid for supplies in the past myself and received payment back
- I have only received payments after submitting a list of hours worked. This has usually taken a number of months to come through. Some weeks I've worked 1/2 hours, some weeks I have worked 30 hours.
The reasons I'm worried I may of fallen into some form of default employment:
- I have been paid via BACS and internal payroll
- I have a desk within the department (it could be argued I have access to this as a student)
- The couple of occasions I have used consumables purchased for me to use
- I have used labs within the department (though I do have access to these facilities/ equipment as a student)
I must be clear that I am not in anyway asking for professional legal advice (and will not think of any responses to be as such), but what do you all think? Does my situation sound like I am a consultant as I always thought or have a fallen into an employment contract and therefore will have to go through the universities tech transfer.
Thank you for nay help or useful info you can provide!
as it stands I am just trying to get some opinions from people with no involvement. I always think in these scenario's it's helpful as well to simply write down exactly what is going on! Thanks to everyone else for the input so far!
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