Reply to: University trying to claim my IP

[DotasScandal]

In a discussion today the supervisor stated the reason why he believes they are entitled to the IP is that I would not of found it if I hadn't been involved with the project...

...and the supervisor seems like a Championship-level BS'er. If you aunt had a pair of bollocks, she would have been your uncle. It's a nonsense argument and would probably be treated as such by a tribunal.

he also stated that my future on the project will be in doubt if this can't be resolved (what a surprise).

...and that one is just plain good old intimidation.

Some good advice was given on this thread. In a nuthsell: stand your ground!
There is a good chance that if they see that you are not willing to bend over easily, they'll change their tactics (probably to another form of BS, so stay on your guard...).

It's very very common for students / young professionals to get screwed over with the other party playing on nothing else that fear and ignorance of how things work.
From what you wrote, their is no way on earth you can qualifty as employee.

Tread carefully, but stay firm and get professional advice if you can. When they see you are being advised and not buying their BS, I am sure your seniors will become more reasonable.

[eek]

Person B is essentially just another low level academic (a post-doc) with no formal understanding of IP/ tech transfer/ HR. He's a career builder who is known for puppeteering those with strings to pull.

Just to stress at no point has any contract/ paperwork ever been signed or exchanged by either myself and these guys or the university.

I have money waiting to go to have a patent formally reviewed/ filed but I do not have money to fight an employment tribunal as well.

In a discussion today the supervisor stated the reason why he believes they are entitled to the IP is that I would not of found it if I hadn't been involved with the project... he also stated that my future on the project will be in doubt if this can't be resolved (what a surprise).

You don't need to. The only things you need to do:-

1) Set in progress the patent application... As a minimum get everything put it in a sealed envelope and post it special delivery to someone who won't open it....
2) Bypass the clowns and find out who is in charge of the universities tech transfer department and speak to them directly.... You need someone on your side when it comes to commercialising the invention and it may as well be the university. However you want them beholden to you rather than the clowns in that department.

Yes there will be complaints but if its really worth any money that department will protect you from the clowns....

Oh and what jamesbrown says...

[jamesbrown]

Every university will have a detailed policy on IPR, including w/r to post-grad students; this is bread-and-butter for universities. This information should be available online and you should read it carefully. Collaborative work will involve a sharing of IPR and this is where you're likely to come unstuck, if at all. The question over what constitutes collaborative work, i.e. the extent to which other academics have contributed to your solution, may be argued. However, in my experience, where there is a potential question over shared IPR, it is standard practice to resolve this at the outset of a project, so these arguments do not arise later on. If this hasn't been done properly, you're likely to be in a strong position. Really, you need to elevate this beyond your immediate supervisor. You should have a Director of Postgraduate Research or a Director of the Graduate School (for example). It isn't good practice for a supervisor to be strong-arming a PhD student, and it sounds as though you're not being dealt with entirely honestly.

[Fishface]

if it is 'written' IP 'of your hand' then you own copyright.

unless you assigned copyright to them

or you signed a contract that said 'work made of hire'

it's probably a 50+ year old paralegal trying to show they still are some value and the menopause didn't addle his/her brain.

tell'em to get knotted.

[SueEllen]

Person B is essentially just another low level academic (a post-doc) with no formal understanding of IP/ tech transfer/ HR. He's a career builder who is known for puppeteering those with strings to pull.

Just to stress at no point has any contract/ paperwork ever been signed or exchanged by either myself and these guys or the university.

I have money waiting to go to have a patent formally reviewed/ filed but I do not have money to fight an employment tribunal as well.

In a discussion today the supervisor stated the reason why he believes they are entitled to the IP is that I would not of found it if I hadn't been involved with the project... he also stated that my future on the project will be in doubt if this can't be resolved (what a surprise).

Be aware in England and Wales you can have an implied contracts and verbal contracts.

Legally an employer is suppose to give you a bit of paper with your main t&cs on them within a few weeks of you joining. However other bits of paperwork including emails that you get through the course of working for them can be argued to be part of your contract even if you don't sign anything. (Employers tend to make you sign things to protect them but not all do.)

There are also things that can be implied that aren't written down - which is dangerous for both parties.

If you aren't an employee they can state things verbally and this can form a contract. Again neither of you has to sign anything.

This is why any emails and bits of paper you have will help you.

[tractor]

...

Person B is essentially just another low level academic (a post-doc) with no formal understanding of IP/ tech transfer/ HR. He's a career builder who is known for puppeteering those with strings to pull.

Just to stress at no point has any contract/ paperwork ever been signed or exchanged by either myself and these guys or the university.

I have money waiting to go to have a patent formally reviewed/ filed but I do not have money to fight an employment tribunal as well.

In a discussion today the supervisor stated the reason why he believes they are entitled to the IP is that I would not of found it if I hadn't been involved with the project... he also stated that my future on the project will be in doubt if this can't be resolved (what a surprise).

Play hardball, tell them their future use of the solution may well be in doubt if they don't play ball.

You really do need to gen up on your position and your understanding of law. Employers do NOT take employees to employment tribunals.

1. Overview

You can make a claim to an employment tribunal if you think someone has treated you unlawfully, eg your employer, a potential employer or a trade union....

Unlawful treatment can include:
##unfair dismissal
##discrimination
##unfair deductions from your pay

Therefore, you do not need any money to fight any tribunal. There may be other actions that you may have to fight though. Which is why specialist legal advice is errrm advisable. The problem with this type of legal issue is that there are many IP lawyers who will persuade you that you have a good case. There will be an equal number who will persuade your Uni that they have a better case. Usually, all the lawyers win.

It is also why in consultancy/contractor/business relationships, a properly reviewed contract is always advisable. Experience can be expensive.

[ipfiasco]

OP put a lot of stuff in that first post but omitted some of the most important things. Who is Person B and what has it got to do with them? Do they have any more knowledge of IP (and employment) law than you do? Ask person B for a copy of your employment contract. The fact that they might come up short there should give them a clue

Sounds to me if you do transfer the tech, you have a good case to demand a share of any profit; how much you think it is worth is entirely up to you to negotiate.

Of course your supervisor would be happy for you to patent your solution via his spin off, I wonder why?

If you are going to do it, do it yourself providing it is financially achievable. I'm with Cojak on this one.

Person B is essentially just another low level academic (a post-doc) with no formal understanding of IP/ tech transfer/ HR. He's a career builder who is known for puppeteering those with strings to pull.

Just to stress at no point has any contract/ paperwork ever been signed or exchanged by either myself and these guys or the university.

I have money waiting to go to have a patent formally reviewed/ filed but I do not have money to fight an employment tribunal as well.

In a discussion today the supervisor stated the reason why he believes they are entitled to the IP is that I would not of found it if I hadn't been involved with the project... he also stated that my future on the project will be in doubt if this can't be resolved (what a surprise).

[DotasScandal]

OP is a student...

OP also wrote that "[he has] the money waiting to pay for the patent to be filed" (and I reckon he should proceed!)

[tractor]

.......

OP put a lot of stuff in that first post but omitted some of the most important things. Who is Person B and what has it got to do with them? Do they have any more knowledge of IP (and employment) law than you do? Ask person B for a copy of your employment contract. The fact that they might come up short there should give them a clue

Sounds to me if you do transfer the tech, you have a good case to demand a share of any profit; how much you think it is worth is entirely up to you to negotiate.

Of course your supervisor would be happy for you to patent your solution via his spin off, I wonder why?

If you are going to do it, do it yourself providing it is financially achievable. I'm with Cojak on this one.

[Bozwell]

Maybe try to find a new partner not associated with the University in any way to help fund your patent application or if you are able to produce the paperwork yourself the registration fee is £230.

[mudskipper]

If you can't afford a solicitor and to patent your idea properly then you are possibly screwed.

OP is a student...

[SueEllen]

I think you are quite right as well about the professional legal advice 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!

1. Ensure that you have a clear paper trail arguing your case - even if the paper trail is through email
2. Go and see a solicitor to see where you stand and help give you arguments to clarify all the points you have raised.- this will cost you money.
3. Patent the idea yourself in both the UK and Europe. Do not talk to the supervisor or anyone at the university about doing this just go ahead and do this otherwise you will find that your idea is stolen from you especially if person B is not acting honourable now. It costs between £2,000 - £6,000 to submit proper paperwork in the UK.

If you can afford 2 and 3 plus have a paper trail to show that the university is trying to steal your idea then you will be fine.

If you can't afford a solicitor and to patent your idea properly then you are possibly screwed.

[ipfiasco]

I think you stand in need of professional legal advice

Sorry, but I think your situation is too complicated for responses in a forum to be anything but misleading. A solicitor will be able to unravel the dependencies between your employment status and your IP status much better than anyone here and will also be in a position to ask the relevant questions as required which will be harder for anyone here.

I guess from what you have posted that you are considering formal legal advice and I would suggest that is the best option for you now. If you just wanted to hear all sides of the argument prior to taking legal advice then you have probably come to the right place

Personally I think it is too arcane for a forum to shed much light on, but obviously you should not just lie down and accept employee status without a fight if it means losing your patent rights without compensation.

For the very little that my opinion is worth, from your post I would say that your arrangement with the University lacks the mutuality of obligation to be an employment relationship.

Boo

I think you are quite right as well about the professional legal advice 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!

[Boo]

...Where do you all think I stand?...
I must be clear that I am not in anyway asking for professional legal advice....

I think you stand in need of professional legal advice

Sorry, but I think your situation is too complicated for responses in a forum to be anything but misleading. A solicitor will be able to unravel the dependencies between your employment status and your IP status much better than anyone here and will also be in a position to ask the relevant questions as required which will be harder for anyone here.

I guess from what you have posted that you are considering formal legal advice and I would suggest that is the best option for you now. If you just wanted to hear all sides of the argument prior to taking legal advice then you have probably come to the right place

Personally I think it is too arcane for a forum to shed much light on, but obviously you should not just lie down and accept employee status without a fight if it means losing your patent rights without compensation.

For the very little that my opinion is worth, from your post I would say that your arrangement with the University lacks the mutuality of obligation to be an employment relationship.

Boo

[mudskipper]

Found this, which might help (different university, obviously)

http://www.ulster.ac.uk/finance/sala...egulations.pdf

"The subsidiary payroll is processed monthly by the Salaries and Wages Department
and is used to process payments to individuals, who are not employees of the
University, but have provided a service by way of a short term engagement, for
which they are entitled to be paid a fee or wage.
"

That sounds like your arrangement.