Years ago I had an enquiry from a former academic at a university. It was a simple matter and the client paid for the advice. The client then instructed me to advise on a separate matter. I found it was not possible to satisfy the client the second time around.
The background is the client had worked as an employed academic for some time at the university researching a technology.
The client had left academia to join a start-up company commercialising the technology first developed at the university.
The client instructed me to advise on claiming a share of commercialisation revenues which the start-up company had paid the university.
Ordinarily this revenue was to be shared with academics and students who worked on the technology at the university.
I asked for documentation. The client had little.
The client wanted to rely on the university’s written intellectual property policy (which in part applied to academics and students). In recent decades many universities in Australia have introduced IP policies to cover work by their commercialisation companies, spin-offs, academics and/or students. Some of those policies are poorly written and contain motherhood statements in critical areas.
My client had no clear employment contract terms and conditions at the university. Nor did my client have a set of lab notes.
Given these documentation issues and the risks of litigation, especially the costs of failure, I advised it was questionable to rely on the university’s IP policy alone. Further, it was unclear which version of the IP policy applied to the client. The client did not have the stomach or pocket for litigation.
After doing all the assessment work and advising in detail I got no thanks for saving the client money by advising that no claim should be made.
So how did I come to my conclusions about there being no case worth fighting in the circumstances. Leaving aside the client-specific facts, I did it by posing a list of structured questions relating to invention ownership and entitlement claims. The insufficiency in the client’s response to the questions below told me all I needed to know to settle my advice on the feasibility of making revenue share claims against the university.
- What precisely is the Invention? Where is information about the Invention recorded?
- Are you the sole creator of the Invention? Have any others assisted in creating the Invention, documenting it or otherwise doing things that give them any legal rights? Where are the records relevant to such activity?
- Is the Invention unique or inventive, or is it something that is available or developed elsewhere? How can you evidence you have intellectual property in the legal sense?
- Are there any patents, trade marks or other registered rights in the Invention? If so, who has applied for or owns these?
- In what ways does your employment contract with the university regulate ownership, control and disputes regarding intellectual property?
- Which intellectual property policies (ie version, date etc) of the university relate to you as an employee at the time and to the student inventors (if any)? What section of the the policies are relevant? Was there more than one IP policy in operation during and after your term of employment? If so, does that make any difference?
- What documentation and other evidence do you have to demonstrate you are the owner of any patentable subject matter, copyright materials, or claims to confidential information in the Invention?
- Other than the university, its present or former students, are there any other stakeholders involved with respect to the Invention, and what rights and obligations does each have in the Invention?
- What do you say is the value of the Invention? How do you derive that valuation?
- How much (if any) damage have you suffered because of any infringement? How can you illustrate or evidence actual damage?
- Given the foregoing, what options are available to you as regards legal remedies?
My client was fixated on the academic-university relationship and how that played in the university’s IP policy.
The client was blind to the complex associated web of legal relationships which exist in a university technology commercialisation project. Those relationships are usually tested in court case documentation… long before anyone gets paid anything.
- Relationship between the external commercialisation start-up company and the university as a body corporate
- Relationship between the external commercialisation start-up company down the chain of relationships below
- Relationship between the university and its internal commercialisation arm (often these arms operate as a company separate from the university)
- Relationship between that commercialisation arm, the university, and the university’s faculty or department conducting the research work
- Relationship between that faculty and its academics
- Relationship between those academics
- Relationship between those academics as supervisors for student researchers
- Relationship between the student researchers
Faced with this untangled web of relationships, imagine the litigation chances for an under-resourced academic seeking to claim on the basis of insufficient and poorly written documentation! Asking a lawyer to conduct business litigation with poor documentation is like asking a tradesperson to do work with no box of tools.
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