If an academic entrepreneur wants to commercialize their invention, they must first clarify who owns the invention, and then decide on the best commercialization possibility. This short chapter describes the various scenarios that might occur in a university setting. In most cases, a university will own the invention created by its researchers and faculty because of their employment. A university may then either license out the entrepreneur’s invention to a third-party company to further develop and commercialize, or may license the invention back to the entrepreneur so that they may commercialize it themselves through a start-up. Such license agreements will assign responsibility for paying for patent coverage to protect the invention, set a fee or royalty schedule, and clarify ownership of further improvements or developments. Should the entrepreneur decide to commercialize the invention themselves, besides licensing the invention from the university, they should also be mindful of disclosure issues, contract clearly with founders and other interested parties to clarify issues of equity and intellectual property ownership, and consider whether they need to establish freedom to operate.
Technology transfer, academic ownership, academic entrepreneur, university entrepreneur, inventorship rights, patent license, ownership rights, innovation, university setting, protecting intellectual property, IP basics, ascertaining ownership, university employment, TTO, patents, inventor’s role
Academic Entrepreneurship for Medical and Health Scientists
Dahl, Cynthia L., "Intellectual Property: Commercializing in a University Setting" (2019). Faculty Scholarship at Penn Carey Law. 2191.
Commercial Law Commons, Contracts Commons, Entrepreneurial and Small Business Operations Commons, Higher Education Commons, Intellectual Property Law Commons, Law and Society Commons, Technology and Innovation Commons
In Academic Entrepreneurship for Medical and Health Scientists (Nalaka Gooneratne, Rachel McGarrigle & Flaura Winston eds., 2019).