Intellectual Property: Commercializing in a University Setting

In Academic Entrepreneurship for Medical and Health Scientists (Nalaka Gooneratne, Rachel McGarrigle & Flaura Winston eds., 2019).

U of Penn Law School, Public Law Research Paper No. 20-22

9 Pages Posted: 22 Jul 2020

See all articles by Cynthia Dahl

Cynthia Dahl

University of Pennsylvania Carey Law School

Date Written: 2019

Abstract

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 licens¬ing 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.

Keywords: 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

Suggested Citation

Dahl, Cynthia, Intellectual Property: Commercializing in a University Setting (2019). In Academic Entrepreneurship for Medical and Health Scientists (Nalaka Gooneratne, Rachel McGarrigle & Flaura Winston eds., 2019)., U of Penn Law School, Public Law Research Paper No. 20-22, Available at SSRN: https://ssrn.com/abstract=3657206

Cynthia Dahl (Contact Author)

University of Pennsylvania Carey Law School ( email )

3501 Sansom Street
Philadelphia, PA 19104
United States

HOME PAGE: http://https://www.law.upenn.edu/cf/faculty/dahl/

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