How smart are universities? Not very, if one inventor’s recent experience is anything to go by. No identifiers, for obvious reasons (including me, sued, not wanting to be).
This inventor has a patent application and approached a certain university to help him with one element of the R&D. In common with most universities, they make a big thing of their willingness to help with commercial projects. But two factors suggested that this particular university is only playing at it.
First, they gave the inventor a standard contract that contained a clause stating that all new IP generated by the project belonged lock, stock and barrel to the university. No exceptions. The inventor questioned this, as it opened up a pretty large grey area. The project would be a collaboration, so it might in practice be difficult to identify the source of any improvements. So how about opening up the possibility of sharing any new IP? Make it a matter of negotiation rather than diktat. But no. The university would have none of it. That was the contract, take it or leave it.
Second, the inventor wanted the university to sign an NDA. Again, no dice – and the reason given was, for a supposedly commercially-oriented university, extraordinary. They told the inventor that because he had a patent application, an NDA would be useless.
This is complete rubbish. A patent application protects only what is in the application. An NDA protects a much wider range of potentially sensitive information that might be disclosed during meetings or negotiations. For example costs, test results, the identity of business partners, or even project timescales. An NDA is certainly at least and quite possibly a lot more important than a patent application.
The university representative should have known this. Not to know is a major failing of responsibility to the client. I’d go further and say that it’s a sign of a university that simply doesn’t understand business and is still stuck in ivory tower mode.
My advice to the inventor was simple: they haven’t got anything that belongs to you and you owe them nothing, so walk away. Don’t waste any more time on them. Find another university with a more realistic and flexible attitude to commercial involvement. Some are very good indeed. After all, there are plenty of universities around and at a time of cuts, they should be keener than ever to drum up external business.
The sad thing is that this is by no means the first time I’ve been told of an inventor getting, or being offered, a win-lose rather than win-win deal by a university. It’s a theme I may return to fairly soon.