This article concerns itself with ownership of inventions made in the course of industrial research and development (R&D) at a university. The perspective is from the point of view of a "postdoc" researcher. Additional characters include the professor and industry. The way it usually works is the professor at the university contracts with industry to do R&D and invites the postdoc researcher to participate. The R&D results in an important invention.

Surprisingly, the answer to the question of who owns the invention may be unclear. From a legal point of view, the determination of ownership requires an analysis of the industry/university/professor/researcher fact matrix.

What is most surprising is that the postdoc researcher may, in fact, have an ownership claim but is unaware of it. Incorrect assumptions may have been made by industry/university/professor and so they may have concluded that the postdoc can be left out of the ownership equation. But the real problem may relate to the fact that the postdoc's ownership claim may have been "improperly" extinguished. And, the postdoc may be unaware that he has transferred the invention, and possibly his life's work, in return for the opportunity of participating in the R&D project.

Invention can only occur through the agency of a human being. In each and every case, an invention presupposes the existence of an inventor. What is not so obvious is that the inventor who makes an invention may not necessarily be the owner of the invention. If that is the case, the inventor will be unable to either commercially exploit the invention or derive any additional financial reward from making an important invention.

This is not necessarily a bad thing. In the case of a corporation, it is clear that it must be the owner of any inventions made by any of its employees in the course of their employment. Indeed, this is essential to the corporation's overall operations and everyone accepts that this feature is an incidental aspect of the employer-employee relationship. The way a corporation accomplishes this result at law may arise in one of two ways.

  • First, the result may be achieved by a written contract with the employee. In effect this means that each and every employee, as a term of his or her employment, agrees in writing with the employer that all of the inventions made by the employee will belong to the employer. Thus, prior to the commencement of the employer-employee relationship, the parties have reached agreement with respect to ownership.

  • Secondly, the result may be obtained by operation of law. This means that the law of the land (the common law) provides that any invention made by an employee in the ordinary course of the employee's employment belongs to the employer. The origins of this legal principle arise from master/servant law.

  • And so, there is nothing controversial about an employee making inventions and not owning them ... and having very little to say about what happens to the invention after it is made. In the scheme of things, that's what employees do, and their salary is considered to be just reward for their ingenuity. Moreover, if one disagrees with this state of affairs one may decline to participate. There is freedom of choice for employees ... or at least an ability to make an informed decision. Regardless of what view one takes of this state of affairs, a certain legal result is obtained.

    Certainty of ownership is a key aspect of inventorship exercise. How else could corporations, or indeed anyone else, properly manage their research and development affairs without settling the ownership question. Any lack of certainty with respect to ownership is not in anyone's interest. Neither industry/university/professor/researcher, nor downstream investors, can possibly benefit from any uncertainty about the ownership of the invention.

    Industry

    The corporate or industry objective and position regarding ownership of inventions remains unchanged. As stated, they require ownership of any inventions arising out of the R&D by reason of having provided funding. It really amounts to a "deal breaker" for them. If they can't own the invention, their enthusiasm for funding R&D is virtually nonexistent. And they are, of course, prepared to pay for ownership.

    The University

    Academic institutions are turning their eye to R&D as a source of income both in terms of funding and royalty income. They seem to take the view that they have an ownership (or royalty) interest in and to any inventions made by professors or researchers. This view inherently also encompasses any inventions made in the course of industrialR&D. They apparently justify their position on the grounds of a university "policy" which says as much.

    The problem with all of this is that neither the professor nor the postdoc researcher can be said to be "employees" of the university for the purpose of losing their ownership rights to any inventions they make. Neither can the "invention policy" be unilaterally imposed on anyone in a legally binding sense without the person's consent. I do not think that it is at all obvious that a law professor who makes a mechanical invention has to account to the university by reason of his being paid by the university to teach law students. And so the legal link between the university and the researcher which would or could determine ownership is not clear.

    Professor

    While the researcher may be viewed as a star, the professor is the superstar who attracts the R&D to the university and his laboratory. We won't comment on the professor's position and will only say that there is apparently tremendous pressure on the professor to renew grants and obtain new R&D contracts and monies to be able to carry on his or her work. As a consequence of this pressure, the professor makes whatever contractual agreements that are necessary with both the university and industry on the question of ownership. Those agreements, however, do not bind the postdoc unless the postdoc expressly agrees to them.

    Researcher

    Typically, the postdoc is invited to do R&D in return for financial compensation. The entire question of who, as between all of the parties, will own any inventions is usually left up in the air at the point of invitation.

    Worse, the postdoc may be given misinformation about the issue of ownership and meaning of contracts. We can also assume the postdoc is unable or unwilling to take legal advice in connection with his participation in the R&D. More importantly, the postdoc may be asked to give up any claim to any invention he makes arising out of the R&D, the undertaking of which may involve the postdoc's entire past and current knowledge base as it may relate to the subject matter of the R&D. In addition, confidentiality clauses may be involved limiting his future involvement in "similar" R&D.

    In conclusion, it can be seen that the answer to the question of who owns the invention depends on a correct analysis of the industry/university/professor/researcher fact matrix. It is my view that this analysis is essential and necessary to ensure that everyone's expectations with respect to ownership are met and explained. Otherwise, it may just not be worth it for postdocs to involve themselves in R&D. Even worse, casual involvement in R&D may turn out to be a complete disaster from a career and legal point of view.