Contents
- What is the purpose of this FAQ?
- What is not the purpose of this FAQ?
- Who is this FAQ for?
- What does it mean to commercialize research?
- Why do people commercialize their research?
- What is the Office of Technology Licensing?
- What is the Conflict of Interest Oversight Committee?
- Who owns the work that I do?
- Who controls the work that I do?
- Who negotiates the commercialization of my work?
- Can I both publish and commercialize my work?
- How do I evaluate an intellectual property (IP) agreement presented to me?
- How do I evaluate a non-disclosure agreement (NDA) presented to me?
- How do I evaluate a contract presented to me?
- I have more questions. What should I do?
FAQs
What is the purpose of this FAQ?
What is not the purpose of this FAQ?
Who is this FAQ for?
What does it mean to commercialize research?
Why do people commercialize their research?
What is the Office of Technology Licensing?
What is the Conflict of Interest Oversight Committee?
Who owns the work that I do?
Who controls the work that I do?
Who negotiates the commercialization of my work?
Can I both publish and commercialize my work?
How do I evaluate an intellectual property (IP) agreement presented to me?
How do I evaluate a non-disclosure agreement (NDA) presented to me?
How do I evaluate a contract presented to me?
I have more questions. What should I do?
The purpose of this FAQ is to inform CSE students, both graduates and undergraduates, about the issues of commercializing their University research work. Commercializing research work is a fast growing practice in academia as a whole, and our department is no exception. A number of faculty and students in the department have already successfully commercialized their research work, and it seems likely that this trend will continue.
Although the University has been involved with commercializing research for years, the process of commercialization is relatively new to the department. As a result, the faculty and students involved have often learned the ropes as they went along. In general this process has been positive, but one lesson that we have learned is that we are often not well educated about the business and legal aspects of commercialization, and the issues that surround them (we are, after all, a science and engineering department). In some cases this lack of awareness has accidentally led to disheartening surprise and disappointment. Since we believe such experiences could often have been avoided had people been properly informed, we decided to write this FAQ to help make current and future CSE students more aware about the issues of commercialization from the perspective of a student.
Before continuing, we suggest that you read the following document written by UW TechTransfer:
UW Intellectual Property Primer
This document describes the various aspects of intellectual property, ownership, control, and technology transfer and research commercialization from the perspective of the University.
The purpose of this FAQ is not to teach you how to commercialize your research, nor to persuade or dissuade you from commercializing your research. Those choices are yours to make on your own according to your goals and priorities as a student in the department.
This FAQ has been written for students in the Computer Science and Engineering department at the University of Washington. The intended audience is all students, not just those involved with commercializing research or considering it, because these issues affect everyone (research commercialization is impacting all of Computer Science academia).
Research can be commercialized in a number of ways. Your research work will likely result in various artifacts, such as source code, executables, documentation, patents, and copyrights, and it is these artifacts that are commercialized in one form or another. In some cases, commercialization might take the form of licensing patents and/or software to an independent company. In other cases, it might take the form of licensing software and patents to a company that is formed by your advisor (and possibly you and other students). And it might take the form of commercializing your experience and time as a consultant to an independent company or startup formed from the department. In all cases, though, it typically involves defining the nature of the research being commercialized (e.g., in a patent or intellectual property agreement), establishing a commercial relationship with another party (e.g., a sale or license), and negotiating a contract (e.g., compensation).
People commercialize their research to make money, to have impact, and because it can be exciting.
The Office of Technology Licensing (OTL) provides a number of services related to intellectual property and commercialization of research. It is well worth your time to read one of their informational documents: UW Intellectual Property Primer. If you become involved in any significant research commercialization effort, then you likely will be working with a representative from OTL on that effort.
Honestly, protecting student interests is the primary mission of the Conflict of Interest Oversight Committee.
In general, the University will assert ownership of your work, and for a number of reasons (it administers the grant that pays your wages, you use equipment and space it owns, etc.). One exception to this is that, if you pay your own tuition as a student, then you own the work that you do. Although the University may own your work, this is not necessarily a bad thing. Because of the resources it offers, the University is often a very valuable partner when commercializing research.
Just because the University owns your work does not mean that you do not have any control over it. (See the Ownership and Control sections of the UW Intellectual Property Primer for more information on ownership versus control.) It is University practice that the Principle Investigator of the research project (most likely your advisor) controls the materials (e.g., software, algorithms, etc.) from a research effort. The University itself typically controls the patents derived from research. And you typically control the copyrights you place on works. For more information on how the University approaches the issue of control over inventions, patents, and copyrights derived from research, see the Perfection of Rights section of the UW Intellectual Property Primer.
That depends. If you are negotiating a consulting agreement, then you will be doing the negotiations. If you are licensing research work to a company, then OTL and the University are likely involved. If so, then the University will be negotiating on your behalf.
Having the University negotiate on your behalf has a number of advantages. The University has negotiated licenses before, and so will be doing it from a position of experience. The University has numerous resources, from technology managers to lawyers, that it can bring to the negotiating table. And the University is a long-standing respectable institution, and therefore represents a much smaller risk than an individual or a group.
However, when the University negotiates on your behalf, you are often removed from the process. This is especially true if the head of your research group (typically your advisor) is the primary contact between the University and your group. Being removed from the all of the annoying details has its advantages -- you don't have to deal with all of the annoying details -- but events can then seem rather abrupt and surprising.
For example, say the University is going to negotiate a contract with a company that wants to license work done by your group. You and your group will have likely established ahead of time an agreement with the University as to general goals of the contract. Based upon this agreement, the University will negotiate a contract with the company, often with close interaction from the head of the research group. After a bit of work, a contract will get hammered out between the University and the company, and the contract will then be presented to the group for feedback. This feedback can have a short deadline, and might seem very abrupt and hasty to you, and might even contain some contractural details that you do not like. If this happens, keep in mind that it probably does not seem abrupt and hasty to the negotiators, and they are not trying to push you into a contract. Just remind the people involved that you will need time to consider the contract.
Also remember that the University will be negotiating on behalf of your interests, which may not necessarily match your interests exactly. Always review the details of all agreements, and consider having them reviewed by a third party, before signing them.
If you try to use your research work for academic purposes as well as commercialization purposes, you are going to find that it is difficult to do both with the same piece of work (and related work). Why? Because there is an inherent conflict in trying to both publish and commercialize the same piece of research. In general, companies are seeking a competitive edge, and this edge often depends upon work (ideas, algorithms, software) being secret, or at least restricted from general dissemination.
An intellectual property (IP) agreement pertains to legal rights regarding intellectual property. You will likely be asked to sign an IP agreement when establishing a commercial relationship with a company, such as when performing consulting work for them and/or licensing research to them. According to the type of relationship, the IP agreement will detail which intellectual property rights you retain and which rights are granted to the company.
For example, when consulting for a company, the IP agreement will often legally restrict you from disclosing company secrets in general, as well as details about the work the work that you perform for them. This restriction typically lasts for the duration of your contract, as well as some years afterwards. This is normal, but be alarmed if the number of years seem unreasonably large (e.g., 1 or 2 years is often reasonable, but 5 is not).
Often IP agreements also restrict you for some number of years from joining another company and working in the same area once the contract expires. This is not an unreasonable restriction (as long as the number of years is reasonable), but can form an interesting problem for students. If you are near graduation and your research is being licensed to a company, you most likely will want to continue working in the same area either as a professor or researcher at another company. Be sure to discuss these issues with whomever you are negotiating with.
The first thing to remember when looking at an IP agreement is that whomever is asking you to sign the agreement has written the agreement with their best interests in mind. They have hired intellectual property lawyers to compose the agreement with the express purpose of protecting and furthering their interests.
The second thing to remember is that these agreements are very much negotiable. Read them before signing them. Flag anything that you do not understand or are not willing to agree to, and negotiate with the other party. Words, sentences, and clauses can be crossed out, changed, or added. These agreements are often negotiated and you are not being unreasonable in asking that an agreement be tailored to your situation.
It is also a good idea to have a third party look at the agreement, such as your advisor and/or the department chair. If the University is representing you in a negotiation, you can also show the agreement to your contact in OTL. And, always remember that you can hire a lawyer yourself to check that the agreement is reasonable for your interests. Definitely consider this as an option.
When looking at an NDA, always keep in mind that you are a student and you do not want your ability to discuss your work to be restricted. Your advisor and the department chair are good people to talk about the contents of NDAs. They have likely signed many in their career, and can tell you if an NDA seems reasonable or not. If you are very concerned about aspects of an NDA, you can always hire a lawyer.
There are a number of resources for evaluating the terms of a contract presented to you. Often the party you are negotiating with requests that you keep the offer confidential. If you think that something is wrong about the offer, ignore them. Keep the offer confidential as you see fit. It is very much in your interest to compare your offer with other offers to make sure you someone is not taking advantage of you.
When consulting, you should talk with other students who have done some form of consulting to find out how they were compensated. You should also consider talking with your advisor and the department chair, both of whom should be able to tell you whether an offer for consulting services is reasonable or not.
When licensing research, it is more difficult to evaluate an offer than with consulting. In these situations there are often a number of parties involved in the process, including you, other students involved with the research, your advisor and other faculty, the University, and the party you are negotiating with. It is a very good idea to get an opinion from a party who does not have a direct interest in the deal, such as the department chair.
Again consider hiring an independent lawyer to review a contract. When you hire a lawyer, they are working for you and have your interests in mind. The price of hiring a lawyer for one or two hours is often worth it, both from a contractual standpoint and an educational one.
There are a number of different groups of people who should be able to help you, or at least point you in the right direction. Talk to other students, especially students who have gone through the process of commercializing research. Talk to your advisor, other faculty who have gone through the commercialization process, and the department chair. For more formal legal and business questions, talk to OTL and, depending on the situation, consider hiring a lawyer.