Suggestions from A Patent Lawyer

Posted by Michael Shimokaji | May 01, 2014 | 0 Comments

Questions: Do I need a patent lawyer?

A group college design project I worked on is about to be patented and a start-up business manufacturing this product is being financed by benefactors. My professors and a group of students who fine-tuned our project are trying to get us to give up our share of equity and royalties because it would “be inconvenient” to have to sort out accounting amongst partners who are scattered across the United States. We have never signed any contracts with our University or professors concerning this project. What sort of legal action should we pursue?

Answer: Generally, professors will be contractually obligated to assign inventions to the university. However, students typically have no similar contractual obligation.

I would not recommend any legal action at this point. Instead, I suggest you continue to be persistent about making it known that you have rights as an inventor to the invention. I would also suggest you stay in the loop so that you know when a patent application is filed – with or without your name. If it is filed without your name, then consulting with a patent attorney would be appropriate.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.


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