Make sure you’re protected before diving into academic collaboration

Today, many universities operate business incubators, and some are seeing significant success. Since 2006, for example, the University of California’s QB3 bioscience incubator program has helped launch 65 companies that have raised more than $230 million in capital.

Tapping into university resources can be a big boost to entrepreneurs, but it’s critical to be aware of potentially complex IP issues. For example, standard agreements often say that the university will own IP worked on by its people, developed on university grounds, or funded by the university. “In that case, even with work done offsite, if a university professor is involved, the university may have ownership rights,” says Morrison & Foerster partner Gladys Monroy, who provides patent counseling to startups and other companies.

As a company is launched and licenses technology from the university, later improvements that it makes to that technology might be difficult to patent because the company does not own the original technology. Or, if an invention is co-owned by the company and the university, the university could license it to others—including a competing firm—without the original company’s approval, unless a written agreement says otherwise.

There are ways around such issues: entrepreneurs and universities can spell out how follow-on ownership rights will be handled once the company is launched, or create legal research partnerships that give IP ownership to the company outright. But these issues need to be addressed up front. “Scientists tend to want to just get in there and work together,” says Monroy. “Before you begin to collaborate, make sure you have your IP agreements in place.”