

Ask HN: Legal rights to University project? - tsestrich

Hi all,<p>I go to a University in Pennsylvania that requires Engineering students to complete a "Senior Design" project during your last term as a student. Generally students will do projects very academic in nature, along the lines of finding more effective RFID methodologies, different algorithm improvements, etc. (things that generally don't interest me greatly). The end purpose of these projects is to be a sort of "capstone" project that incorporates all the things you've learned in school.<p>I've managed to negotiate a special case where I will be able to essentially do an independent study to create my startup idea <i>as</i> my Senior Design, since it is, in essence, a culmination of all the skills that I've learned thus far. I will essentially need nothing from the University in order to complete this project, outside of their mandatory adviser to oversee the independent study.<p>My question is this, for those that may have some experience: Does the University legally retain rights to any work that is generated in this project (essentially, the whole company... if I eventually incorporate)? I've made it clear that this is intended to eventually be run as a business, though I am not yet incorporated. I have signed no papers other than a short form that described the project, and whatever I signed when I committed to coming to the University four years ago.<p>I'm in the process of trying to get to the bottom of the issue by talking to faculty, but I wanted to see what ideas everyone here has first.
======
dctoedt
I'm an IP lawyer, but I'm not YOUR lawyer and so don't take this as legal
advice about your particular situation; if you do consult a lawyer, this might
give you some background info for use as a head start in your discussion.

1\. U.S. patent law says patents belong to the inventor(s), absent either (i)
an agreement to assign the patent rights, or (ii) an implied-in-law duty to
assign, such as arises when an employee is "hired to invent" or "set to
experimenting."

If your university has some sort of written policy about undergraduate- or
graduate work belonging to X, you might well be held to have agreed to it by
applying and/or enrolling, either in the school or in your particular course.
(pg has it exactly right on this point.)

2\. U.S. copyright law says that the copyright in original works of authorship
(which might or might not include elements of your project) are owned by the
author(s) UNLESS (i) there's an agreement to assign the copyright, or (ii) the
author's authoring activities took place within the scope of his employment,
or (iii) the work fits into one of a comparatively few specific categories --
translations, contributions to collective works, and some others -- AND the
parties agreed in writing that the work would be a work made for hire.

3\. U.S. trade-secret law might be a little trickier, because it varies state
by state. The pretty-much-universal rule, though, is that at least some degree
of secrecy is a sine qua non of trade-secret rights.

~~~
tsuraan
Points 1 and 2 are sort of fascinating to me. As far as I'm aware, patents and
copyrights are defined in the constitution as monopolies granted to "Authors
and Inventors". Do you know how it is that the laws, which are supposed to
build on the constitution, have extended ownership of copyrights and patents
to corporate entities? It seems to be directly opposed to what the
constitution allows.

~~~
tptacek
The constitution grants them to inventors, who can assign them to others via
contract. How is that unconstitutional?

~~~
tsuraan
I can see how inventors can grant _rights_ to their patents to other entities.
I don't see how they can grant _ownership_ (whatever that really means) of
their patents to third parties. The constitution allows the government to
grant the monopoly to the inventor, and the inventor can license other
entities to exploit the patent, but it seems like the ownership of the patent
has to stay with the inventor. Perhaps it's just a semantic argument, but it's
one that's been bothering me for a while.

~~~
tptacek
Whatever definition of "ownership" you want to work with, you can come up with
a grant of rights that equates to it, and a reasonable argument that people
should be able to trade those rights for something more valuable to them.

So, in other words, I have no idea what your point is.

~~~
tsuraan
I don't think I've made any point yet; I'm mostly fishing for information from
people who actually do know things, and trying to figure out if what's on my
mind makes any sense. Two possible advantages (for people) of individual
ownership of patents over corporate ownership:

Contracts require consideration. If I own something and sign a contract with
you that allows you exclusive control over it, then I have to be getting
something in return. I'm not a lawyer, but I believe that there's some
restrictions on consideration that can render a contract void if it is
incredibly lopsided. I don't know for sure, but I'm guessing that a contract
exchanging an invention earning billions per year for a five figure salary and
a position that can be terminated on a whim might not be a valid contract. I
really don't know about that though.

The other nice thing about personal ownership of copyrights and patents is
that it makes the whole retroactive copyright extension and post-mortem
copyright assignment transparently illegal. If only the creator of a work gets
the monopoly over its distribution, then the termination of the creator must
entail the termination of the monopoly. I'm very much not a fan of eternal
copyright, so that alone would make me a bit happier.

I think I've probably threadjacked this way too far, so I'll just shut up now.
Maybe I'll start a blog somewhere where you can rip holes in my half-assed
ideas without us bothering anybody else :)

~~~
dctoedt
Only extremely rarely does a billion-dollar invention arise. When an employee
signs an invention-assignment agreement with his/her employer, the employer is
on the hook (usually) for a known salary, benefits, etc., in exchange for
which the inventor is giving up his rights in inventions of unpredictable
number and -significance. That usually gives the employer the bargaining
power.

It's not always that way: I once had a software-company client that paid
commissions to its product architects; the architect of one of the company's
flagship products ended up making a ton of money, as did its shareholders.
Sadly, companies that can do this successfully are few and far between.

------
pg
Most universities have some kind of IP policy. E.g. Harvard says that software
you write using their money or facilities belongs to them:

<http://otd.harvard.edu/resources/policies/IP/>

In practice I've never known IP to be an issue for undergrads. So I wouldn't
annoy your professors by bugging them a lot about this.

You are many, many times more likely to lose because you built something
people don't want than because your college sued you over IP. So if you're
going to worry about something, worry that what you're building won't seem
desirable to customers.

~~~
CyberFonic
Bugging your profs will only show that you couldn't be bothered reading up on
your university's by-laws and regulations. It could result in a down-mark.

It is really good to be confident, but in reality your undergrad work might be
a lot less brilliant than you believe it to be. Some universities will
actually co-venture with you if your work is patentable, etc and although you
end up sharing revenue, they might foot the up-front legal costs (which can be
rather substantial) - again, research what applies in your particular case.

Good Luck with your project and subsequent ventures.

------
patio11
When I turned a university project into an internship with them, we made it
very explicit to everyone concerned exactly when the project started becoming
"something other than class work" and what consequences that had for all
parties involved.

I tend to think that 999 out of 1,000 legal worries people have are
groundless. Want to sleep better at night? Draw up a simple letter of
understanding between you and the University and ask for your professor to
sign it. After doing so, take it to the university counsel or IP office (major
research institutions have one) and ask them to sign off on it. If they do,
congratulations. If they don't, consider your options.

~~~
steveklabnik
This. Especially regarding your tech transfer office. Usually, you've signed
something somewhere that says the university owns everything that you do that
relates to them in some way. So you've gotta get them to either give you a
release on the IP, or an exclusive license.

Thank the Bayh-Dole act.

~~~
mechanical_fish
Hm, I hadn't realized that the tech transfer office was now routinely dealing
with undergraduates. Ouch.

~~~
patio11
They aren't. This is why I recommend not worrying about it. However, if you're
the worrisome sort, "Look, you and I both know you don't really care about
undergraduates. How about you sign this piece of paper? You aren't giving away
anything you care about, and it gets me out of your office quickly!" works
wonders.

~~~
steveklabnik
Actually, most of us are undergraduates, and the project isn't affiliated
directly with the university. However, we do get together and use thier lab
for development, so they can still claim rights, since we used their stuff.

EDIT: Also, apparently I went to his school.

~~~
tsestrich
Any tips then if I wanted to get around this? In my case I won't be using
anything from the University for the project. To be honest, I might do work on
it in the library from time to time or something, but I could even avoid this
if absolutely necessary. I'd literally just be doing coding on my laptop and
using my own hosting.

I'd just like to see the language behind the agreement I signed I guess.

~~~
tsestrich
I found some documentation online about several policies surrounding this:
<http://www.pitt.edu/~offres/policyu.html>

It's not really an easy read, but it seems that, by default, the University
wants in on anything you do in their facilities. They make this condition for
students, though:

"Students are exempt from this policy for cases in which University facilities
are not used and where the invention or discovery is not made in the course of
the students studies at the University."

So since it's sort of "in the course of the student's studies", I might have
to go after the following conditions in the policy:

" If, however, the inventor or another institution believes that the
circumstances surrounding the invention, including such factors as support
provided by other than the University, place where discovery was made, or lack
of relevance to the regular work of the member of the faculty or staff,
warrant another distribution, the inventor or the institution may request the
Office of Technology Management, in consultation with the Technology Transfer
Committee, to review the circumstances. After review, and upon consultation
with the Office of General Counsel and the Senior Vice Chancellors, the Office
of Technology Management will make recommendations to the Chancellor on the
distribution of proceeds.

    
    
          The University, as determined by the Technology Transfer Committee and the Office of Technology Management, may choose to waive all rights to file a patent on a particular invention or to pursue licensing of such invention, electing instead to grant the inventor permission to proceed on his or her own in whatever manner the inventor deemsappropriate."
    

Most of the language seems really targeted towards faculty and staff, however,
so I think I can work around it. I'll try the person you suggested once I hear
back from my department head.

------
tsestrich
For those curious, the response from my department head (who I worked with to
set up the independent study):

" This is a complicated question.

Effectively, the University owns everything (all IP) that we do while we are
here, faculty, staff, and students alike. However, they have very limited
capability to effectively copyright, patent, and market everything that is
created. If you were to go through the process of doing this through the
University, they would return a portion of any income that they acquire. In
return, they cover the legal, patent, and marketing costs to get the product
to market, or to find some company that would want to market it. Given the
number of things that are created in a university, the process of selecting
which items to pursue is long and involved.

My suggestion is that you proceed on your own. If you are hugely successful,
then you would deal with the university at that time. "

So it seems like most people here are right on. If I can't easily get any more
information, I'll probably just go for it. I was just trying to see where I
stand so I don't get myself in a ridiculous situation later where I say "Why
didn't I think of this earlier?".

~~~
midnightmonster
> In return, they cover the legal, patent, and marketing costs to get the
> product to market, or to find some company that would want to market it.
> __Given the number of things that are created in a university, the process
> of selecting which items to pursue is long and involved. __

Translation: the university is where your IP goes to die. The professor in
this article (sorry, couldn't find a complete one
anywhere)<http://www.highbeam.com/doc/1G1-13985948.html> is a family friend,
and his invention (violin bow made for <$10 in parts that beats >$1000 bows in
blind tests) is 100% legit, but last I knew the University of South Florida
was just sitting on it. He was still experimenting and building bows for
himself and friends, but there was nothing he could do to actually get it to
market.

------
pierrefar
Depends on the university as many have noted. Some universities have a
technology transfer office or a commercialization director or something
similar. I'd double check with them BEFORE you do anything for your project.

~~~
tricky
He's right. Find the Technology Transfer office today and tell them what
you're working on. Likely they won't be interested and will be happy to give
you something in writing that says they refuse all rights.

------
jrockway
The University probably gets the copyright to your code.

There are several ways around that. One is to link to a GPL'd project. Now
they own the copyright, but they have to keep the source code available for
others to use for any purpose. Including your business. (If in doubt, you can
always do something like cut-n-paste Emacs' malloc, link in libreadline, etc.)

Another option is to just rewrite the code. Copyright only covers verbatim
redistribution of the literal program text, which is generally not too
valuable. It is very easy to write a program a second time. Ideas and
algorithms are not copyright-able, after all, nor is the experience in
developing software you gained from writing it the first time. Those things
are where the value is, and copyright does not protect them. (Software patents
may, but the University will have to apply for one before that's even an
issue. Then they will have to spend their own money to sue you, and then they
will have to collect damages. Not going to happen unless you become the next
Google, and if you do, you can afford to pay them off.

OTOH, software patents are almost dead. So this might not be worth worrying
about.)

So anyway, to be extra safe, be open source, or just redo anything that you
did with University resources. That is a lot faster than dealing with legal
problems that may arise if you are successful.

(Then again, most startups fail pretty quickly, so perhaps it's not really
worth your time to "care" this time around.)

------
pmjordan
When I enrolled at York, it was required that I sign a contract which laid out
the IP situation. IIRC, this was fairly lenient in my favour, although this
was for an undergraduate degree. I gather that the situation was different for
PhD programmes. You have probably signed something like that too when you
signed up, in among the endless paperwork. Dig it up and read it. Chances are
you're safe as long as you don't use their equipment and facilities.

If there's any remaining doubt I'd probably try to solve the problem in
advance by drafting a plain-English document which declares that the
university has no rights to the works and get the advisor, the departmental
head, and a relevant person who oversees research across the entire university
to sign it. In fact, you probably have a dedicated person who oversees such
matters at the university, so it may be best to take the draft to them
directly and see if they have an equivalent standardised contract that they'll
be more willing to sign than your draft.

------
mechanical_fish
Now that is an interesting question.

This advice may be so ill-informed that I'll put the disclaimer up front: I'm
not a lawyer, let alone an IP lawyer. That said, if the university isn't
paying you, and you don't use any university resources, and you don't assign
them any rights, I don't see how they can assert any rights. Looking over your
work and assigning it a grade doesn't make it theirs. Otherwise they would own
everything.

Now, if you were an assistant professor using university offices and labs and
a certain amount of public funding to conduct work that is nigh-
indistinguishable from the work your side business is doing -- to the extent
that many of your grad students can't tell from moment to moment if they're
doing schoolwork or startup work -- that would be a more interesting question.

------
metachris
> and whatever I signed when I committed to coming to the University four
> years ago.

I think this "education contract" could state that the university has the
rights to use your generated IP.

------
gregparadee
That University wouldn't happen to start with a D would it? I know my
university definitly says that anything you do while working on your Senior
Project is technically theirs and makes you sign a waiver agreeing to it.
However, you situation seems to be a little different if your saying you have
some sort of agreement to not use their property to create it.

~~~
tsestrich
My schools actually listed in my profile for the curious. But no, I haven't
signed any kind of agreement saying that I won't use their property. The only
agreement that would be standing currently is if I agreed in my acceptance
letter to let them keep any IP I create as part of classwork, etc. That's
something I need to look into... very soon.

------
Mankhool
I used to be a Manager at UNLV. I thought that Nevada was the only state that
allowed IP to be retained by the individual instead of one's employer or
school. In fact one of my staff created and patented 2 devices while working
there.

------
CyberFonic
Why not just do something else that would meet the university's criteria for a
good mark. Then after you leave, then you do the project as you envisage it.
Free from any complications, etc.

------
chwahoo
This isn't legal advice, but software written by undergrads and not funded by
the University is usually owned by the student.

~~~
pbhjpbhj
As a UK student in the last millennium we signed a form on matriculation that
handed over copyright and patent rights to the Uni for any work done as part
of our study there (or I expect using their facilities; but definitely the
former).

I absolutely would bug the department about it.

------
patrickgzill
If the issue is "copyright" the author retains all interest in the copyrighted
work unless a specific form is signed; there is no other way to assign
copyright.

You should be easily able to ask for and receive copies of anything you signed
when you first came to University.

Personally I would not worry about it, just go ahead. Further don't bug
faculty about it, it will only raise red flags.

~~~
arethuza
The problem is that if the OP's startup is a success then the University
_will_ come after him for what they perceive as his abuse of their property.
Also if he has external investors unless he has disclosed this problem to them
they could well sue him personally - I've been threated by legal action by an
unhappy VC and that was also deeply unpleasant.

If I was the OP I would walk away from his code - don't even take a copy of
it. I would check with an IP lawyer what measures I would have to take to
produce a "clean" copy that the University has no claim over and base whatever
I did on that recommendation. At least if you do things that way you have some
comeback against the lawyers.

~~~
tsestrich
I have no code written currently, and have only met with my adviser to have
him sign off on his agreement to oversee the project. I'll probably go the
route of getting the school to sign off on something saying, basically "I
won't use your stuff, you don't have to do anything for me, just don't sue me
later".

If they won't do that, I might have to change my project to use another web
app-type idea that I consider less viable as a business but could teach me a
lot about web development. I hope that's not the case, as currently I'd be
earning 3 credits to build my dream project and if I can retain all IP I'd be
golden.

~~~
arethuza
It is a tricky one - a sensible organisation would wish you the best of luck
and hope that your eventual success reflects well on them. However dealing
with any large bureacracy means that finding someone who will sign off on such
a thing can be tricky!

~~~
tsestrich
Yeah, agreed. I've found the contact information for the person in charge of
our tech transfer office (called the Office of Technology Management... I
assume they're basically the same thing). I'll wait to hear back from my
department head and probably contact someone in OTM (whoever is appropriate)
afterward.

This might be history in the making, as I potentially might have to pitch why
my idea is NOT viable enough for them to care (inverse VC pitch, lol).

