Relationship Status - it’s complicated

Just as it takes a village to raise a child, it can take a diverse group of thinkers to develop a worthy invention. Often, the most fruitful collaboration is the combination of academic research with commercial design along with a direct line to market. However, complications often arise because there is a lack of clarity of ownership and obligations around the associated intellectual property. These pitfalls are often fatal to the commercialisation of the invention. Some common traps to be aware of include:

a) Research grants - often stipulate the intended use of the research - such as to the benefit of a particular group/sector. Commercialisation, particularly if patents are used to control access to the developed technology, may be counter to the conditions of the grant

b) Industry investment - may have conditions around joint ownership or first dibs on the technology. This investor may not be the best party to take the invention as far as you would like

c) University staff and students - often a wealth of potentially valuable IP, but sometimes Universities claim ownership of commercialisable IP and may not play well with commercial organisations

d) Licensed IP - a great way to piggyback on the work of others, but can come with fish-hooks. A common fish-hook is to require you to share your developed IP with the licensor

e) Shareholders - historical arrangements with shareholders can get in the way of a clean agreement with a commercialising party.

f) Joint ventures - confusion can reign around who contributed what to the IP and how much that is worth

My advice?

Sort out the relationships at the start, before additional IP and/or commercialisation arises as a result of a collaboration. Make sure that the contributing parties are free of obligations or understand what they are. Otherwise you will be frustrated by the inability to commercialise because of various parties’ claims.