Who Really Owns My Invention
One of the most common issues I face in helping Doctors invent and profit from their inventions is: Who really owns the Doctor's invention? This issue is very important when trying to determine who has the right to commercialize the invention and typically comes into play with physicians who are employees of hospitals.
Basically, Inventors own their patent rights until they transfer or assign them to someone else. Employment contracts for physicians typically require that they assign their patent rights to the hospital -- with no additional compensation except for the doctor's usual salary.
While such an invention assignment may appear to be very restrictive -- there are ways for doctors to make money from their inventions. Doctors need to make sure and have proof that their inventions were conceived and reduced to practice exclusively on the doctors' own time and with his or her own resources (a "home invention"). This type of invention will be owned by the doctor, not the hospital.
The key here is to for the doctor to keep a detailed invention notebook. Everything you need to know about invention notebooks is covered extensively in my book, Physician Invent Thyself.
In addition, even if the hospital owns the patent, forming a company around the invention is still a viable option if the doctor can negotiate a license agreement with the patent-owning hospital or research institution. Doctors should try to obtain an exclusive license with no (or a low) up-front payment and reasonable royalties tied to actual product sales, which may not begin for a number of years. Hospitals and research institutions are usually willing to negotiate a patent license because their primary mission is treating patients and curing disease, not forming start-up medical companies.
Some hospitals have their own technology transfer and commercialization offices and Doctor Inventors should initially find out the exact role of the office and their specific policies on ownership of inventions and commercialization rights.
For Doctor Inventors that are employed by hospitals, the best practice is to learn the particular invention ownership and commercialization policy of the hospital and to keep a proper and very detailed invention notebook if they plan to invent on their own time.
Questions or comments, please email me
A lot more information, data, links and resources can be found on my mirror Doctor of Invention Blog. Please check it out.