Ask HN: Legal rights to University project?

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.

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?".

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.

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.

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.

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.

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.

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

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.)

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.

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.

> 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.

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.

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.