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- An academic entrepreneur must clarify ownership of their invention and establish an intellectual property protection plan before commercializing.
- In most cases, a university employer will own the invention created by its researchers and faculty in conjunction with their employment, and will make intellectual property protection decisions.
- A university may either license out the entrepreneur’s invention to a third-party company to further develop and commercialize, or may license the invention back to the entrepreneur so that they may commercialize it themselves through a start-up.
- Such license agreements will assign responsibility for paying for patent coverage to protect the invention, set a fee or royalty schedule, and clarify ownership of further improvements or developments.
- Should the entrepreneur decide to commercialize the invention themselves, besides licensing the invention from the university, they should also be mindful of disclosure issues, contract clearly with founders and other interested parties to clarify issues of equity and intellectual property ownership, and consider whether they need to establish freedom to operate.
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"Intellectual Property: Commercializing in a University Setting,"
Academic Entrepreneurship for Medical and Health Scientists: Vol. 1
, Article 5.
Available at: https://repository.upenn.edu/ace/vol1/iss3/5