Patent ownership and commercialisation


I completed my mphil degree last year. The entire research was self funded. I didnot use any grant scholarship instruments etc from university at all. The reseach from start till end I conducted alot. However , my supervisor was someone else who didnot know how to check Biostatistics portion. So I changed my supervisor. She checked it and it was done by me perfectly. I have recieved my degree since 11 months. But I had to patent my invesion of thesis project. My university and supervisor are forcing me to give them 50% share . And forcing me to take grant from them for patent process. While I don't need any grant nor asked for it at all. They say if you give us 50% share we get it patent ,it gives ranking to our university . The commercialization share they want as well .
The patent office says they legally have no right to it if you have self funded the project and no instrument etc was utilised for it. Just take NoC from university and patent it. However,I still wanted to give my supervisor and Co supervisor names as Co inventors. They now forcing me give them share in commercialisation as well and claim it that they were my supervisor and has right over project.

I want to know if they have any right if research was conducted in another city and self funded by me?


I don’t understand your situation but let me explain the rules on patent and commercialisation.

Patent inventors are those who come up with the idea and carry out experiments or generate data that enable the invention. Who funds the research is irrelevant. You can’t gift someone inventorship. If a person who did not contribute was named incorrectly as an inventor, the patent can be challenged. The tech transfer office can call for an inventorship determination by external patent attorney if there is dispute.

If someone is an inventor, then there is expectation that if the invention is commercialised they will receive commercial revenue proportionate to the amount of contributions.


My question is : My supervisor didnot contribute to my project other than review and check it. All data collection, data analysis everything I did myself. I came up with the idea of it as well. Does the supervisor, Co supervisor or university has any rights to claim 50:50 partnership.
I didnot sign any such contract with them at all either. Entire research was self funded by me. The university doesnot even have clear laws on patent yet as its first time such patent which can be commercialised came to surface. Do my supervisor has any rights to ownership? She says that she was my supervisor so she has 50% share partnership to it


Following the definition of an inventor, no your supervisor does not qualify as one. Being a supervisor does not automatically mean being an inventor. No, a university cannot force you to “gift” inventorship.


Now problem is she is forcing me that I give her 50% partnership, claiming that as she was my supervisor, so she has full right to be owner in patent and equal share in commercialisation. The Research department of university agree that they have no right to claims it but if supervisor agree only then will give me NOC to file the patent independently. Moreover, they forcing me that they want to pay for patent via grant , if i do that automatically they become owners too. As till now entire research during my Degree was self funded by me and the entire research was conducted by me in another city independently. They even said that this project will give their university ranking. I don't want to take grant for my invention. I can pay for patent myself. What should I do ? I need NOC to file patent. In NOC its just mentioned that its a self funded projected and conducted in another city and didnot utilise any facilities of university for this reseach purpose. Please suggest me what to do? My lawyer say patent it independently . But I respect my supervisor, Co supervisor and university alot. Don't want to hurt anyone . I wanted to even write their name as Co inventors and Co authors as gesture of respect. But they asking me to give them ownership and equal share in commercialisation.


Have you been conferred your PhD yet? I hope so

You talk about respecting your supervisor and University. You wanted gift them inventorship and authorship to maintain a good relationship but not the commercial benefits. Unfortunately it doesn’t work that way. This relationship as far as I can tell is gone. They are trying to force and grab as much as they can out of you.

There is no 50% ownership in a patent, only 100%. Once a person/organisation is named an inventor and the patent is granted later, they are a full owner of the patent and may do as they see fit with the invention. Patent filing, the first step is easy and cheap. The high costs are the next stages after that including PCT and entering into the different countries in the years to come. One could file a patent and then later allow it to lapse but that will mean you have no patent protection.

Regarding commercial benefits, if the patent is used in commercialisation, all patent inventors and contributors should be remunerated. How much, there should be another contract for that and up for negotiation between all patent owners.

My question to you is why do you want the patent for? Ego? Setting up your own business? Licensing (selling rights) to another company for fee? Depending on your answer, you formulate your own strategy. Talk to your lawyer.

Another matter, why do your supervisor want the patent? Is it for ego, so they can use it for a promotion later on? Do they even have a business plan to further develop the R&D and commercialise? Many times you see researchers file patents to soothe their ego because they want to say they hold patents. Universities want to report they have X patent number to help ranking. But don’t do anything with it.


What is the difference between ownership and coinventors. I want to be owner and gift them inventorship.
The supervisor has no patent of own so need for both purpose. Also was told university needs it for ranking so I should hand over ownship to university. Yes I have been granted degree. My lawyer says just apply for patent solo and we will see what they do later. But even if I patent won't I need their rights to conflict of no interest to publish my articles in reputed journals ?


For me patent isnot so important rather I want to publish my articles. But it was my supervisor who isnot letting me publish without patenting it. So I got stucked with patent process to understand and draft it. Now when I have drafted all And wanted to go ahead with patent filing and needed NOC. They asked me to hand over ownership. I didnot agree and was OK with just making them coinventor as gift and gesture of gratitude. But it hurt me when they created pressure. I worked very hard on it . I don't know if it will yield any commercial benefit but they predict it will and wants it. However, for me my project is just like my baby I invented and want to keep it. Plus might help me in future for phd or promotion or better job opportunities when on CV.


Just as you did your research for your PhD, do your research on research commercialisation. There are many articles out there to help you. Far better than a random stranger. Eg

I don’t understand your university processes. Each uni works differently. Typically if the uni files the patent, they are the owner. Will they honour and treat the inventors named on the patent properly? That is up to your negotiation with them and your uni policy..can they leave people out or give very little commercial benefit to any of the inventors? Maybe.

But if your uni is a good one with good tech transfer office and solid research and business plan for the intellectual property in the patent, these are good things. I highly doubt you know what to do with the patent and how to commercialise it anyway, so they could handle these for you. The 12 months after the filing of a patent is important and do you know what to do during this time?

If your question is legally can you file a patent without your supervisors, if you are sure they are not inventors, check your uni policy. can they challenge? Possibly. You could call for an external independent inventorship determination by external patent attorneys. If your uni policy allows, Could you file as patent inventor and owner and then license back to your uni for negotiated future revenue? Talk to your lawyer. Know that you are burning all relationship bridges with uni and supervisors.

I suggest you talk deeply to your lawyer rather than ask a random stranger. Good luck