Pilot2Service IP Disclosure & Ownership Check
Purpose
Establish who owns the IP arising from a research result and make a timely invention disclosure before public disclosure.
Based on
the owner's published commercialisation guide (owner, 2025). Chapter "Understanding IP and University Policies" (pp. 23-26).
- Bayh–Dole Act (1980, USA) — a model in which the university owns inventions from federally funded research
- Professor's privilege (historically e.g. Sweden, Italy, Germany) — an exception to university ownership
- USIT guidance: benchmark range for university equity (e.g. 10-25% in a high-support scenario; often ≤10% in software; up to 25% in life sciences)
Method
- Check your own organisation's IP policy: does the institution own the IP entirely, partially, or does the professor's privilege apply?
- Make a formal invention disclosure to the TTO BEFORE public disclosure (publication, conference poster, social media) — in most countries a patent must be filed before public disclosure or patentability is lost.
- Document the invention's origin and development carefully — this helps with patent applications and proving ownership.
- Use an NDA when sharing details with outside parties before protection is secured.
- Clarify the IP position of students and multi-institution collaborations — students are not automatically employees, ownership varies and must be agreed in advance.
- Negotiate equity/royalty terms with awareness of the benchmarks (see above) — avoid a situation where the university simultaneously takes high equity plus royalties plus fees.
- If your organisation offers an opt-out option (retaining your own IP ownership), weigh the pros/cons carefully — freedom also brings costs and the responsibility for patenting.
Gotchas
- Step 2's "before public disclosure" deadline is absolute in most jurisdictions and triggers on more than journal publication — a conference poster, preprint, thesis defense, or a detailed social media post all count; the common failure is treating only formal publication as the deadline and disclosing to the TTO too late.
- The Bayh-Dole default and "professor's privilege" exception (see "Based on") are cited as historical models, not a claim about your institution — step 1 has to be answered from your own policy document, not inferred from which example sounds closer to your situation.
- Step 5 (students aren't automatically employees) is easy to skip when a student is "just helping informally" — without a signed IP assignment, that student can retain a real ownership stake that only surfaces later as a title problem during TTO or investor diligence.
- Step 6 warns against a university taking high equity and royalties
and fees simultaneously, but this skill only tells you to watch for
that pattern — it doesn't judge whether a specific term sheet crosses
the line; confirm with the TTO (
tto-engagement-strategy) and IP counsel before accepting or rejecting an offer on this skill's say-so. - This is a prerequisite gate, not a parallel activity — running
industry-partner-engagement(e.g. showing a prototype to an advisory panel) or other outward-facing steps before completing step 2 here can itself be the public disclosure that forecloses patentability.
What this skill does NOT do
- Does not replace IP counsel or the TTO's formal assessment.
- Does not draft a patent application.
- Does not interpret your own organisation's exact policy text for you — obtain it and read it yourself; this skill structures what to ask.
Continue from here
- Next in this pack:
../tto-engagement-strategy/SKILL.md— Use the Technology Transfer Office (TTO) effectively and recognise when outside support is needed alongside it. - Pack's shared guardrails:
../../CLAUDE.md - Overview of the full journey:
../commercialisation-journey-roadmap/SKILL.md
References
../../references/case-studies.md— 7 spin-out examples from different industries and regions../../references/terminology.md— the handbook's glossary../../references/sources.md— the handbook's own source references../../CLAUDE.md— the pack's shared guardrails