Ip Disclosure And Ownership Check

---
name: ip-disclosure-and-ownership-check
description: "Establish who owns the IP arising from a research result and make a timely invention disclosure before public disclosure."
---

# 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

1. Check your own organisation's IP policy: does the institution own the IP
   entirely, partially, or does the professor's privilege apply?
2. 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.
3. Document the invention's origin and development carefully — this helps
   with patent applications and proving ownership.
4. Use an NDA when sharing details with outside parties before protection is
   secured.
5. Clarify the IP position of students and multi-institution collaborations —
   students are not automatically employees, ownership varies and must be
   agreed in advance.
6. 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.
7. 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