Who owns your invention?

The core idea#

An invention made in a lab usually has several possible owners: the inventors, the institution that employs or enrols them, the government or company that funded the work, collaborators at other institutions, and anyone whose materials or data were used. A startup can only be built on the invention when every one of those claims has been identified and either cleared or turned into a licence. Investors call this a clean chain of title, and they won't fund a company without one.

This playbook explains where ownership claims come from, how the rules differ in the US, India and the UK, how to map your own position, and how to fix the problems founders most often find.

Stage: minus-one · Lens: Deeptech · Reading time: about 35 minutes · Not legal advice: use it to prepare for conversations with your TTO and a lawyer.

Who this is for#

• Faculty, PhD students, postdocs and research staff thinking of starting a company around their work.
• Business co-founders joining a lab team, who need to know what they are buying into.
• Founders preparing for seed diligence.

What you leave with#

• An IP map listing every piece of IP, every inventor, every funder and every agreement that touches it.
• A clear view of who owns what, and what each owner will want.
• A list of problems to fix, ranked by how much they would worry an investor.
• A written ownership position from your institution, or a plan to get one.

Four principles to remember#

1. Assume the institution owns it if you made it as an employee or student using institutional money, equipment or sponsored funding, until a policy or contract says otherwise.
2. Funding comes with strings. Government grants, sponsored research and consortia each carry their own IP terms, which can override the institution's general policy.
3. Inventorship is a legal question, not an authorship one. Co-authors are not automatically co-inventors, and a co-inventor at another institution makes the invention jointly owned.
4. Write everything down. Ownership that is "understood" or agreed verbally will not survive diligence.

The chain of title#

In almost every country, an invention belongs first to the people who invented it. Rights then move along a chain of written documents: from inventors to their employer or institution (by an assignment in an employment contract, a student agreement or a specific deed), and from the institution to the company (by a licence or an assignment). Along the way, funders, sponsors, co-owners and providers of materials can attach conditions or take a share.

Chain of title · 3 owners in sequence, 4 kinds of claim

The US Supreme Court's 2011 decision in Stanford v. Roche shows why each link must be in writing and worded correctly. The Court held that the Bayh-Dole Act does not automatically give a university title to federally funded inventions; title starts with the inventor (Cornell LII). The case is covered in more detail in the case files below.

Three questions for every link in the chain#

1. Is there a document? A signed assignment, licence, policy acceptance or contract. Verbal understandings don't count.
2. Does the wording transfer rights now? "I hereby assign" transfers rights immediately, including in future inventions; "I agree to assign" is only a promise to transfer later (CASRAI).
3. Does anything conflict with it? A second agreement signed by the same inventor (with a sponsor, a company they visited, or a former employer) can take priority.

Eight sources of ownership claims#

Work through each source for every piece of IP the company will need. Most problems found in diligence come from sources 3 to 7, which founders forget.

1. Employment#

If you are an employee (faculty, postdoc, staff scientist, corporate researcher), your employment contract and your employer's IP policy almost certainly give the employer inventions made in the course of your work. Some contracts go further and claim anything related to the employer's field, or inventions made for a period after you leave.

Check: your appointment letter, any IP or invention agreement you signed on joining, and the institution's IP policy.

2. Student status#

Students are usually not employees, so ownership depends on the student agreement or policy, and practice varies. In the UK, students generally own what they create unless an agreement says otherwise (Marks & Clerk). Many Indian institutes' policies claim IP created by everyone working there, students included; for example, NIT Durgapur's policy covers students, faculty, staff and researchers (NIT Durgapur).

Check: your admission terms, any IP agreement signed for a scholarship or project, and the institute policy.

3. Government funding#

Government grants come with IP rules. In the US, the Bayh-Dole Act lets institutions keep title to federally funded inventions in return for obligations, including a licence back to the government (Drexel). In India, the funding department's guidelines apply. DBT's 2023 guidelines say IP from its extramural competitive grants is owned by the institution (Conventus Law), and any licence carries an irrevocable, royalty-free right for the Government of India to practise the invention or require sublicences for health, safety or security needs (Conventus Law).

Check: the grant agreement or memorandum of agreement for every grant that paid for the work, not just the main one.

4. Sponsored research and consortia#

Company-funded projects often give the sponsor ownership, joint ownership, an exclusive option or a right of first refusal. IIT Tirupati's policy, adapted from IIT Madras's, lists the options a sponsor contract may specify: joint ownership, full ownership by the sponsor, an exclusive licence, or a later agreement; and if the contract is silent, the institute and sponsor own the IP jointly (IIT Tirupati).

Check: every sponsored project, consultancy and consortium agreement the lab signed during the period of the work.

5. Collaborators at other institutions#

If a co-inventor works at another university or company, that organisation probably owns their share. Joint ownership is a serious problem for startups: in many countries each joint owner can use or license the patent without the other's consent, which makes exclusivity impossible without an agreement.

Check: who contributed to the claims (not just the paper), and where each person was employed at the time.

6. Materials, data and software from outside#

Material transfer agreements (MTAs) for cell lines, plasmids, compounds or samples often restrict commercial use or claim rights in improvements. Datasets and software libraries carry licences; a dataset licensed for non-commercial research can't be used to train a commercial product.

Check: every MTA, data licence and third-party library in the critical path. Open-source licences need a separate review of whether they require you to release your own code.

7. Visits, consulting and side agreements#

Researchers sign agreements as a condition of visiting a company lab, using a facility or consulting. Such agreements can assign the visitor's inventions directly to the host. This is exactly what happened in Stanford v. Roche (see the case files).

Check: every visiting, facility-access, consulting and NDA document signed by each inventor during the relevant period.

8. Prior work and previous employers#

Work started at a previous institution or employer may belong to them. So may know-how carried from a previous job if your contract there had a broad assignment clause.

Check: where each inventor worked when the idea was first conceived, and what they signed there.

The rules by country#

The default rules differ by country, but in all three below, written agreements and institutional policies usually decide the outcome.

What this means for founders#

• US: Check that your university agreement says "hereby assign", and look for any other agreement you signed that might assign the same invention elsewhere.
• India: Expect the institute to own anything made with institute resources or government grants. The question is usually the terms on which the startup can license it, not ownership itself.
• UK: Employees' work usually belongs to the university by law. PhD students' position depends on their agreements, which some universities have recently changed (Marks & Clerk).

How institutions differ#

Within each country, institutions set their own policies. Read yours in full; the table shows the range.

What to ask your institution#

1. Does the policy claim inventions by students and visitors as well as staff?
2. Which version of the policy applied when the work was done?
3. Is there a startup or faculty-entrepreneurship policy with standard terms?
4. Will the institution assign the IP, or only license it?
5. How are inventors rewarded (royalty share, equity), and does that change if the inventor founds the licensee?
6. Who signs on the institution's behalf, and how long does approval usually take?

Building your IP map#

The IP map is a single spreadsheet that answers every ownership question an investor or TTO will ask. Build it in week 1 of the minus-one stage (playbook 1.04) and keep it current.

Step by step#

1. List the IP assets. Patent applications, invention disclosures, software, datasets, trained models, designs, process know-how and trade secrets. Give each an ID.
2. List the contributors to each asset. For patents, who contributed to the claims; for software, who wrote the code; for data, who collected it. Include students, technicians and visitors.
3. Record each contributor's status at the time: employee, student, visitor, consultant, or employee of another organisation.
4. List every agreement each contributor signed that could cover the asset: employment, student, visitor, consulting, NDA, sponsor.
5. List all funding that paid for the work, with grant or contract numbers and the IP clause in each.
6. List third-party inputs: MTAs, data licences, software libraries and equipment-use agreements.
7. Mark the likely owner of each asset and every other party with rights, and flag conflicts.
8. Send the map to the TTO with your disclosure and ask them to confirm or correct it in writing.

Template#

Asset ID,Asset type,Description,Contributors,Status of each at the
time,Agreements signed (each contributor),Funding sources and IP
clause,Third-party inputs (MTA/data/code),Likely owner,Other parties with
rights,Conflicts or open questions,Evidence (notebook/commit/date),Status
(open/confirmed by TTO)

The red-flag checklist#

Mark any of these straight away; each needs fixing before you raise money.

• An inventor from another institution or company
• A sponsor agreement with an option, first refusal or joint ownership clause
• An MTA or data licence that restricts commercial use
• A visit, consulting or facility-access agreement signed by an inventor
• Work begun at a previous employer
• A public disclosure before filing (playbook 2.04)
• A contributor who has left and can't be reached
• Copyleft open-source code in a product you plan to sell
• Any patent filed in a founder's or company's name for institution-owned work

Fixing common ownership problems#

Most problems can be fixed, especially if you find them early. Fixing one usually means a short agreement signed by the party whose rights are in question.

Order of work#

1. Fix anything that could stop the institution owning a clean title (co-inventors, conflicting assignments, previous employers).
2. Then fix third-party restrictions (sponsors, MTAs, data).
3. Then negotiate the licence to the startup (playbooks 2.07 and 2.10).

Fixes usually take weeks to months, mostly waiting for other organisations' legal teams. Start them during the minus-one stage so they don't delay the seed round.

What investors check in IP diligence#

At seed, IP diligence is usually done by the lead investor's lawyer in one to three weeks. Expect these requests; having the answers ready signals a well-run company and can shorten the round.

Investors usually ask founders to give warranties that these statements are true. A problem you disclosed is a negotiation point; a problem you didn't disclose can become a breach of warranty.

Case files: real ownership disputes#

Stanford v. Roche (US Supreme Court, 2011): the wording of an assignment

What happened. Mark Holodniy joined Stanford as a research fellow and signed an agreement saying he "agree[d] to assign" his inventions to Stanford. His supervisor arranged for him to learn PCR at Cetus, a company collaborating with the lab, and to get access he signed a Cetus agreement saying he "will assign and do[es] hereby assign" inventions made as a consequence of that access (Cornell LII). He helped develop a method to measure HIV in blood, Stanford patented it, and Roche, which had acquired Cetus's PCR assets, commercialised HIV test kits used worldwide (Cornell LII).

The dispute. Stanford sued Roche for infringement. Roche said it co-owned the invention through Holodniy's Cetus agreement. Stanford argued that because NIH had funded part of the research, the Bayh-Dole Act gave it title (Cornell LII).

The outcome. The Supreme Court ruled 7–2 against Stanford in June 2011. Bayh-Dole does not automatically vest title in the university; rights start with the inventor and need a valid assignment (Wikipedia). Stanford's "agree to assign" was only a promise of a future assignment, while Cetus's "hereby assign" transferred rights immediately (University of Tennessee). Stanford lost standing to sue.

Lessons

• The wording of an assignment matters. Universities widely changed their agreements to present-tense "hereby assign" language after the case (CASRAI).
• A routine form signed to access a facility can transfer ownership. List every such document in your IP map.
• Government funding doesn't settle ownership by itself.

University of Warwick v. Diamond (UK IPO): what are "normal duties"?#

What happened. The University of Warwick claimed ownership of a researcher's contribution to an invention, relying on UK law that gives employers inventions made in the course of an employee's normal duties (Kluwer Patent Blog). The researcher and his supervisor had become directors of a company, G-Tronix (EIP).

The outcome. The Hearing Officer found that the researcher's normal duties were to perform tasks set by his supervisor; he wasn't involved in designing experiments and wasn't employed to invent. The university produced no primary evidence that the

invention came from his normal duties (EIP).

Lessons

• Statutory employer ownership is not automatic in every case. It turns on the employee's actual duties.
• Evidence decides disputes. Lab notebooks, emails and dated records showing who did what are worth keeping.
• Founders shouldn't rely on winning such a dispute. Settle ownership with the institution in writing before forming the company.

Oxford v. Jing (UK): internships count#

The University of Oxford claimed inventions made by a student during a paid internship. The court applied the employee-invention rule and found the inventions belonged to the university (DLA Piper).

Lesson: A student's paid work for their institution can turn them into an employee for IP purposes, even if their student work would be theirs.

Mistakes and how to recover#

Existing playbooks to read, and sources#

Read next#

• Your institution's IP policy and startup policy, in full.
• The grant agreements for every grant that funded the work.
• DBT Intellectual Property Guidelines 2023 for biotech researchers in India (DBT).
• The Supreme Court's opinion in Stanford v. Roche , short and readable (Cornell LII).

Related playbooks in this library#

• 1.04 The minus-one stage · 2.02 Invention disclosures · 2.03 Working with the TTO · 2.04 Patent or publish first · 2.06 Freedom to operate · 2.07 Licence anatomy · 2.13 Students and postdocs as founders · 4.05 Assigning founder IP to the company · 14.11 Technical due diligence

Sources#

• Cornell LII: Stanford v. Roche syllabus
• Cornell LII: Stanford v. Roche (alternate)
• CASRAI: Stanford v. Roche and assignment wording
• University of Tennessee: Stanford v. Roche implications
• Wikipedia: Stanford v. Roche
• Drexel: Bayh-Dole Act
• Conventus Law: DBT IP Guidelines 2023
• Conventus Law: analysing the DBT guidelines
• DBT IP Guidelines 2023
• Journal of IPR: Public Funded IP Bill critique
• NIT Durgapur IP policy
• IIT Tirupati IPR policy
• Law Brigade: IP policies of Indian academic institutions
• MIT Policy 13.1
• MIT OGC: updated IP policy
• MIT TLO and IP (2024 slides)
• IISc Faculty Entrepreneurship policy v3.0
• IIT Kanpur Faculty Entrepreneurship Policy
• IIT Kharagpur entrepreneurship policy 2026
• IIT Madras: World IP Day 2025
• Marks & Clerk: who owns university-derived IP
• DLA Piper: employee-generated IP (Oxford v. Jing)
• Kluwer Patent Blog: Warwick dispute
• EIP: Warwick v. Diamond case report