Ownership of IP

Although housed at universities, the NNCI facilities are open use, and the universities will not make any claims of ownership on your intellectual property. Essentially, you are renting time in their facilities. As with anything, do not disclose what you do not want people to know. For those aspects you need to disclose, you need to have a nondisclosure agreement in place with the facility (if allowed).

If new IP for your project is developed while using a facility, even if with the help of staff, it belongs to you. In the extremely rare instance that a new fabrication technology is developed by staff for use on your project, then that fabrication technology would be available to other users. However, your use of that technology would not be disclosed.

Nondisclosure Agreements

Below is the NDA used at WNF, taken from the user manual. Other facilities, like CNS at Harvard University, do not do NDAs due to the amount of people using their facility, so you will have to ask what the policies are at your closest facility.

Intellectual Property and Security

While working in the WNF, you will not have intellectual property (IP) restrictions or entanglement with the University of Washington. Many clients execute an NDA in order to protect their IP (use of the UW preapproved form will expedite the NDA process).

Occasionally staff will engage in collaborative development campaigns with users. In these cases, general processing techniques that are not IP-specific may be shared with the general user base, but applications and full process flows will not be shared unless given explicit permission.

Collaboration Versus Protecting IP

I am rather fond of the policy at CNS, which is based on collaboration. Although the risk theoretically exists that someone will steal your idea and develop it for themselves, in practice, that has not happened. Everyone’s interests are very unique to their specific application, but the MEMS processes are shared. We are all trying to use this new technology for microfabrication, and we are all somewhere along the path of learning how to do it the best we can. The NNCI labs are great places to learn the latest techniques and personal successes. My philosophy is, “If they can do it, I can do it,” and rather than start from scratch like them, I can wholesale borrow their process and adapt it to my application.

However, if this is a concern for your company, choose a facility that does NDAs, keep your IP and project ideas close to your chest, and only disclose things on a need to know basis.

Named Inventors

For a patent, you will need to disclose your device design, and that may include some of the MEMS processes you have developed. In spite of this, staff that have helped you with those processes are not named inventors. These facilities are government-sponsored labs, so they do not claim any ownership on your IP. Although often housed at universities, the university has no ownership of the facilities, and they will not claim any ownership of your IP, either.

The exception is if you have a collaborator, either at the lab or at the university. When establishing an agreement with a collaborator, spell out clearly (in advance) who owns the IP that is developed.

Patenting

Patents are a necessary evil, in many cases. You have to protect your ideas from your competitors in order to gain a marketing advantage, and they are used to value the worth of your company. But over 90% of patents are never developed into a product, and they are expensive, time consuming, and fraught with litigation if you patent anything worthwhile.

With that said, I will admit it is very cool to have several patents myself, mostly around the research I have done with MEMS sensors. Having those patents has opened a lot of doors and allowed me to pursue research that I am passionate about. I look forward to learning what great new products you develop using MEMS technology, too!