Patent Attorney and Founder
JD: My company is offering an innovation grant for people with ideas they want to work on, but they would keep any IP that’s generated. What are some ways to retain the IP from this project if I want to continue working on it on my own in the future? Would it still be a good idea to apply and see if I can get some of that money?
JD: That’s a good question. If I understand it correctly, you’re asking about ways to fund your project while retaining IP rights.
JD: One vehicle to raise money is through grants. A really popular one is the SBIR (Small Business Innovation Research) grant, which is a government grant for science-based research and technology. They offer chunks of money that they need to give away by legislation, or they risk losing funding. If you apply and receive this grant, the government typically gets a full, free license to make and use the invention for governmental purposes because they’re funding it. This limits your rights somewhat, as the government can use the invention without further compensation to you.
JD: There are also private companies that offer similar innovation grants, but they might want access to or even ownership of the IP. As an inventor, you should look for and advocate for terms that allow you to monetize your IP. Work with a licensing attorney who specializes in contracts and licensing agreements to negotiate the best terms for you. Ensure you retain the ability to develop and sell versions of your invention.
JD: The beauty of patent law is in its bundle of rights, including the ability to make, use, sell, and import. These rights can be licensed exclusively or non-exclusively. Don’t give up too much without consulting legal counsel to make sure you retain significant rights to your invention.