Evolution

Who Owns What

Ownership, Assignment, and the Inventor’s Starting Position

Overview

Every negotiation you will ever have about your technology begins from a position you did not choose. Employment agreements, institutional policies, funding sources, prior employers, and the terms of a license have already determined who owns what, usually in documents nobody read carefully at the time. This is not only an academic problem. A founder who hires an engineer, brings on a partner, or takes a license inherits whatever those parties bring with them. This evolution teaches you to establish ownership before it becomes a term in someone else's document, and to determine whether you hold the practical control needed to build, license, finance, or sell what you have.

Format

Online

Items

Duration

3-4 hours

Recommended for

Founders establishing ownership before a raise
Inventors at universities and academic medical centers
Companies hiring from a competitor or an institution
Founders taking a license from a university or a company
Teams with co-founders, contractors, or collaborators
Advisors auditing chain of title

THE LEARNING FRAMEWORK

The learning framework

The disclosure that was already assigned

A physician develops a device concept over eighteen months of nights and weekends. She files a provisional patent in her own name, forms a company, and raises a seed round. During diligence, investor counsel asks for her employment agreement and reads the invention assignment clause. It covers inventions relating to the business of the employer or developed using employer facilities. She used the hospital's imaging suite twice, early, to test a hypothesis. Ownership is now contested. The round does not close until it is resolved. It is resolved on the institution's terms, because the company has no leverage, a closing deadline, and a lead investor who will not fund a company that may not own its core asset. The technology worked. The clinical need was real. None of that was ever the question.

Why ownership is misread

Professional training teaches that credit follows contribution. If you did the work, the work is yours. Intellectual property does not operate this way. Ownership follows assignment, and assignment follows documents signed at hiring, at incorporation, or at the closing of a license, often years before the thing being fought over existed and usually without anyone reading them closely. The error takes different forms. A founder assumes the engineer they hired brought only skill, when that person also brought an assignment clause from a prior employer. A company assumes a license conveyed the technology, when it conveyed a field of use and reserved improvements. And in the academic case, Bayh-Dole compounds the confusion: it is widely understood to give universities title to inventions made with federal funding. It does not. In Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems (2011), the Supreme Court held that Bayh-Dole does not automatically vest title in the contractor institution. Title originates with the inventor and must be affirmatively assigned. This is why the exact wording of an assignment clause governs the outcome, and why a present assignment and a promise to assign in the future produce different results.

Ownership established before it is negotiated

Healthcare innovators who complete this evolution know their starting position before they disclose anything, hire anyone, or sign a license. They have read the assignment agreement that governs them and can state what it covers and what it does not. They know what a license actually conveyed and what the licensor kept. They know what each person who joined the company brought with them. They can trace a clean chain of title from conception to cap table, and they know where the gaps are before an investor's counsel finds them. They enter every ownership conversation holding a position rather than a hope.

WHAT YOU WILL LEARN

By the end of this evolution, you will be able to:

Read the assignment agreement that governs you

Identify the operative language in the clause that governs your inventions, whether it sits in an employment agreement, a faculty appointment, a founder agreement, or a consulting contract. Understand the difference between a present assignment and an agreement to assign, why that distinction decided Stanford v. Roche, and what your specific wording does.

Determine what federal funding and institutional policy obligate

Separate what Bayh-Dole requires of an institution from what the institution's own policy adds on top of it. Understand election of title, disclosure timelines, government march-in and license rights, inventor share, and which of these survive into a license you later negotiate.

Locate the boundary between employer work and personal work

Apply the tests that determine whether an invention falls inside your employment: scope of duties, use of facilities and resources, relationship to the employer's business. Understand why incidental use of an employer's resources can move an invention across that line, in a company as readily as in a university.

Understand what an employee or partner brings with them

Anyone who joins your company arrives carrying obligations to someone else: a prior employer's assignment clause, a university appointment, a consulting agreement, a non-compete. Learn what to ask before a hire or a partnership, what contamination looks like, and why an acquirer's counsel will ask the same questions years later.

Trace the agreements already signed on your behalf

Sponsored research agreements, material transfer agreements, and collaboration agreements can assign rights, claim improvements, or restrict use before an invention exists. Understand reach-through provisions, data and biological material rights, and improvement clauses, and how to find what has already been committed by an institution or a company on your behalf.

Trace ownership from disclosure to cap table

Follow the path an invention takes from conception through disclosure, election, license, and contribution into a company. Understand how each step constrains the next and where founder equity is actually determined.

Know what a license conveys and what it withholds

A license is not ownership. Understand what field of use, territory, exclusivity, improvements, and sublicensing rights actually grant you, what the licensor keeps, and why founders routinely believe they acquired more than the document conveys. Building a portfolio on top of a license is covered in IP as Architecture.

Identify chain-of-title gaps before diligence does

Audit your own position the way investor counsel will: co-inventors without assignments, consultants without agreements, students and trainees, prior employers, and unassigned improvements. Find the gaps while you still have time and leverage to close them.

WHY THIS MATTERS

Why this matters

By the time you are discussing terms with a technology transfer office, the ownership question has already been answered by documents you signed and funding you accepted. The negotiation allocates value from that starting position. Knowing the position is the negotiation.

Government license rights, march-in provisions, US manufacturing preferences, and reporting duties do not disappear when the technology moves into a company. Acquirers price them. Founders who learn about them during diligence learn about them at the worst possible moment.

Unassigned co-inventors, undocumented contributors, and ambiguous scope language are the defects investor counsel and acquirer counsel are paid to find. Found early by you, they are administrative. Found late by them, they are leverage.

The license terms, the equity split, the royalty stack, and what an acquirer will eventually pay all trace back to who owned what at the beginning. This is the first structural decision in a healthcare venture and the one most often made by default.

A hire from a competitor, a co-founder with a prior venture, a contractor who wrote code on their own laptop. Each arrives carrying obligations to someone else, and each becomes your problem at the moment an acquirer's counsel starts reading.

Technology transfer offices are chronically under-resourced and triage constantly. A disclosure that arrives complete, with clean assignments and a realistic view of the pathway, moves through the office differently from one that does not. Understanding the process is not a way around your institution. It is how you stop being the file that stalls.

Recommended for

Healthcare innovators navigating:

A first invention disclosure

Employment agreement or faculty appointment review

Hiring from a competitor or an institution

Company formation around licensed or institutional intellectual property

License scope, field of use, and improvement rights

Technology transfer negotiation preparation

Commercialization of federally funded research

Sponsored research and industry collaboration review

Material transfer agreements and biological materials

Consulting agreements and outside activity review

Investor diligence on chain of title

Co-inventor and contribution questions

FOR INSTITUTIONS

Faculty who understand the process move through it faster.

Academic medical centers, research universities, and health systems sponsor cohorts so that inventors arrive at the office of technology transfer prepared: complete disclosures, clean assignment records, and realistic expectations about pathway and timeline. Cohort training is available for faculty, residents, and research staff, with CME.

Learn more about institutional cohorts →

HOW TO GET STARTED

How to get started

Your path to becoming a Certified Professional Entrepreneur

1st Step

Reserve your seat

Your deposit reserves a place in the cohort. Twenty seats. No application, no admissions committee, no waiting on a decision.

2nd Step

Begin the evolutions

Structured online learning you work through on your own schedule. Lectures run under fifteen minutes. Each evolution carries reading, supporting material, working tools, and case studies drawn from real transactions.

3rd Step

Join the live sessions

Live discussion sessions on Zoom, facilitated by Chris and Christos. Not recorded. This is where the material meets your actual situation, and where the cohort becomes a network.

EXPAND YOUR KNOWLEDGE