Friday, February 5, 2016

University Claims Copyright on Formula

Dear Rich: I am looking to license a copyright for a creative process -- a method of calculating something -- that was developed within a university. I developed my own formula and process for which a provisional patent application was filed. One of the developers developed the initial copyright with the university and now they are claiming a derivative work. We have agreed to a royalty rate from our technology but can not find an example to compare for a rate. The original copyright is maybe 1% of our overall new technology. Can you help me with a suggested fee?
Much as we'd like to help, we wouldn't know where to start. The fact that the original university innovation accounts for 1% of the overall technology is not a helpful indicator, especially if that innovation contributes more than 1% of its value. This is why intellectual property valuations are complex and typically managed by experts.
Copyright on process? Our other concern is that the university is claiming a copyright on a process. The Copyright Office states that "ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices" are all ineligible for copyright protection. At best you can copyright the description, explanation, or illustration, that is used in connection with the procedure or process. So, we're unclear as to how someone can assert a copyright claim over material that is not copyrightable. Normally, to stop someone from using a process or method, the owner would need a patent (or an obligation to maintain trade secrecy, if the process were a trade secret) not a copyright. In addition, the fact that the university process may not be protectable could affect the patentability of your formula (should you follow up with a patent application).
Maybe we're wrong ... Perhaps we are misinterpreting what's at stake - -for example, maybe you are referring to the use of software code protected under copyright. In any case, with so many factors in play -- the university, the developers, patents and copyrights -- we think you're best off consulting with an intellectual property attorney.