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Student Researcher Wins Patent Dispute
Matthew writes: "For years, student researchers at universities have alleged that the hierarchical system in academic research allows supervising PhDs to steal and patent inventions that were rightfully discovered by students. The Federal Circuit finally addressed these concerns by interpreting the law in a way that strictly protects the rights of student researchers. As such, student researchers will now be able to sue their supervising PhDs for any actions that are not in the best interests of the student researcher or the patent rights of the student researcher."
"Rather, the suit challenging inventorship must be brought by a party that has some interest in the patent, such as a financial stake in the success of the invention"
IANAL, but someone who is might be able to say if things like credibility, pride, or the downright disgust of the theft of something someone's poured a lot of time into are an "interest". I don't understand why if I claimed I invented the "XYZ" (when in fact my student did), the student would have no real legal recourse to say "Excuse me, that was mine, even though it's financially worthless".
Shouldn't laws defend the decency of humanity, and provide justice regardless of financial motive?
If the appeals court decision indicates a duty of the mentor to the student, can the mentor be criminally liable for failing to perform?
In this case I don't see a single reason why Chou's mentor is even allowed to remain at the University, let alone be free. He lied, then used the University system against her, and finally used his authority to prevent her from redress. Flat out we don't need anyone, no matter how highly acclaimed, leading research groups.
This should lead to a complete investigation of any patents where he is listed as the sole discoverer.
* Winners compare their achievements to their goals, losers compare theirs to that of others.
While I firmly believe that the law does indeed protect students who invent things from having their innovations stolen, my concern lies elsewhere. The collegiate community has long been free from many concerns that private businesses must contend with in regards to innovations. I would hate to see this bring the level of freedom colleges have to a substandard level. Graduate students signing contracts and and more lawyers...what a horrible thought.
Anyway, I would just like to caution those applying this law in college settings to make the system the least cumbersome as possible. Free-thinking is the backbone of our collegiate system.
Of course we torture people, we need the information --Gen. Pinochet
Clear something up for me, does this mean that the Professor pays for all the equipment, helps the student work on their research or lets the student work on their projects, then when the student takes one of the ideas to the patent office he gets all of the credit for it?
Don't get me wrong, I think you should be able to patent your own ideas, but if they are not completely unique and unrelated to the work already done by the professor than you should not get all of the credit.
~ now you know
After looking at the linked article, it seems clear that the supervisor in this case did something exceedingly dishonest and deserved to get shot down over it. You don't steal your students' work, either by patent or by publication. Period.
However, as someone who advises students, I'm a little worried about the speculation that my students can now sue me and my institution for *any* action on my part that they perceive not to be in their best interest. What if a student feels that I talked him into working on problem X, but he would have finished faster and published more papers by working on problem Y? Can I get sued over that?
What are the limits of my legal responsibility? And more importantly, if I have a particularly risk-averse chancellor/dean/department chair, is this precedent going to chill the advising relationship between me and my students?
I am a little concerned by the breadth of the Federal Circuit's ruling. It seems that the panel went far beyond the issue-at-hand (i.e., that a student researcher has standing to bring an inventorship claim -- an entirely reasonable proposition, I think) when it found the student's instructer to be the student's fiduciary. A finding of a fiduciary relationship has significant implications: in general, a fiduciary owes her benficiary a duty of care, loyalty, etc. For example, the lawyer-client relationship is a fiduciary relationship. I'm just not sure that we want to start making professors the fiduciaries of their students, and thereby impose upon those professors a significant new area of legal liability.
In addition, the scope of a fiduciary relationship is a question of state law (in this case, Illinois law), not Federal law -- a fact not brought out in the linked article. Thus, the panel is not only stretching the bounds of the fiduciary relationship, but also imposing liability based on its "best guess" as to what an Illinois state court would recognize. I am not aware of any Illinois opinion that holds that a professor is the fiduciary of his student (altho since I haven't looked at the question, I'm eager to be humbled by someone smarter).
This is a real story from a lab I used to work at. We were working on a project with a major US group. We were trying to attach little bubbles of glass onto the end of hair thin glass tubes for a laser experiment. We were told the american lab would have no problem with this and that they had 10 techies and a $110 million lab so would get it done in no time.
Six months later and no sucess we gave the project to a summer intern to look at while we found him some real work without much hope of sucess. We can back to take him for lunch to discover him with the newspaper out, the problem solved and complaining of being bored. In this instance the Director of the site took great pleasure in giving him full credit 8)
Moral of the story - brains usually win and any student with one good idea is likely to have more they will get credit for
How did he solve it? Attached a vaccuum to the end of the glass strand and sucked the ball onto it and sealed off the other end with superglue.
Now I'm a postdoc researcher, if I were to produce anything patentable now, that would be as part of my job - what I'm paid to do (unless I come up with something unconnected at home and in my spare time) - I've signed a form to this effect, so I can't complain about it afterwards if they take ownership. Not paying royalties would be another matter though.
Of course, I still whinge about being underpaid...
One of the many statutes to which I implicitly agreed upon entering Oxford University states that "The university claims ownership to various forms of intellectual property produced by students in the course of or incidental to their studies". This includes any patents I might be granted (almost certainly none) *and* any software I might write while I'm here.
Which means that I immediately have to stop work on any Free Software projects, because by licensing my work Freely I would be violating the university statutes. Since I'm doing research at the moment into computer networking -- and working specifically on transport protocol design -- this isn't exactly going to help further my research.
I'm trying to get the university to agree to let me release my work "if it will promote my research goals", but after two emails and a couple weeks without any response I'm a bit dubious about whether this will work.
Tarsnap: Online backups for the truly paranoid
Most universities require graduate-level researchers to sign agreements that the University (and not the student OR the advisor) owns any patents that a researcher might need to take out. From what I've seen, universities are pretty divided on whether they make these patents public, keep them, or return them to the student. The basic premise of doing this is that the University puts up most of the financial resources needed for research. How fair is it for a someone to spend millions of dollars of a schoo's research money and then shut the university out of the financial rewards of that invention?
I seem to remember a case a few years ago where a student, wanting to benefit from his discover, had destroyed his university work, quit school, and then a year later finished his research. The school sued and won, on the charge that the student had committed the equivalent of industrial sabatoge.
The real problem is that advisors tend to steal *credit* for inventions, thus getting patent rights back from the university. This ruling just means that students don't automatically give their rights up de-facto to their advisor/department.
Simply require all mentoring professors to list once a year all patents that they are applying for.
Give the students a chance to review the list, and have a board to mediate any disputes.
Finally, have the same standards for academic honesty apply to the professors.
III.IIVIVIXIIVIVIIIVVIIIIXVIIIXIIIIIIIIVIIIIVVIII
When a customer rang a PHB and wanted to know who built the new system - of which they were quite impressed - he gave them the name of a guy who scanned, cropped and resized some graphics for it.
Hey, I'm only the programmer...
Belief is the currency of delusion.
I've NEVER seen a tenured prof fired for anything BUT sexual harrasment. Errr...except Bob Knight (yeah he was considered a tenured professor) and that was only after he publicly attacked a 'disrespectful' student because he refered to him as simply 'What up Knight?'.
Seriously...you have to do something that is soooo in the publics eye and so far out of character with a university that it can't ignore it anymore before you get fired as a tenured professor.
Heck, my office went through with something like this about two years back. An employee of mine decided to do her Senior Thesis as a project with my department. She had gotten approval to do so by her academic department. The Academic Department did not offer her any guidance or otherwise other than this approval and suggestion on the scope of the project which happened to be 'Do What The Customer Wants'.
Anywho, she gets the project done, does the write up on it and turns everything in...source code and all. 3 Months later, I find her professor is trying to sell the code that I paid for and claim that it is his. Now, my department is a non-academic department at the same university..but it is entirely funded by grant work. We pay rent to the university and pay the university a large amount inwhich they turn around and pay our salaries. In a sence, we are paying to work here because we can (and some cases have) take the research outside of this institution and keep a larger chunk to ourselves.
Ok, that complicated things a little more. We 'work' for the same organization its a little harder for one department to get satisfication from another. This professor is now trying to sell the code to other universities and other organizations saying that he wrote it himself. We had to escallate this to a legal means using our grant provider (who legally owns a big chunk of our research) outside of the university and then bring in internal arbitration.
At this arbitration, this professor reiterates the fact that he wrote 99% of this code and she helped him. The fact of the matter was that since this was for her senior thesis, I helped her get direction on this and explained theory behind certain ideas in implementing my research, but she did 99% of the coding...with maybe 1% of it being me.
The professor that she was working with academically couldn't even understand the first bit of this, and couldn't even follow the code to reverse engineer it. I had to install it on his computer because he had never done anything like this before and couldn't follow the simple directions given on the cdrom.
The subject area of this research (psychometric shtuff) was something that she didn't know much about and the professor knew less of. In the end, he claimed that it was all his idea, it was his code, and it was his project...much to the dismay of our grant provider and my boss. Arbitration was the only way to get this out in the open and it was more or less determined that this professor was lying and had stolen the code, BUT that as it was freely given for a class assignment, the university could asurp it and do what they want...even though it was paid for by someone else. He was no longer free to sell it himself without the universities permission, along with the owners of the software.
Needless to say, everytime he's had opportunity to sell it, I've consulted with the grant provider and we've simply given a site license to them. I'll be damned if I let this asshole make any money off the deal, and they back me up on this. They paid for it, and they aren't going to let anyone else make a profit either. As he is guarenteed a certain percentage as pursuant to his tenure agreement, we are making sure that he gets exactly 49% of nothing.
So back to the point, this stuff is expected in academics. If ya don't think so, you are fooling yourself. Universities know this, and will go out of their way to make sure that their proffesors are paid well, even if its not by them. They don't want to take any chance of anyone thinking they are showing any improprieties, so its all swept under the carpet.
Luckily in my case, the stuff we were working on was supposed to be free anyways, but now we are forced to give it away for free 'under contract'. My student got screwed and her reputation on this campus was blemished and the professor simply walks away from this...though enough folks know what a sleeze and an asshole he is now...and I make it perfectly known on this campus NOT to do anything with him that he could injure a student with at a later point. None of my employees will ever work for him again, and as I've had some of the most talented programmers on campus vieing to work for me, it means that his pool of students that he can get to do his work for him is less than it was a few years ago. They make it known to the other students as well...the only thing I can hope is that he doesn't publish and the university will get sick of paying him...but that won't happen. Tenured employees never get fired...
That if the research is funded by a government grant, or any method of public funding, the patent rightfully belongs to the public!
A company/corporation:
- A corporation employs you and pays you a salary.
- A corporation does not charge you tuition or fees for use of its facilities.
- A corporation generally holds all rights to discoveries and inventions you make during your work with the company.
An University:- An University does not employ you or pay you a salary.
- An University charges tuition, lab fees, and graduate fees to use its facilities and personnel.
- An University generally holds all rights to discoveries or inventions you make during your research.
These two institutions are NOT balanced! I can completely understand and agree with a company which claims rights to a patentable invention you make during work hours and on work equipment. I can NOT understand how an University can even begin to claim rights, when the student is NOT employed by the university and PAYS to use their facilities! Any fruits of the student's labor are his- the University has already received their compensation - tuition!I'm having a very difficult time understanding how an organization being fully compensated for use of their facilities can try to claim IP ownership on things created with their service. That's roughly equivalent to paying the Property Owner of an office building a commission, based off of your company's profits, above and beyond your rent!
.... um, i lost you after "0110100001101001".