Ask HN:Patent Unwillingness
A friend of mine who is currently perusing his Master currently mentioned to me that, the Idea he submitted for his project has impressed his professors and the college is applying a patent on the idea.He was not completely willing to patent it,the reason being the compromise of the idea and a openness in sharing the idea. Today he received the news that the patent is shared with 2 other top level profs who have not helped him in any way. He is pissed now and wants to back out. What does HN say what is a wise decision in such a case?
12 comments
37CFR1.45(c)
If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
I would recommend getting legal advice, collecting all documents related to the invention, and keeping a diary of all contacts with parties involved.
At some point he will need to sign a declaration (viz. 37CDR 1.45(a)):
Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
However, the provisions of 37CFR1.47 allow:
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts,...
So, simply refusing to sign the declaration is probably not an option.
The post does not identify the offending university. I think that the aggrieved inventor should check to see what his university policy provides. For example, Stanford University policy can be found on the web at http://rph.stanford.edu/5-1.html. That policy provides that inventions of this sort can be placed in the public domain.
The inventors, acting collectively where there is more than one, are free to place their inventions in the public domain if they believe that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any agreements that supported or related to the work.
Sadly, there does not seem to be a provision for resolving potential conflicts between named inventors nor a policy for determining whether a person should be named as an inventor.
If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
I would recommend getting legal advice, collecting all documents related to the invention, and keeping a diary of all contacts with parties involved.
At some point he will need to sign a declaration (viz. 37CDR 1.45(a)):
Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
However, the provisions of 37CFR1.47 allow:
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts,...
So, simply refusing to sign the declaration is probably not an option.
The post does not identify the offending university. I think that the aggrieved inventor should check to see what his university policy provides. For example, Stanford University policy can be found on the web at http://rph.stanford.edu/5-1.html. That policy provides that inventions of this sort can be placed in the public domain.
The inventors, acting collectively where there is more than one, are free to place their inventions in the public domain if they believe that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any agreements that supported or related to the work.
Sadly, there does not seem to be a provision for resolving potential conflicts between named inventors nor a policy for determining whether a person should be named as an inventor.
First, if the student is an undergraduate, it's unlikely they have "assigned" their IP to the university. The university does not own the fruits of the student's mind. (If you are a graduate student or employee, you probably did assignee your IP.)
Second, "inventor" is a specific, defined thing under US law. Naming inventors who do not meet this definition can render the patent invalid. And, on a more practical level, a dispute over the inventorship will scare off licensors, precluding any revenue the patent would have brought the university.
(I have two patents, work at an IP related non profit, and own a popular IP news service. I am not a lawyer. I suggest you contact Gene Quinn, advocate of independent inventors.)
Second, "inventor" is a specific, defined thing under US law. Naming inventors who do not meet this definition can render the patent invalid. And, on a more practical level, a dispute over the inventorship will scare off licensors, precluding any revenue the patent would have brought the university.
(I have two patents, work at an IP related non profit, and own a popular IP news service. I am not a lawyer. I suggest you contact Gene Quinn, advocate of independent inventors.)
Raise a big stink in the local media and any internet channel you can think of. You might not have a legal leg to stand on but at least you can shame them with publicly available information.
Or just move on and accept this as a lesson learned.
Or just move on and accept this as a lesson learned.
> Raise a big stink in the local media and any internet channel you can think of. You might not have a legal leg to stand on but at least you can shame them with publicly available information.
This is awful advice, don't do this!
This is awful advice, don't do this!
He probably doesn't have a choice. Check out the student handbook for the university that he agreed to follow when enrolling. There's just about always a part about turning over both copyrights and rights to inventions if they're submitted as part of a class or the student used any school resource (such as consulting any professor) in the process of creation.
I once had a consulting client who wanted to apply for patents on my work. And since the client was a small movie firm run by two former lawyers, I knew they had the ability to make things rather ugly.
In this case, I made two statements to the client:
1) Professionally, I did not believe the work was either original or non-obvious, and that for me to sign a declaration otherwise would be perjury.
2) Their agreements with me did not allow for them to patent my work (something for which I read contracts very carefully and seek professional advice on as needed).
They backed down pretty quickly at that point.
You might have luck with a similar approach: If there's something legally improper about the inventorship, or your school does not actually have the legal ability to compel you to patent your work, you may be able to get them to back down in a hurry by laying out the facts of the matter.
But I am not a lawyer, and if the school persists in this behavior, you'll want to speak with a good patent lawyer. You may want to call a couple of patent lawyers and describe the situation to them. You can usually learn a little bit about the merits of your case before they start charging. :-)
In this case, I made two statements to the client:
1) Professionally, I did not believe the work was either original or non-obvious, and that for me to sign a declaration otherwise would be perjury.
2) Their agreements with me did not allow for them to patent my work (something for which I read contracts very carefully and seek professional advice on as needed).
They backed down pretty quickly at that point.
You might have luck with a similar approach: If there's something legally improper about the inventorship, or your school does not actually have the legal ability to compel you to patent your work, you may be able to get them to back down in a hurry by laying out the facts of the matter.
But I am not a lawyer, and if the school persists in this behavior, you'll want to speak with a good patent lawyer. You may want to call a couple of patent lawyers and describe the situation to them. You can usually learn a little bit about the merits of your case before they start charging. :-)
A big thanks to everyone for their valuable suggestions. I had to login with a new "fake" profile as my professors wouldn't really enjoy the contents of this thread.The patent has not been applied yet.I am not too keen on the patent but it is my university that has been pushing hard for it.The contributions from the professors has been nil.It wasn't a joint work and there weren't even any contact sessions.
It's unfortunate he didn't beat them to the punch and patent it himself putting him in control. Not sure what he's trying to achieve out of all this and it may seem a bit cliche to say consult an attorney but that is probably what he should do that this point to see what his options are if he wishes to recoup anything out of this (and I don't mean just money aka rights, etc)...
I'd say - publish the idea and make use of it. You cannot (in theory) patent anything that was already published somewhere.
Nonsense!
In the US and Canada, you have a one year grace period. It's absolutely standard for researchers to publish a peer-reviewed paper and then patent within that grace period.
In the US and Canada, you have a one year grace period. It's absolutely standard for researchers to publish a peer-reviewed paper and then patent within that grace period.
The idea is unique and not published anywhere,hence the patent
Yeah, so publish it. Publish it here right now.
I would imagine that publishing the idea would leave the friend liable for legal action.
It is highly (as dangrossman has already pointed out) that your friend has already signed something that assigns all IP created during a course.
It is highly (as dangrossman has already pointed out) that your friend has already signed something that assigns all IP created during a course.
This only works if the patent has not been applied for yet. Is this the case?
That's true for most non-U.S. countries. In the U.S. and a very few other countries, however, an inventor has a one-year grace period after publication (or offer for sale, or "public" use) in which to file a patent application. See http://en.wikipedia.org/wiki/Novelty_(patent).
not my idea else i would have :P
You can get them off the patent with the full force of the law behind you. You can easily say these other folks don't fit the legal def of an inventor, so why are they here? Only if they push beyond that should you get media involved. Sounds like fun so keep us posted. So many people want the benefits of others' work. :)
From what you have said, your friend would rather it not be patented, but he wouldn't be all that upset if it did. The major problem he is having is that some Professors who didn't contribute anything to the project are now claiming part ownership. I think your first line of approach is to talk to the university directly and tell them you don't appreciate this and you want it change to just you alone. After this and they don't comply you can follow other HNers advice about going to the media and the like.
You have summed up my problem exactly.Talking to the university may not be the best option in this case but I will give it a try.Thanks.
Forget it, learn the lesson and move on.
Just because he doesn't believe in patents doesn't mean others won't.
In large corporations, they are going to patent the idea irrespective of the inventor's belief.
So this is just an example of what he will face when he is out working.
Just because he doesn't believe in patents doesn't mean others won't.
In large corporations, they are going to patent the idea irrespective of the inventor's belief.
So this is just an example of what he will face when he is out working.
I'd talk to the professors - they would be seriously inconvenienced if he raised a stink about "stealing my idea". (After all, what PhD student would want to work for them?)
It's not at all impossible that they'd be mortified, too.
It's not at all impossible that they'd be mortified, too.