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response to a reader

A reader left the following comment on a recent post on intellectual property rights as a grad student:

Hey Mudphudder,

I was wondering if you have any opinions on intellectual property, specifically from the vantage point of a graduate student…
When I started with my department, one of the orientation meetings emphasized the university’s controlling stake in EVERYTHING that may be produced or derived from peon graduate students during their tenure. That’s all fine and good (the uni gets a big cut compared to the PI), but they neglected to discuss whether there are any baseline expectations that grad students can count on if their work is patented, etc. One project that I’ve been developing with my PI for two years (mouse breedings/homemade protein production/vaccinations) may have finally generated a novel gene product that would be utilized by my PI in a clinial trial. Given that he already has a few previous patents, I’m guessing that he would move to patent this discovery as well. If we are indeed so lucky, I would hope to be included as a partial owner/stakeholder. Really, though, I have no idea what to expect. Given all the leg-work, troubleshooting, and hundreds of hours contributed from my end (with zero contriubtions from other grad students, post-docs, or technicians), it would be hard to see this whisked away from me. Your entry on work-sharing vs. author-sharing was funny, but it left me wondering – do graduate students have rights beyond the good graces of their PI? Are there academic or, dare I say, legal precedents for conflicts over ownership? My worst fear is that the academic hierarchy has jurisdiction to crush those on the bottom rung….
(Does this qualify as the record longest post on your blog?)

There are sleazeballs in academics who steal from others because they can’t think of good ideas or do good work themselves.  If it happens to you, it sucks.  There is always recourse–the question is whether you want to take it or not.  When someone on your level or more junior does it to you, it is a lot easier to take action.  But when your beef is with someone who is higher on the totem pole than you are, it’s not so easy.  With that said, let’s get to your situation.

The first issue is the patent.  I was not lucky enough to work on a patented idea but I’ve known a lot of people (graduate students to PIs) who have.  My understanding is that at most institutions (at least at ours), the patent is filed through the university–I think through the “office of technology transfer.”  The university takes care of the administrative and legal aspects (involved with protecting and enforcing the idea) of the patent, which makes life very, very easy for you, but it is also why the university takes a big bite out of any profit and royalties made from the patent.  This “bite” usually consists of ~2/3rds.  Yeah, that’s steep.  But if you think about it in terms of the support you get from the university, it’s, well, still really steep but not as bad.  Just imagine how hard it would be to not only file a patent on your own but also have the legal power to back it up if someone tried to steal your idea.  Okay, so what happens with the last 1/3rd of the profits: that is divided equally among whomever is listed as an inventor on the patent when it is filed.  Graduate students are certainly allowed to be listed as inventors on patents.  In fact, if the patent is on your project and your work, it would be downright unethical for you to not be listed as an inventor (which is the second issue I’ll get to).  I will mention two last points about patents in the setting of universities that I’ve heard of.  First, at some institutions, I’ve heard that if the university is unable or unwilling to market your patent, then the university may give up it’s rights to the patent and let you shop it around–in which case, the inventors would all of the profit.  This is rare though, and I mention it just so you are aware of the possibility.  Lastly, if your patent is sold, profits are given to the university to distribute appropriately to the inventors.  At some institutions (such as where I’m at), the university puts the inventors share into escrow accounts with the university, without always telling the inventors.  So, for example, there would be an escrow account with the university for you, and your profits would be placed in that account by the university–except that you might not know.  More than likely your PI would have heard but maybe forgot to tell you.  Whatever.  I’ve known graduate students who are about to graduate and for some reason or another find out that they have several thousand dollars in an account held by the university.  So if you do file a patent, just occasionally check in with your PI about what has happened to it. 

What to do if your PI does not include your name as an inventor on the patent?  I’d rather not even talk about that but rather focus on how to make sure your PI will include you.  Here’s why: I know that you are not going to throw down with your advisor.  You’re a smart guy, and you know it’s just not smart to throw down with your PhD advisor.  The reasons for not doing so are many that I can’t even get into now.  But to address your question, there are mechanisms for recourse in your situation or others where a student is wronged.  If you do take action, make sure you go through a proper chain of command–start with the PI, then consider going to someone else at the institution such as a graduate program director or the ombudsman.  If you are not hearing something you like, then take it to the legal stage.  However, most of the time, nothing is really solved and instead the PI hates you and all other PIs won’t touch you either because you’ve shown to everyone that you have no fear of going after a PI.  See what I’m saying?  It’s just not worth it.  Unless we’re talking about something very important–at the risk of your career–I would be very hesitant to go after a PI in the legal sense as a graduate student.  What you can do–and what prevents PIs from routinely screwing students–is the word-of-mouth dissemination of what happened to you.  There is one PI at our institution who publishes awesomely but is not a very nice person.  To my knowledge, in the last 8 years only 1 mudphudder has even rotated in that lab (and that mudphudder did not join) because we all hear about the PI from our fellow mudphudders.  If you get jipped out of your patent, I would tell definitely every mudphudder you know and graduate students as well.  A PI who snatches that away from a student doesn’t deserve to have students.  But I don’t think your PI will do that.

First of all, does your PI have a track record for leaving graduate students off of patents that they did the work on?  If not, I doubt it will start if you.  If you want to be proactive, I would consider preemtively approaching your PI about the patent–i.e. “I think we should patent this.”  Think about all of the possible responses and be prepared.  As I’ve written before, no one wants to be the one to say “no” and start a conflict–you or the PI.  There should be essentially no cost to the lab in filing a patent through the university–you can always double check this with your office of technology transfer if it becomes an issue–so cost should not be a reason for your PI not to file a patent.   If you wait until the PI initiates the process, just try to take as much of an active role as possible in the process.  The more active you stay in the process, the less likely your PI will be to do such an egregious thing (literally in your face).  If you lay off and are passive, it will be much easier to get forgotten along the way.

In all seriousness, I would be really careful about seeking recourse against a PI as a student.  I’ve known people who’ve gone down that road, and universally it has not been pretty for those students.  It’s just not a prudent thing to do.  The best recourse that is realistically available to you would be talking to other students.  However, why go through that frustation if you can avoid it.  The key as a student is to be smart about recognizing when these situations could occur before they do (good job on your part) and then take steps to prevent them from occuring.  And that’s a principle that applies far more generally than just this case. 

Anyway, I hope that helps.  Your work and ideas are a part of you as a scholar–for better or for worse.  There are few things more painful than when someone tries to rip that off.  I’ve been through it.  But keep a cool head when dealing with it–because it can be very frustrating and try to anticipate when such situations can occur and nip them in the bud before they come to fruition.  Good luck–

(and, I do believe that this does qualify as the longest post on my blog…so far… ;) )

One Response to “response to a reader”

  1. 1
    Andrew:

    great entry regarding my question about intellectual property. I appreciate that you put together such a well thought out response (and also agree with your advice). If this project comes to fruition – hopefully in the next few months…! – I’ll be prepared to proceed accordingly.

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