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(Message started by: Nazli kasiri on Nov 17th, 2007, 9:02am)

Title: My supervisor patented my work!!
Post by Nazli kasiri on Nov 17th, 2007, 9:02am
did my MSc at a Univ a couple of years ago. Based on my background, my supervisor suggested a topic for my research.
I worked on the idea and made a new strcuture.
We published a paper and I graduated.

A few days ago, to my surprise, I discovered that he
patented my work without telling me or adding me as
an inventor.

The patent was filed right after we submitted the paper and is basically a copy of the paper I wrote.

Can he do that? and what coarse of action I can take?


Title: Re: My supervisor patented my work!!
Post by Skunk Works on Nov 19th, 2007, 11:05am
Yes, he can do that.
Indeed, clearly he did.

What coarse of action can you take?
That's one whale of a question.
I doubt you can properly get a handle on the situation and all of your options by posting questions here. Your situation is characterized by many facts that need to be understood. Those facts should not be, and probably can't be, properly laid out and understood through this website.

So, we're back to the old line ... you probably need help from a patent attorney. I doubt you can tackle this matter for free. You may have to invest in the situation to become informed.

Here's a "maybe" that you may not like.
You may not be an inventor at all.
Your supervisor suggested a topic.
You worked on the idea.
Inventorship is defined in the claims of the patent.
Those who contributed conceptually to the claimed inventions are inventors.
Often, people are credited for their contributions in research by being included as a co-author in a research paper. It doesn't work that way in patents.

Also, if you are an inventor, you may not rightfully own anything. You may have signed away any ownership in your inventions when you accepted employment. I signed away such ownership when I was working for a university as a graduate student.

No one here can advise you very far in view of the little information you've posted. It may not be a good idea to post much more information.

I recommend you read the claims of the patent. The claims are the numbered paragraphs at the end of the patent. Do you feel you originated subject matter in those claims?

If you feel the answer is "NO," then there may be no problem to remedy.
If you feel the answer is "YES," then you probably have an expensive and uphill battle before you on your way to a remedy.

A private consulation with a patent attorney may help you.

In an ideal world, you could ask your supervisor about the situtation, and he'd put you in touch with the attorney or agent who patented the invention, and you'd get a straight forward explanation. But by merely asking ... you may put everyone on the defensive.

I doubt this has been the clear answer you'd like ... but it's an answer.

By the way ... are you sure a patent has issued?
From what you've said, if I may guess, you may be confusing the filing of a patent application with the issuance of a patent.



Title: Re: My supervisor patented my work!!
Post by CriterionD on Nov 19th, 2007, 12:52pm
I second the suggestion of consulting with an attorney (which I am not, btw).

And just to throw it out here, if the patent publication in question or parts of it are truly just a copy of your paper, I would imagine you might be able to sue for copyright infringement in addition to other options you may have to extract a check for the commercial value of your contribution to the patent.

Title: Re: My supervisor patented my work!!
Post by Nazli kasiri on Nov 19th, 2007, 5:27pm

Thanks for your help.

Yes, the patent has been issued, and the funny thing
is he never told me about it.

The idea in the claim is clearly mine. Even the day I showed him my results, I remember he told me to keep
it confidential before we publish it!!!!!

I guess there is not much I can practically do. :(

Title: Re: My supervisor patented my work!!
Post by Isaac on Nov 19th, 2007, 5:50pm
I think CriterionD's exploration of inventorship is on the right track.   With supervisor/researcher combinations, there can be a question of who conceives and who reduces to practice.  The conceiver is the inventor no matter how much more work reduction to practice turns out to be.

Obviously I don't have an opinion about the end result in your case as you don't provide much detail.

OTOH, the copyright infringement possibility doesn't sound like an avenue to explore IMO.  Sounds like you guys are listed as co-authors on the paper.


Title: Re: My supervisor patented my work!!
Post by pentazole on Nov 20th, 2007, 5:58pm
Nazli, did you confront your advisor about this?  If not, it is probably the place to start to see what explanation he will give.

I hopped from academic research to patent law a couple of years ago, and can sympathize with your situation.  I believe that a lot of researcher sometimes try to get away with less than ethical stuff.  If you feel wronged, you should pursue this, but there a few things you need to know.

I'm only going to reiterate what previous posters have said.  Academics tend to not understand the concept of inventorship because on academic papers, everyone that worked on a paper gets their name on the paper.  In the world of patent, inventorship is based on a claim by claim basis, and inventors are those who conceptually contributed to the each claim.  When we deal with academics in patent matters, we are very diligent at having them understand that, and we sit down with them and determine the inventorship of each claim.

Your advisor is going to almost always be an inventor on the patent, because it is silently understood that when you join a research group, you are there because you are interested in the advisor's work, and will be helping him develop his ideas.  This does not mean that you have not contributed concepts to the patents though, but this has to be determined on a case by case and claim by claim basis.

For example, let's say the general idea was that binding a tetrazole to a virus will inhibit the virus.  You discover that isopropyl tetrazole is much better because of some funny thing the isopropyl group does.  Claim 1 in the patent is a tetrazole, claim 2 is the tetrazole of claim 1 having an isopropyl group.  In this case you can argue that you conceptualized claim 2, and should be an inventor, your advisor can argue that he conceptualized tetrazoles with all side groups, only you carried out the experiments to determine the best mode.

I suggest you go through the claim and determine what you contributed to the claim in terms of concepts, contact your advisor and see what he has to say, and go from there.  After that if you are not satisfied, there are many options.  I would suggest you contact the attorney or agent that is listed on the patent's front page, and tell him/her of the situation, or contact the university tech transfer center and see what they have to say.

As always, the best way to figure out your options would be to contact a professional in the field, however, try and get a free consultation because it may get expensive.

Title: Re: My supervisor patented my work!!
Post by lianbalan on Nov 26th, 2007, 2:52pm
I am not a patent attorney but what I recall from reading about patents:
- in the Invention Author it is only the author name that can appear. The supervisor - university will be the assignee but not the author.
- this is a very bad academic behavior (refer to the plagiarism associated with it) and when students do it they can be expelled (during my MBA I had a colleague who was expelled because he used published work without referencing it) so it should be the same case when the teaching stuff does the same with their students' work?

Title: Re: My supervisor patented my work!!
Post by Wiscagent on Nov 26th, 2007, 4:08pm
“If you feel wronged, you should pursue this ...”
“... you probably need help from a patent attorney.”

Perhaps, perhaps not.  For the purpose of this discussion, I will assume that Nazli is an inventor of the invention claimed in the patent, and he should have been named in the patent.  Given that assumption, the next question Nazli should ask himself, is “How much is the patent worth to me?”

Nazli’s employment contract may have obligated him to assign the invention to the University; in which case the cash value of patent to Nazli is zero.

Nazli may indeed have legal ownership rights to the patent, but for various business, legal and technical reasons the patent may be worthless.

To fight for his rights Nazli will have to expend time, effort and money.  Regardless of whether Nazli wins back his rights he may still be seen as a trouble maker in the field that he is pursuing ... if that costs him a job or two, that could be very expensive.

Bottom line: even if Nazli is right, this battle may not be worth fighting; carefully weigh the potential costs and benefits before taking up the sword.

Title: Re: My supervisor patented my work!!
Post by Pyshnov on Dec 4th, 2007, 9:37pm
Hi!
You should see some web sites, but it says here I can not include links.

1.This is my case "University of Toronto Fraud" see on google

2. This is about patent. This was in US court where it was ruled that supervisor has fuduciary obligations toward a student researcher.

3. There was a discussion where I made some important notes
in the-scientist

4. One article is now not available, but I have it:
"In rare turnabout, student accuses teacher of plagiarism"
A lawsuit and an online university setting add more twists in the high-stakes pursuit of a doctoral degree
BY PAUL TOSTO. Paul Tosto covers higher education and can be reached at  651-228-2119.
Pioneer Press
Article Last Updated: 06/18/2007 01:12:16 AM CDT


5. The last case I know:
"Ph.D. student suing BU, says prof stole his work"
Look in google on these words

6. See also journal "plagiary"

look all on google and contact me for more if you wish. it's a very interesting business with lawyers, news media etc., not simple.

Michael Pyshnov.



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