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Author Topic: Who is the Inventor and who is the Owner?  (Read 492 times)

BenHeb

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Who is the Inventor and who is the Owner?
« on: 04-27-18 at 04:07 am »

First, the question refers to the data science/software tool part not the laboratory part.

(1) Some years ago I collaborated with my former Bachelor thesis supervisor on a data science project involving several software tools. The novelty is the workflow pipeline using certain tool outputs as inputs for other tools, and so on. This allowed an "off-target" usage of the tools for a specific economically important question.
(1a) Those software tools do not have any patents attached (standard peer-reviewed publication and open-source online tools)
(1b) My former Bachelor thesis supervisor had the initial idea about the project, but was not actively involved in the execution nor in follow-up design/work/whatsoever.
(1c) This project was NOT a part of my Bachelor thesis at University A, NOR a part of my Supervisors work at University A.
(1d) Throughout the project the supervisor was employed at University B (change job). The project was also not a part of his work at University B.
(1e) Except of the initial idea, I was designing and doing everything. He lost interest throughout the years. The project was NOT formally arranged at any point.

(2) I used the results of this project as the foundation of my Master thesis at University A. For this puposed I was doing some laboratory research at Institute C, which belongs to University C.
(2a) The lab results, which are based on the data science project, are - of course - IP of Principal Investigatior/Professor C at Institute/University C.
(2b) Major parts of the data science project are part of my Master thesis at University A.
(2c) My Master thesis contains an affidavit which says that all experiments are conducted at Lab/Institute/University C.

I repeat, the entire data science project was conducted outside university (extracurricular, non-university).
Now, who is the Inventor and has major IP claims? Who, if any, has minor claims?
I have the strange feeling that I gave up IP rights by including the data science results in my Master thesis.

Thanks guys for your help!  :)


« Last Edit: 04-28-18 at 08:42 am by BenHeb »
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still_learnin

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Re: Who is the Inventor and who has claims?
« Reply #1 on: 04-27-18 at 11:23 am »

I'm not sure what you mean by "major and minor claims," but I think you're asking who owns the IP, and perhaps by major and minor you're referring to the stake in ownership.

Bad news first.

(1) Some years ago I collaborated with my former Bachelor thesis supervisor on a data science project involving several software tools. The novelty is ...
If several years have elapsed and no patent application has been yet filed, it may be too late obtain a patent on any invention arising out of this project. There are several "statutory bars" which may have already occurred.

Nonetheless, here is some basic information about inventorship and ownership of patents.

First, inventorship is different than ownership. Inventorship is determined by contribution to claims in a patent/patent application. It's a question of fact. In contract, ownership in the US is generally determined by contract. In the US, inventor(s) own unless and until they assign ownership to another party through contract. That said, it is almost universal when working with/for an organization, that organization will require that an inventor assigns his/her ownership to the organization as a condition of employment/doing business/being a student/etc.

Inventorship is a fact-specific inquiry about who contributed to the "invention" [an invention that is captured in a patent application], and exactly what contribution was made by each. You're not going to get an answer to who is or is not an inventor on this public forum, although some of the facts you state are certainly relevant.

Ownership depends on the contractual arrangement that each inventor has with his/her respective employer/educational institution/etc. A typical contract specifies under what conditions the invention goes to the employer/institution/etc. Stuff like was inventing part of the employees job duties, was it performed on employer time, was the invention in particular technology areas, etc.

These employment contracts also specify what, if anything, the inventor gets in return for assigning his ownership rights. An inventor may get no monetary compensation at all -- employment itself is the "consideration" given to the inventor. An inventor may get some fixed amount of cash (e.g., $X on patent filing, $Y on patent issue). An inventor may get royalties on any licenses of an [issued] patent.

Finally, two entities (e.g. Univ A and Univ B, Univ A and Company C) jointly collaborating on an invention may themselves split royalties. This would be spelled out in a joint development agreement between the entities.

You're not going to get an answer to what your ownership or license rights are on this public forum. If you really want to know, what if any, rights you have in an invention, you'll need to consult an attorney.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

BenHeb

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Re: Who is the Inventor and who has claims?
« Reply #2 on: 04-28-18 at 08:41 am »

Many thanks for your detailed reply. I totally acknowledge that you cannot provide a legal opinion on this forum and that I have to consult an IP attorney in the end. Got it! I also rephrased the subject to make things clear.

May I ask some more questions to dig deeper (personal curiosity, for learning and avoiding unnecessary legal fees).

First, to which "statutory bars" do you specifically refer?

Second, can the answer to my initial question been broken down into the following steps?

(1) Figure out if my supervisor contributed to the invention and if -the initial idea- would be enough for that.
(2) Based on (1): Suppose that I'm the sole inventor.
(2a) Check the study and examination regulations at University A to learn if I assigned ownership rights to them, even if I pursued the project in my spare time or at a non-university setting.
(2b) Check correspondence and signed forms between me and University A, Institute C, Professor/Lab C whether ownership has been assigned.
(3) Based on (1) and (2): Suppose that my supervisor also contributed to the invention to some extent.
(3a) Ask supervisor if his employment contract with University B addresses ownership rights (especially about side-activities while working and during spare time).
(3b) Seek for committment that side-activities were not part of his working duty or were conducted during work.

Third, is it right that the answer is heavily attached to the question, whether ownership rights resulting from inventions generated from side-activities not conducted during work or in the course of academic studying (!) ARE transfered to third-parties if there are certain contractual obligations (oral or written).

Thanks for your answer!
« Last Edit: 04-28-18 at 08:48 am by BenHeb »
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Toot Aps Esroh

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Re: Who is the Inventor and who is the Owner?
« Reply #3 on: 04-28-18 at 02:57 pm »

The question about statutory bars relates to the public policy tension between patenting and publication.  If I invent something and it gets used publicly or publicized more than one year before I try to patent it, then I am barred from patenting.  Also, I don't have to blast it out to the world to be considered to have publicized it.  Pretty much any disclosure outside of a confidentiality agreement can be enough to count as a bar event.

I assume you're in the US.  If not, the following may or may not be applicable.

If you are the sole inventor as in your (2), it is not "university regs" you need to check but rather any agreement (written contract) you may have had with the university, to see what it says about obligations you may have to assign inventions to the university (that is, just skip your (2a) exercise and go to your (2b). 

Generally speaking in the US, without an agreement otherwise, the invention vests in the inventor.  And offhand, an agreement that says you owe all inventions to your employer, even those done in your spare time and without use of employer's resources, could be challenged as over-broad.

If you are an inventor and your supe is also properly viewed as an inventor, then your (3) exercise would tell you whether you and the supe, or you and the Univ. are co-owners.

Also note from a patent law standpoint, the question is what are the claims of the patent, and what persons made inventive contribution to those claims.   So it's  hard to figure out inventorship before you know what you might be able to claim in a patent application (assuming you're not barred as above).

In the corporate world, we start off knowing the identity of those who are in the pool of potential inventors (anyone who contributed).  Then once the patent application is drafted and the claims are known, we sometimes have to take off people from the list of potential inventors because we find they really didn't contribute anything inventive to the claims.


EDIT: I see that I re-hashed a lot of what still_learnin already said (sorry for not reading further up before posting).
« Last Edit: 04-28-18 at 03:01 pm by Toot Aps Esroh »
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still_learnin

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Re: Who is the Inventor and who has claims?
« Reply #4 on: 04-30-18 at 11:17 am »

First, to which "statutory bars" do you specifically refer?

In a nutshell: sale; public use; public disclosure. You can google for "AIA statutory bar" and read about it. Where "AIA" is America Invents Act, which (somewhat) changed the rules for statutory bars. See, for example, this article:
http://www.ipwatchdog.com/2017/06/10/patentability-novelty-requirement-102/id=84321/


Second, can the answer to my initial question been broken down into the following steps?

(1) Figure out if my supervisor contributed to the invention and if -the initial idea- would be enough for that.
(2) Based on (1): Suppose that I'm the sole inventor.
(2a) Check the study and examination regulations at University A to learn if I assigned ownership rights to them, even if I pursued the project in my spare time or at a non-university setting.
(2b) Check correspondence and signed forms between me and University A, Institute C, Professor/Lab C whether ownership has been assigned.

Wont hurt to read anything you can find about your universities policies with regard to inventions. I'd also talk to the university's Technology Transfer office. That's the group at the univ that deals with inventions, mostly for the purpose of commercializing them when possible. In the end, as Toots points out, it's what you signed that matters, but having more background info and/or an explanation from someone at Tech Transfer can't hurt.

(3) Based on (1) and (2): Suppose that my supervisor also contributed to the invention to some extent.
(3a) Ask supervisor if his employment contract with University B addresses ownership rights (especially about side-activities while working and during spare time).
(3b) Seek for committment that side-activities were not part of his working duty or were conducted during work.

Also ask your supervisor whether he filled out any invention paperwork (often referred to as "invention disclosure"). And maybe whether he thinks he contributed to the invention. If so, the best course may be to proceed as if he's inventor and then later perform the factual inquiry as to whether he contributed to claims and remove him from the inventor list at that time.

Note that your supervisor may not know or care about any invention-related provisions of his employment contract.

Third, is it right that the answer is heavily attached to the question, whether ownership rights resulting from inventions generated from side-activities not conducted during work or in the course of academic studying (!) ARE transferred to third-parties if there are certain contractual obligations (oral or written).

Not sure I'm following you.

Generally, any university with which you have a relationship -- student, employee, etc. -- will use a contract to obtain rights for those of your inventions that have something to do with (a "nexus") your connection to the university. Ownership of your inventions that are unrelated to that university nexus stays with you. Unless and until you assign those remaining rights to another party -- for example, a start-up that you're working with. 

As Toot explained, sometimes an entity (univ, corp, etc.) will be too greedy and try to stretch that nexus too far, and in that case the contract provision may be found "overbroad."
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.
 



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