Case Study

A month before defending her dissertation, a graduate student files an invention disclosure with University Y’s intellectual property officer on a novel widget developed as part of her doctoral research. The intellectual property officer meets with the graduate student and her thesis advisor, and discusses the invention disclosure. When asked about inventorship, the faculty advisor responds that both he and the graduate student are the inventors.

After the meeting, the graduate student calls the intellectual property officer. She explains that when she joined the faculty advisor’s laboratory, she conducted a thorough review of the literature and developed a hypothesis that she felt was not addressed in the literature. Even though the hypothesis represented a deviation from most of the research ongoing in her advisor’s laboratory, the advisor allowed her to pursue it and provided funding from one of his grants for her work. Over the course of her research in her faculty advisor’s laboratory, the graduate student independently developed her research project to test and analyze her hypotheses. The nature of the project meant that her advisor was not always able to provide much assistance, and so she sought expertise from others when required, particularly for data analysis. Although the graduate student performed most of her own research, she noted that she did require the help of a technician to overcome a technical hurdle in one small, but ultimately significant, area.

The intellectual property officer feels that the university should file a patent application on the novel widget. Further, the application should be filed before the dissertation defense in order to protect worldwide patenting rights. The graduate student agrees. She does not feel, however, that her advisor is truly an inventor but does not want to cause any problems with her advisor prior to her dissertation defense.