Copyright (c) 1995 by Sandip H. Patel
TABLE OF CONTENTS
INTRODUCTION ..............................................................
482
I. GRADUATE STUDENTS, FACULTY, AND RESEARCH AT UNIVERSITIES ...............
483
II. INTELLECTUAL PROPERTY: A FEW OF THE BASICS ............................
487
A. Patent Law .........................................................
488
B. Copyright Law ......................................................
491
C. Traditional Employer-Employee Relationships Regarding Intellectual
Property ................................................................
492
1. Patent Law's Hired-To-Invent Doctrine and Preinvention
Assignment Agreements ...................................................
492
2. Copyright Law's Work-For-Hire Doctrine and Contractual
Assignments .............................................................
495
III. OWNERSHIP OF FACULTY-GENERATED INTELLECTUAL PROPERTY .................
496
A. Patents ............................................................
496
B. Copyrights .........................................................
500
IV. OWNERSHIP OF STUDENT-GENERATED INTELLECTUAL PROPERTY ..................
502
A. Students, Not Employees ............................................
502
B. Graduate Students' Diminished Incentives to Create .................
503
C. The Inequities and Inapplicability of Preinvention Assignment
Agreements ..............................................................
505
V. RECOGNIZING GRADUATE STUDENTS' OWNERSHIP RIGHTS IN INTELLECTUAL
PROPERTY ................................................................
506
A. Fairness and Equity ................................................
507
B. A Transformation from Within the System to Account for Students ....
508
C. Individual Student Ownership and Management ........................
509
D. Student-University Joint Ownership .................................
510
CONCLUSION ................................................................
512
INTRODUCTION
University intellectual property policies have become standard form policies
varying only slightly in substance from one university to another. At their
core, these policies provide guidelines that govern intellectual property
ownership issues that may arise in the context of university research. The
policies seek to harmonize these issues with the university mission to generate
and disseminate information for the benefit of the university and society
as a whole. Faculty employment contracts often refer to these policies,
noting that they are part of the contractual agreement between the university
and the professor. In this context, the policies serve as preinvention assignment
agreements where faculty agree to assign rights in inventions and creations
conceived and reduced to practice during the course of their employment
in exchange for continued employment and a share in the royalties. Universities'
comprehensive guidelines regarding faculty-generated inventions can be interpreted
as a reflection of the increasing role faculty play in devising equitable
policies. Unfortunately, these same policies fail to provide equally comprehensive
guidelines regarding graduate students' ownership interests in student-generated
inventions.
While a university claim of ownership in faculty-generated inventions might
have a legal foundation rooted in traditional employer-employee relationships,
the legal foundation to a university claim in student-generated inventions
is much weaker. The university-student relationship is not analogous to
an employer-employee relationship. As a result, universities lack the legal
authority to exert ownership interests in the student-generated creation
under patent law's hired-to-invent doctrine, copyright law's work-for-hire
doctrine, or contractual assignment agreements.
This Note examines the protection faculty receive for their creations and
intellectual contributions. This Note suggests that under current laws governing
patent and copyright ownership intellectual property in student- generated
creations belongs to the student, notwithstanding the fact that such creations
are due in part to university resources. Part I provides a brief overview
of the prominent role universities, their faculties, and their students
play in conducting research. Part II presents a framework for examining
the intellectual property ownership issues faced at the university level,
by providing basic information concerning patent law, copyright law, and
traditional employer-employee relationships regarding intellectual property.
Part III discusses contractual assignment agreements, the hired-to-invent
and the work-for-hire doctrines, and fundamental contract doctrines in the
context of a university-faculty relationship. Part IV examines these same
concepts and argues that they form the legal basis for granting graduate
students the ownership and attribution they deserve. Part V explores some
of the nonlegal reasons to recognize student ownership in intellectual property
and some of the consequences of doing so.
A university may view a proposal to reallocate ownership interests, particularly
in intellectual property that it has enjoyed for years, as a threat to its
financial well-being. However, this Note suggests that recognizing graduate
students' contributions to scientific advances serves to perpetuate university
missions and, at the same time, bestows upon students a more gratifying
sense of achievement. Such gratification can carry over into their professional
careers and instill in students a more favorable impression of their school.
The impression students develop will benefit their universities because
of the students' potential influence in distributing research grants. [FN1]
I. GRADUATE STUDENTS, FACULTY, AND RESEARCH AT UNIVERSITIES
Students labor through organic and physical chemistry, differential equations,
and quantum mechanics to earn a bachelor's degree in engineering. They enter
graduate school in an effort to develop a better understanding of their
discipline, and opt to forgo the enticing arena of the professional job
market where engineers consistently command the highest starting salaries
among all undergraduate majors. [FN2] Industry demands talented students
who will bring with them analytical and inventive skills that will prove
a valuable investment for the company. The fulfillment of demanding entrance
requirements and the highly selective nature of today's graduate programs
indicate that universities are competing with industry for the best graduates.
Universities not only compete for these same students, but have historically
attracted the best of each year's class. [FN3]
Most graduate departments--for instance, chemical engineering departments
[FN4]--offer two graduate degree programs: master's and doctorate. These
programs often require students to enroll in a number of courses in addition
to fulfilling the responsibilities of a teaching assistant for undergraduate
courses. As part of their graduate education, students receive intensive
research experience in an effort to expose them to areas which will further
motivate them toward their own original research. Original research plays
a major role in both degree certification programs. Upon consultation with
faculty, students choose their thesis topics freely and with great expectations.
Through completion of rigorous graduate programs, students expect at least
to develop the research and analytical skills characteristic of the faculty
within their departments. Students also remotely expect that their research
will lead to breakthrough advances. Working on and completing theses develops
research and analytical skills, critical judgment, the resourcefulness required
to deal with difficult research problems, the personal responsibility for
the solution of a novel problem, and the independence that enables the students
to extract their creative thoughts. [FN5] Participation in a rigorous research
program provides a link between students and professionals, and introduces
to society tomorrow's most promising scientists, engineers, and medical
doctors.
Today, our nation's universities provide essential and cutting-edge technological
innovation that once could be found only in industry or government laboratories.
[FN6] The growth of the university as the birthplace of many inventive discoveries
over the past two decades has brought recognition, prestige, and money to
these schools. Universities consequently approach today's advances with
the hope of educational and monetary achievement inconceivable twenty-five
years ago. [FN7] One need look no further than the comprehensive university
intellectual property guidelines to see that administrators recognize the
prizes that are now customary with major advances. The growing university
practice of producing and selling technological advances is a benefit to
university budgets, [FN8] yet does not come without special problems. [FN9]
In recent years, faculty members have organized their own committees to
voice opinions on the allocation of ownership rights in faculty-generated
creations. Through their participation in the drafting and revision processes
of university intellectual property policies, these committees are responsible
for the new effort, reflected in the policies, to protect faculty interests
in their creations. [FN10] These same policies, however, fail to recognize
the student's interest in his or her creation. It is no secret that the
fruits of academic research would not be as abundant, and in some cases
would not even exist, were it not for the invaluable time, effort, and intellectual
contribution graduate students make.
Although an undergraduate degree in the natural sciences or engineering
has been considered the prerequisite for many types of inventive employment,
the graduate degree is preferable. While the receipt of the advanced degree
is coveted by the graduate student, the pursuit of the degree is invaluable
to society in general. The benefits to society of the work such students
contribute accrue immediately and are in no way insignificant. For example,
human insulin, interferon, and the hepatitis B vaccine all evolved in part
from university-based research. [FN11] Biotechnology companies, as licensees,
"have brought about 30 new medical products to market--a boon to humanity
as well as to the scientists who developed them." [FN12] In the case
of biological products intended for human use, the Food and Drug Administration's
stringent requirements demand meticulous testing and analysis, frequently
performed by graduate students. Such testing and analysis invariably leads
to numerous modifications, the result of the ingenious input of all involved.
Seen as a fresh source for information and new techniques, universities
are beginning to compete with industry in the pursuit of patents. [FN13]
Industry views this challenge in different ways. Some company representatives
regard universities' interest in obtaining patents as a threat to their
own interests and are reluctant to enter into cooperative research agreements
with universities actively pursuing patents. [FN14] To the extent that a
company joins a university in a research relationship, it views the university
as a valuable asset and graduate students as potential employees. In a study
conducted by the National Science Board, seventy-five percent of industry
representatives interviewed cited access to high-quality manpower as "a
motivating factor in their support of university research." [FN15]
This is an indication that industry recognizes the value of the research
graduate students are capable of providing. Students typically realize how
valuable they are by their success in securing permanent research positions
upon graduation. The university realizes their value in the form of lucrative
royalty and licensing schemes. [FN16] For universities, intellectual property
in the form of patents provides more than just royalty income. Patents act
as a means of strengthening important relationships with industry and as
a source of vital income to support further research. [FN17]
Universities' interest in intellectual property contributes to the longer
time commitments often required by today's graduate degree programs. In
chemical engineering, for example, Ph.D. programs formerly completed in
four years may now require longer commitments. [FN18] It is doubtful that
the advances in the field of chemical engineering warrant the additional
commitments. These commitments are increasingly seen as examples of universities'
unfair bargaining position and their abuse of their resources in retaining
students as "cheap labor" in its pursuit of research grant income.
The conclusion to be reached from the foregoing discussion is that because
universities play a much more significant role in research, the demands
on their faculty and graduate students are also more significant. Moreover,
while this nation and its industries begin to rely more heavily on universities
to produce research, they, along with the universities, will place a heavier
burden on the faculty and graduate students. While faculty are beginning
to realize the fruits of their labors in the form of ownership interests
in patents and copyrights, students are not.
II. INTELLECTUAL PROPERTY: A FEW OF THE BASICS
The Constitution states that "The Congress shall have Power ... To
Promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their respective Writings
and Discoveries ...." [FN19] Intellectual property laws, namely patent
and copyright, were established to promote the progress of science and useful
arts. First, these laws provide an incentive to create by offering the possibility
of reward through limited monopoly rights. [FN20] This potential reward
encourages the investment of time, effort, and capital in research and development
ventures. Second, the laws invite the investment of additional capital needed
for further development and marketing of an invention. [FN21] In return,
the creator receives limited monopoly rights in the creation. Finally, through
the protection afforded the inventor, the laws encourage public disclosure
of technological information which might otherwise be held in secrecy. [FN22]
Such disclosures reduce the likelihood of duplicative efforts by others
and provide a foundation for further advances in the technology involved.
Intellectual property differs markedly from tangible property. Unlike real
or personal property, the use of intellectual property is not inherently
exclusive. Without a system of assigning legal title to intellectual property
and restrictions on its use, all who are privy to its disclosure can use
it, whether or not they contributed to its creation. Because this Note discusses
the impact of both copyright law (which protects expression) and patent
law (which protects technological products) at the university level, a brief
introduction to patent and copyright law will aid in understanding intellectual
property ownership rights. Both branches of law are governed by Congress,
administered by federal agencies, and related disputes are heard by federal
courts.
Each form of protection strikes a different balance between providing an
incentive to create and distributing valuable information to pursue more
scientific and artistic advances. In order to qualify for copyright protection,
the work must exhibit a minimal amount of originality. [FN23] Such protection
exists in the expression only and does not extend to the underlying ideas,
concepts, or processes. [FN24] Moreover, copyright does not protect against
independent creation of an already copyrightable work. [FN25] A work must
contain a much higher level of novelty in order to be entitled to patent
protection. [FN26] The creator of such a work receives limited monopoly
rights in the invention, and enjoys the right to prohibit others from asserting
independent authorship. [FN27] Throughout the analysis, it is important
to remember that a student is no less capable of receiving protection under
either law than anyone else.
A. Patent Law
The Patent Act of 1952 gives inventors [FN28] the right to exclude others
from making, selling or offering for sale, or using their inventions for
a specified length of time [FN29] in exchange for full disclosure of their
patented inventions. [FN30] This bargain serves to promote the progress
of science and useful arts specified in the Constitution. An inventor's
exclusive rights begin upon the grant of a patent by the United States Patent
and Trademark Office. Patents are granted to any individual applicant, including
a student, faculty member, or administrator, who "invents or discovers
any new and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof." [FN31]
A patent application is a document typically drafted by a patent attorney
and submitted to a patent examiner in the United States Patent and Trademark
Office. A patent attorney is admitted to practice before the Patent Office
and has developed an expertise in an area of technology based on formal
education, practical experience, or both, which enables him or her to work
with inventors to draft an application. The patent examiner evaluates the
application to ensure that the invention meets the requirements for patentability
set forth in title 35 of the United States Code. The examiner only denies
an application for a patent if the examiner can establish a prima facie
case that the invention is either not novel, [FN32] lacks utility, [FN33]
or is obvious to a person of ordinary skill in the art. [FN34]
The first requirement in obtaining a patent is that the invention must
be novel. One may not patent that which is known or used by others in the
United States or already patented or described in a printed publication.
[FN35] This requirement, of course, is consistent with the overall bargain
nature-- exclusive rights in exchange for disclosure--of patent law. If
the invention is already known or used by others in the United States, already
patented, or described in a printed publication, there is nothing left for
the inventor to disclose. Therefore, no justification exists for providing
the individual with exclusive rights. Thus, a failure to establish novelty,
in and of itself, is a ground for denying patent protection. Similarly,
failure to file for a patent application within one year of an invention's
disclosure in a printed publication or its offer for sale in this country
also acts as a bar to patent obtainment. [FN36] Absent patent protection,
the novelty of the subject matter disappears with the passage of time. Therefore,
the disclosure of the subject matter in a printed publication or its offer
for sale more than one year prior to the filing of the patent application
transforms what was once novel into what is now common. This time constraint
promotes the prompt disclosure of the invention to the public, discourages
the concealment of useful information in the form of trade secrets, and
reduces the likelihood of duplicative efforts.
The second requirement in obtaining a patent is that of utility. The Constitution
does not encourage the progress of useless arts. Therefore, the invention
must exhibit some identifiable benefit to humans. [FN37] Most inventions
do not suffer from a lack of utility; therefore, most inventions do not
have any difficulty satisfying this requirement. Moreover, because of the
costs associated with obtaining a patent, it makes no sense for one to seek
a patent for material that is of no use and will not generate revenue. Often
many years pass before a patent issues, and the administrative procedures
(and the legal fees required to navigate them) cost thousands of dollars.
[FN38] A patent should be sought after examining the invention's utility,
and then only after also examining the marketability of the invention, the
potential profits, and the patent's ability to withstand an attack in the
courts. [FN39]
The final requirement is nonobviousness. Were an invention deemed obvious,
by definition there would be nothing to disclose. Thus, this third requirement,
like the previous two, is consistent with the bargain nature of patent law.
Notwithstanding the simplicity of this requirement in the context of the
bargain nature of patent law, it is perhaps patent law's most complex concept,
due to the difficulty in determining which inventions are and are not obvious.
The United States Supreme Court, in Graham v. John Deere Co., [FN40] set
forth a three-step factual inquiry for determining what is and is not obvious.
Establishing the scope and content of prior art and establishing the differences
between such prior art and a claimed invention are the first two steps.
The third step is determining what level of skill is considered "ordinary"
by practitioners in the art. Prior art is the subject matter pre- dating
the invention. Prior art may or may not have been used in the inventive
process. For example, an artist's easel used for holding a painting may
not be considered prior art for an invention of a car-top luggage carrier.
[FN41] Although both carry or hold objects, an artist's easel is not reasonably
pertinent to the problem of transporting luggage atop a car. A pump, however,
may be considered prior art for a claimed invention regarding a compressor
since a pump is a type of compressor. [FN42]
The difficulties in determining the level of ordinary skill of practitioners
in the art are similar to those found in establishing the characteristics
of tort law's "reasonable person." Among some of the determining
factors which courts consider are the educational level of active workers
in the field, sophistication of the technology, the rapidity with which
innovations are made, and prior attempts to solve the problem which the
invention at issue solves. [FN43] The actual inventor's level of skill is
not relevant, however. [FN44] In sum, the patent examiner will deny the
application for a patent if he or she finds that the claimed invention would
have been obvious to a hypothetical person of ordinary skill in the art
in light of the prior art.
A patent will be granted to any individual who satisfies the requirements
discussed above. Traditionally, patents were granted primarily for mechanical,
electrical, and chemical processes, products, and machines. Today's patents
are also often granted for biological creations [FN45] and computer- based
mathematical algorithms. [FN46] Whether an individual recognizes the patentability
of his or her creation is an issue outside the scope of this Note. The key
point one must remember is that all individuals possess the traits needed
to produce patentable material. Each person's imagination is the source
that generates new and useful things, while the inventive nature of human
beings provides the essential resource for conceiving something previously
unknown. The patent system merely gives people the incentive to use these
faculties for the benefit of society.
B. Copyright Law
Congress defined copyright as "the right of an author to control the
reproduction of his intellectual creation." [FN47] Unlike patent protection,
which begins upon a grant by the federal government, copyright protection
begins automatically upon creation of "original works of authorship
fixed in any tangible medium of expression." [FN48] Copyright protection
exists to provide authors with an incentive to create and to promote the
cultural well- being of the society at large. Where patent law provides
the creator with exclusive rights for up to twenty years in exchange for
full disclosure, copyright law provides the author [FN49] with a wider array
of exclusive rights [FN50] for the life of the author plus fifty years [FN51]
in exchange for the deposit of two copies of the work at the Copyright Office.
[FN52] Copyright law also rewards independent creation, whereas patent law
accords protection only to the first inventor and no protection to a subsequent
independent inventor. [FN53]
A work of authorship is fixed in a tangible medium of expression if it
is embodied in a copy or a phonorecord such that the work can be "perceived,
reproduced, or otherwise communicated either directly or with the aid of
a machine or device" for a nontransitory period of time. [FN54] Another
requirement for copyright protection is that of "originality"
based on independent creation by the author and a minimal amount of creativity.
[FN55] The subject matter eligible for copyright protection includes literary,
pictorial, graphic, sculptural, audio, and visual works, and computer programs.
[FN56] Protection exists for both published and unpublished works; however,
published works must contain a copyright notice on all publicly distributed
copies in order to preserve infringement remedies. [FN57]
In the context of university-generated creations, ownership issues surrounding
copyrights are not as significant as ownership issues regarding patents.
This is due in part to three reasons, all of which reflect differences in
the two forms of law. First, copyright protection exists for creations exhibiting
a minimal amount of creativity; hence, it is not difficult to acquire. Patent
protection, on the other hand, requires a much higher threshold of novelty
in order for the creation to be accorded protection. This in turn requires
a much more significant capital investment to develop patentable subject
matter. Second, patent protection begins only upon a grant by the United
States Patent and Trademark Office. Copyright protection, on the other hand,
begins immediately upon the fixation of the expression in a tangible medium.
Thus, the costs of acquiring patent protection greatly exceed the costs
of establishing copyright protection. Third, patent protection endures for
a much shorter period of time than does copyright protection. Moreover,
the value of the exclusive rights accompanying the patent typically exceeds
the value of the exclusive rights that accompany copyrights. While copyright
protection is distinguishable from patent protection, one should note that
all individuals, including students, possess the traits needed to create
copyrightable material.
C. Traditional Employer-Employee Relationships Regarding Intellectual Property
1. Patent Law's Hired-To-Invent Doctrine and Preinvention Assignment Agreements
Patent law evolved during an era of individual inventors. Invention used
to be characterized by the individual efforts of nonprofessional, unspecialized,
untrained inventors who worked by themselves through the exercise of their
own inventive capacity. [FN58] Today the work of independent inventors remains
important; nevertheless, most financially significant inventions arise out
of organizational environments. [FN59] Each year the lion's share of all
patents are awarded to employed inventors. [FN60] Thus, the issues of who
owns the invention and what rights vest in the employer and employee are
critical to the patent system's goal of stimulating inventive activity.
An employee owns the patent rights to his or her inventions conceived during
the course of employment with two exceptions. First, if an employee was
initially hired [FN61] or later directed [FN62] by the employer to solve
a specific problem or to exercise his or her inventive skills, then the
employee must assign the patent rights to his or her employer. Second, the
employer is entitled to the patent rights if the employee signed a contract
agreeing to assign the patent rights to the employer. [FN63] This framework
forms the starting point from which the law regarding patent ownership in
an employer-employee relationship begins.
Absent a preinvention assignment agreement or any evidence that the employee
was hired to invent, an employer whose employee uses the employer's resources
to conceive, [FN64] or reduce to practice, an invention acquires a "shop
right." The shop right doctrine equitably splits the patent rights
between the inventor and his employer, rather than give one party all the
rights. [FN65] The shop right gives the employer a nonexclusive, royalty-free,
nontransferable license to make, use, and sell the invention. [FN66] The
doctrine does not provide the employer with an ownership interest since
the employee, as the patentee, retains all other rights, including licensing
and filing of infringement suits. The shop right continues for the life
of the patent even if the employee-inventor leaves the place of employment.
An employee who uses any amount of his employer's time, equipment, or facilities
to develop an invention impliedly gives the employer shop rights in the
invention. [FN67]
Due to its inalienability, the shop right is significantly less valuable
to employers than the full ownership interest in the patent. Therefore,
in an effort to ensure ownership rights in their employees' inventions,
most employers draft preinvention assignment agreements. These agreements
are standard form contracts in which an employee agrees to assign rights
in all inventions made during the term of employment to his or her employer
in exchange for a salary and continued employment. The agreements substitute
private contractual terms for the disclosure-protection balance struck in
patent law.
The standard allocation of ownership--from employee to employer--that preinvention
assignment agreements accomplish may frustrate the employees' incentives
to maximize their inventive faculties beyond the scope of their jobs. [FN68]
This frustration exists because the incentive to create, in the form of
added compensation for innovative productivity, is not so direct. [FN69]
Regardless of the efficiency, employers continue to use these contracts.
Because the employer has a superior bargaining position, some of the early
decisions on the issue viewed the agreements as too overbearing. [FN70]
Today, however, courts agree that an employee and employer may enter into
a binding agreement where the employee agrees to assign interests in future
inventions to the employer. Although preinvention assignment agreements
are standard in most inventive employment today, they still raise uneasy
issues of contract law. Oddly enough, they are usually enforced [FN71] in
order to avoid a number of difficult contract issues such as adhesion, [FN72]
unconscionability, [FN73] adequacy of consideration, [FN74] and freedom
of contract. [FN75]
2. Copyright Law's Work-For-Hire Doctrine and Contractual Assignments
Ownership issues regarding employee-generated copyrighted works are primarily
governed by the work-for-hire doctrine found in s 101 of the Copyright Act
of 1976. A work made for hire usually consists of those works created by
employees within the scope of their employment. [FN76] The copyright in
such a work vests in the employer, who is considered the author for statutory
purposes and owns all of the exclusive rights that accompany a copyright,
unless an agreement to the contrary exists. [FN77] The work-for-hire doctrine
is substantively equivalent to the hired-to-invent doctrine. [FN78] Whether
the copyrightable material produced by an employee is a work for hire is
critical in determining who owns the exclusive rights. In an effort to avoid
conflicts, employers often draft, and require their employees to sign, contractual
assignment agreements which act as the mechanism for transferring those
copyrights vesting initially in the employee to the employer. These agreements
suffer the same difficulties that the preinvention assignment agreements
suffer in patent law. [FN79]
While the contractual assignment agreements share the same difficulties
regardless of whether the context is patents or copyrights, and the work-for-
hire doctrine in copyright law is substantively indistinguishable from patent
law's hired-to-invent doctrine, copyright law clearly lacks a doctrine even
remotely analogous to patent law's shop right doctrine. Although the shop
right often proves to be profitless to the employer in the patent law context,
[FN80] an extension of the doctrine into copyright law may prove to be of
some value to the university-employer. [FN81] A discussion and analysis
of an extension of the shop right doctrine into copyright law is beyond
the scope of this Note. It suffices to say that under the current system
of assigning ownership rights within employer-employee relationships, the
employer is clearly in a better position.
III. OWNERSHIP OF FACULTY-GENERATED INTELLECTUAL PROPERTY
For years, both faculty and university administrators assumed that the
university, as the employer, owned the faculty's research. [FN82] It was
not until professors actually became aware of their inherent legal right
to their creations that they began to voice their displeasure. These cries
often went unheard, however, until faculty organized their own committees
and took part in the revision process of university intellectual property
policies. The current system of ownership in faculty-generated inventions
is not perfect. The following overview will cite some of the problems in
the universities' claims to ownership in faculty-generated creations.
A. Patents
In addition to their teaching and administrative duties, most professors
are hired to conduct research within a specified discipline that draws on
the inputs of other professors, students, and other university resources.
In conducting research, professors may create patentable subject matter.
The university justifies its ownership claim to these patents by arguing
that faculty who use university equipment, time, and personnel in developing
their inventions should be classified as employees hired to invent. [FN83]
The United States Supreme Court elaborated on the hired-to- invent doctrine
and its applicability in United States v. Dubilier Condenser Corp., [FN84]
when Justice Roberts stated that: One employed to make an invention, who
succeeds, during his term of service, in accomplishing that task, is bound
to assign to his employer any patent obtained. The reason is that he has
only produced that which he was employed to invent. His invention is the
precise subject of the contract of employment. A term of the agreement necessarily
is that what he is paid to produce belongs to his paymaster. On the other
hand, if the employment is general, albeit it cover a field of labor and
effort in the performance of which the employee conceived the invention
for which he obtained a patent, the contract is not so broadly construed
as to require an assignment of the patent. [FN85]
The broad assertion that one is hired to invent is tenuous because employment
contracts rarely detail what an employee is hired to invent. Moreover, if
the employee develops a patentable invention years after commencing employment,
the employer's assertion will act to unfairly appropriate from the employee
rights in an invention that may not even remotely resemble the character
of the invention sought when the employment contract was formed. It is now
accepted, however, that so long as the employee's contract of employment
defines the area of activity with sufficient specificity, the employer will
own inventions where the employee is "employed to plan and conduct
fundamental and practical investigations" that lead to an invention.
[FN86]
The issue of whether faculty are, as a class, hired to invent, is unsettled
and hinges on the facts of each case. [FN87] In those cases where faculty
are not deemed to have been hired to invent, universities consistently claim
that use of university facilities or equipment, resources such as graduate
students, and funds for filing patent applications are sufficient grounds
for forcing faculty to relinquish their ownership interests. Although the
university has a strong claim to a shop right in the invention, [FN88] it
is the control of the invention above and beyond the shop right, in the
form of an ownership interest in the patent, that is the lucrative component.
A university rarely has the facilities, resources, and general know-how
to market the invention and, therefore, cannot gain the economic rewards
that accompany an invention's exploitation. [FN89] Moreover, a university
by law may not take full advantage of the shop right doctrine in the form
of commercial sales if it is not in the business of dealing in such a manner.
Ownership of the patent provides the legal right to license the invention
to others who have the facilities, resources, and marketing skills to exploit
the invention. The patent owner enjoys the rewards of the licensing schemes
while the employer retains the shop right, which is a less economically
significant interest, especially for a university.
A university's claim to ownership interests in a faculty-generated creation
should fail for three reasons. First, faculty rarely agree explicitly to
trade their use of university resources for the university's right to own
the proprietary rights in their creations. [FN90] Second, the basic provisions
of a faculty member's employment are usually negotiated through written
correspondence that normally only outlines job responsibilities and rarely
discusses research projects. [FN91] The written correspondence, therefore,
lacks specific language that could support a conclusion that the faculty
member has been hired to invent or that the faculty member agreed to assign
rights in his or her research. [FN92] Third, assuming arguendo the fact
that this specific language exists, it should be construed against the university
since the university drafted the contract. [FN93] Although the three reasons
set forth here support a conclusion that faculty, and not the university,
own faculty-generated inventions, it should come as no surprise that universities,
as the employers, exert ownership rights.
Most faculty are not only unaware that, as a matter of law, they have original
ownership rights to many of their creations, but are also unaware of their
rights constituting such ownership. [FN94] Moreover, universities have an
economic interest in keeping this vital legal information from faculty members.
Therefore, faculty could argue that there is no meeting of the minds between
the university and themselves, one of the first requirements for a binding
contract. [FN95] These additional facts also support the conclusion that
the university lacks the authority to assert an ownership interest in the
invention beyond that of a shop right. [FN96] However, one university technology
transfer administrator recently noted: "You've got to understand the
way it is at universities. Universities do not look at legal niceties. Their
attitude is that faculty won't sue them. Like in business, the university
is the employer and they own faculty work. On the other hand, they do not
want to push the issue since some really vocal faculty might complain. Most
faculty are oblivious to their rights. [Even] if they did know their rights,
they would be afraid to push it ... so the university's position is not
tested." [FN97]
The same hired-to-invent arguments universities assert to support their
claim to ownership in faculty-generated inventions are also asserted in
defense of their use of preinvention assignment agreements. However, the
advent of state employee-invention statutes may begin to limit the enforceability
of preinvention assignment agreements in these contexts. [FN98] These statutes
void any preinvention assignment agreement that requires an employee to
assign to the employer rights in those inventions created without the use
of any of the employer's resources, supplies, or equipment or those inventions
that are developed on the employee's own time, or that are unrelated to
the employer's actual or potential research areas. Even if these statutory
regulations do not ease the inequities, the faculty member, like any other
inventor, may still dedicate the invention to the public by disclosing the
invention in one of a variety of ways, such as disclosing the description
and details of the invention in a printed publication. [FN99]
Aside from the traditional difficulties that employees face confronting
the preinvention assignment agreements and hired-to-invent doctrine, a professor's
plight is pronounced in one significant way: The nature of the university-professor
relationship is different from the ordinary employer-employee relationship.
The professor opts to forgo the fast-paced and often stressful environment
found in an industrial research and development department and the high
salary that accompanies that position. Instead, professors are attracted
to the chance to pursue similar interests in an academic arena where they
are also endowed with freedom to research topics of their choice. Because
faculty research schedules are considered the professor's own prerogative,
the university, as the employer, has a weaker case when it asserts that
the faculty member was hired to invent. University employment contracts,
as do most employment contracts, fail to detail what the faculty-employee
is hired to invent; in addition, they cannot detail what the faculty member's
research agenda will be. Therefore, the university's claim under the hired-to-invent
doctrine is substantially weaker than a similar claim by a nonacademic employer.
B. Copyrights
Despite the inapplicability of the hired-to-invent doctrine in the university-faculty
context, and notwithstanding the similarities between the hired-to-invent
doctrine and copyright law's work-for-hire doctrine, [FN100] a professor's
copyrightable creations can be considered works for hire. Along with their
teaching and administrative duties, professors are hired to conduct research.
The nature of the profession creates the expectation that professors will,
at least, publish works in their field of interest. [FN101] The frequency
with which a faculty member publishes and the quality of such publications
have now become two criteria upon which tenure and salary decisions are
made. Such an expectation rises to the level of a job responsibility; therefore,
faculty- created works may be seen as works for hire since the university
insisted upon their generation. [FN102]
A faculty member may object to the work-for-hire doctrine, arguing that
the university employment contract not only fails to detail what the faculty-
employee is hired to publish, but cannot detail what the faculty member's
research agenda will be due to the academic freedom that faculty enjoy.
This objection, however, falls on deaf ears since application of the work-for-hire
doctrine is not contingent upon the employer detailing in advance what the
employee is hired to create. [FN103]
Those who believe that university faculty are hired to teach and conduct
research, but are not bestowed with a duty to produce copyrightable works
for their university, maintain that universities lack the power to control
the production of such works without violating the principles of academic
freedom. [FN104] Moreover, faculty-generated copyrightable computer programs
and software do not fall within the scope of employment since they are rarely
prepared for the direct use by, or benefit of, the university. This view
is consistent with the academic researcher exception to the work-for-hire
doctrine under the Copyright Act of 1909. [FN105] Because the Copyright
Act of 1976 is simply a codification of federal copyright law as it stood
in 1976, some argue that the academic researcher exception survived the
1976 Act due to a failure to explicitly remove it. [FN106]
Because a faculty work may not be deemed work for hire, thereby bestowing
the faculty with the ownership rights in the copyright, [FN107] universities
may require their faculty to assign the ownership of all copyrights in works
created during the course of employment. Such a requirement could take the
form of a contract clause similar to the preinvention assignment agreement.
Courts consistently enforce these clauses notwithstanding the fact that
they often raise the same difficult contract issues that preinvention assignment
agreements raise. [FN108] The professor may transfer the copyright only
by a writing that complies with s 204(a) of the 1976 Act. Written intellectual
property policies in which universities assert ownership of certain works
may satisfy the s 204(a) requirements if they are incorporated by reference
in the employment contract signed by the parties. [FN109] If the faculty
work is indeed a work for hire then, under s 201(b), the copyright vests
in the university upon the creation of the work. [FN110]
IV. OWNERSHIP OF STUDENT-GENERATED INTELLECTUAL PROPERTY
Although today's faculty enjoy more of the benefits that accompany ownership
rights in intellectual property, the system is not perfect. The issues discussed
in Part III, along with others, exist when considering the ownership rights
to which graduate students are entitled in student-generated creations.
This Part examines those same issues and discusses the justifications universities
assert in support of their claim to ownership rights in student- generated
inventions. Part IV.A states the reasons why graduate students are not "employees"
and, as a result, are not subject to the hired-to-invent or work-for-hire
doctrines. Part IV.B examines the university's administration of intellectual
property policies and how it may be stifling the creativity of students.
Part IV.C explains why a university's use of preinvention assignment agreements
should not bind a student.
A. Students, Not Employees
Courts generally hold that when the student creates material entitled to
protection under federal intellectual property laws while engaged in educational
or training activities, "the autonomy of the university prevails and
the student is not afforded the status of employee." [FN111] The student
is just that--a student. Thus, in most educational settings the student
will not be classified as an employee. The fact that the university-student
relationship is not an employer-employee relationship precludes a conclusion
that the university may be entitled to the student-generated patentable
invention under the hired-to-invent doctrine. [FN112]
In a typical application of the doctrine, an employee gives the employer
rights in the future inventions and the accompanying patent rights in exchange
for employment. The student, however, does not agree to relinquish the patent
rights in a student-generated invention in exchange for a stipend, laboratory
exposure, and classroom instruction. The student more likely believes that
his or her participation in aiding the faculty in their research and instructional
duties is the quid pro quo for the stipend, laboratory exposure, and classroom
instruction.
Although graduate students are frequently paid stipends to defray the costs
of tuition, these stipends are not analogous to the compensation an employee
might receive. The student's purpose in her affiliation with the university
is first, and most importantly, educational. The work in which the student
participates should be viewed as part of the educational experience because
that work is typically conducted in pursuit of degree certification requirements.
The graduate student is unlike a professor in that the student, while she
may be expected to "work" as a research aide or teaching assistant,
does not have clearly defined responsibilities. Moreover, unlike a faculty
member, the graduate student is not expected to generate, on a regular basis,
the type of information expected of a professor.
The issue of whether a student is an employee of the university usually
arises when the student attempts to take advantage of workers' compensation
benefits. In these cases, courts define "employee" very narrowly.
These judicial definitions are typically based on the specific facts of
each case and the corresponding areas of law such as agency law, [FN113]
the Fair Labor Standards Act, [FN114] and federal and state tax law, [FN115]
to name a few. Considering the nature of graduate students' relationship
with their university--the primary purpose being educational, the short-term
relationship, and no clearly defined responsibilities other than successful
completion of degree certification program--the graduate student simply
does not fit the definition of an employee hired to invent or create. [FN116]
B. Graduate Students' Diminished Incentives to Create
Students choosing universities, and in particular graduate departments,
base their decisions upon the congruence between personal interests and
the substance of the graduate program. The prospective graduate student
possessing a bachelor's degree in chemical engineering may choose school
A over school B due to the former's concentration in chemical kinetics.
Another student may chose school B over school A due to school B's concentration
in thermodynamics. While students faced with a choice of schools consider
the substance of the programs offered, they normally do not take into consideration
the intellectual property policy that each university enforces. Most graduate
program brochures do not even discuss such policies. Students discover these
policies at the most inopportune moments: when beginning research, while
conducting research, or upon the realization that they have developed subject
matter worthy of protection under federal patent or copyright law. Perhaps
this should come as no surprise to students. After all, nearly all universities
administer policies in one form or another. What seems surprising, however,
is that universities claim full ownership rights in these student-generated
creations while lacking the legal authority to do so.
A graduate student whose university chooses to rely solely on its patent
policy to claim an ownership interest in the invention can make two strong
arguments. First, the student can argue that the university's failure to
issue copies of its policy in a timely manner [FN117] precludes it from
asserting an ownership interest. Providing a copy of the policy just before
the student begins the activities which lead to the invention unfairly puts
the student in a difficult position. Most students have no need to give
the policy a second look since they do not know beforehand whether they
will ever create anything patentable. Furthermore, the nature of patentable
subject matter itself, which contains "nonobviousness" as a prerequisite
to a patent grant, [FN118] makes the future need for patent acquisition
an unanticipated event. Second, the student can argue that the element of
unconscionability precludes any assignment in interest. To say that the
university enjoys a superior bargaining position would be an understatement.
The student who is aware of her potential to create some sort of material
worthy of patent protection is in no position to bargain with the university
over ownership rights.
The consequences of waiting to give students notice of the policy until
after they have chosen to enroll in the university's program leaves the
student with two options: she can either leave the program or continue with
the program. The former is hardly an option, since the student must expend
time and money to apply to another university, thus delaying graduation,
not to mention the fact that whatever university she settles on will no
doubt enforce a similar policy. The latter option, acknowledging the policy
and continuing with the program, creates two possible results. First, the
student and her desire to maximize her creative potential may be undisturbed.
In such a case, the university and society would be the clear winners should
the student create patentable subject matter. The student, however, is the
loser since the rewards that she rightfully deserves now belong to the university.
If, on the other hand, the student and her determination to maximize her
creative potential become inhibited, society would miss out on the prompt
disclosure of the student's idea. [FN119] The university also fails in its
mission to encourage the generation and dissemination of knowledge for the
benefit of the university community and society as a whole. The student,
by concealing her invention until after her relationship with the university
ends, risks only the possibility that other inventors, through their own
independent creation, may patent the invention first. This is a risk the
student may be willing to take, since this is the only way for her to enjoy
the rewards of her mental labor. [FN120]
C. The Inequities and Inapplicability of Preinvention Assignment Agreements
The possibility that one student in a group of one hundred will develop
a patentable invention may or may not be high; however, the likelihood that
a particular student will develop a patentable invention is much lower.
Because predicting which student out of the group of one hundred may invent
patentable subject matter is too difficult, a university might require all
one hundred to sign preinvention assignment agreements. [FN121] Currently,
students are typically not required to sign intellectual property assignment
agreements unless employed as research assistants. [FN122]
Those universities which require, or might require, their students to sign
preinvention assignment agreements as a prerequisite to participating in
laboratory and research activities may partially avoid the stigma of inequitable
conduct discussed above if the agreements are presented and signed in a
timely manner. [FN123] However, the preinvention assignment agreement in
the university/student context cannot elude the difficult contract issues
of adhesion, unconscionability, adequacy of consideration, and freedom of
contract discussed above. [FN124] The fact that the parties are a university
and a student, as opposed to an employer and an employee, only exacerbates
an already troublesome form of assigning ownership rights. The elements
of adhesion and unconscionability are more identifiable here than in the
case of a university- faculty relationship since faculty are, at the least,
in a better position to bargain with their university. [FN125]
The adequacy of consideration is also an issue in a university-student
relationship. The student's primary purpose in her affiliation with a university
is educational. The student typically agrees to participate as a research
or teaching assistant in exchange for the exposure to a research atmosphere
and educational experience. Allocating the ownership rights in a student-generated
invention absent additional consideration does not appear justifiable. A
student, who on her own time and effort, uses university laboratory equipment
and computers to conceive or develop an invention appears to inflict little
harm on the university. In fact, the student's actions are consistent with
a university goal of generating knowledge for the benefit of society. The
expense a university incurs is the risk of liability for any damage to the
resources or injury to the student. Universities, no doubt, view the continued
exposure to research activities and classroom instruction as adequate consideration
for an assignment of ownership rights. This view is defective, however,
since the student who fails to develop a patentable invention is never held
liable to the university for a breach of contract. [FN126]
The issue of freedom to contract invariably arises when universities require
students to sign preinvention assignment agreements. Parity in bargaining
power, typically found when freedom to contract exists, is usually absent
in the employer-employee relationship since most standard employment contracts
are offered on a take-it-or-leave-it basis. [FN127] The offer of admission
into a university certified degree program is a standard invitation also
offered on a similar take-it-or-leave-it basis. Because the student will
encounter the same sorts of agreements at other universities, she too lacks
the equality in bargaining power an employee lacks.
There are three conclusions to be drawn from this Part. First, unless the
student is an employee of the university hired to use her creative or inventive
skills, the university should have no ownership claim in the intellectual
property created by the student regardless of whether the student used university
resources and supplies. The university, at most, may acquire a shop right
in such an instance. Second, current university intellectual property policies
may be inhibiting rather than stimulating creativity among graduate students.
Third, the preinvention assignment agreements, which raise complex and troublesome
issues of contract law in the employer-employee relationship, are no more
justifiable in the university-student relationship since the student is
in no better a position than a faculty member when he negotiates his rights.
Under current patent, copyright, and contract law, graduate students have
a much stronger case for ownership rights than do faculty. However, in the
university community students enjoy practically no rights.
V. RECOGNIZING GRADUATE STUDENTS' OWNERSHIP RIGHTS IN INTELLECTUAL PROPERTY
This part of the Note sets forth additional arguments for providing graduate
students with ownership and attribution rights in intellectual property.
Part V.A provides nonlegal reasons for recognizing graduate students' rights.
Part V.B suggests that university administrators and professors should take
the initiative to change the current system since they are in the best position
to do so and maintain a strong interest in ensuring the continued flow of
research grant monies. Part V.C dispels some of the contingencies that would
accompany individual student ownership and management of intellectual property.
Finally, Part V.D examines some of the harsh financial consequences of universities'
failure to recognize graduate students' ownership rights in patents and
copyrights.
A. Fairness and Equity
So far, this Note has focused on the legal reasons why students are entitled
to ownership in student-generated intellectual property. In addition to
these legal reasons are arguments of fairness and equity. Although the graduate
student did not enroll in a graduate degree program to create or invent
anything, the university should not inhibit whatever creativity the student
may possess. The allocation of ownership rights in student-generated intellectual
property from the student to the university does just that. Rewarding the
student with high grades for her work in developing patentable subject matter
is little consolation when the university is receiving millions of dollars
for the student-generated invention. The student created the work that was
entitled to protection; therefore, it is only fair that the student should
reap the rewards of her creation.
Universities are not the sole perpetrators of inequities. Consider the
situation where a graduate student conducts years of research under the
supervision of an absentee faculty advisor. If the student develops a patentable
invention, the faculty advisor may claim some ownership right in the invention.
Under the current university system of allocating ownership rights, the
university and the professor would share in the licensing and royalties.
The student would be left with little more than the gratification that comes
from participating in a successful research endeavor. This is not to suggest
that faculty are taking ownership rights from students. [FN128] If the faculty's
claim fails, because the university learns it was the student who was responsible
for the invention, the university will exert full ownership rights in the
intellectual property. It is just another example of how students are not
reaping where they have sown. Ultimately, this limits the generation and
dissemination of knowledge, and inhibits creativity and inventive activity.
The Constitution gave Congress the power to promote the progress of science
and useful arts. Congress exercised this power by enacting the Patent Act
of 1952 and the Copyright Act of 1976. These Acts provide individuals with
the incentives to invest their time and effort to create for the benefit
of society. The current system of ownership rights in student-generated
inventions is inconsistent with the underlying theme of promoting the progress
of science and useful arts. The following Parts suggest that the only fair
way to recognize graduate students' intellectual contribution to society
is to provide them with the ownership and attribution that accompany other
inventors and creators. Providing graduate students with these rights gives
them the incentive to contribute even more. Moreover, because the nation
is currently turning more frequently to universities for technological advances,
recognizing these rights will not disturb the role universities play.
B. A Transformation from Within the System to Account for Students
For years, universities treated faculty-generated intellectual property
as its own. As a result of universities' organizational frameworks, policy
changes did not begin until professors and research sponsors objected. Today,
most universities cite their cooperation with faculty commissions as the
means to developing more equitable intellectual property policies. University
professors' efforts in consolidating their individual goals and concerns,
as well as the fact that they are, after all, employees, provided them with
the ability to form committees that forced changes in the old intellectual
property policies. Graduate students, on the other hand, face problems that
faculty did not have to consider.
Because graduate students are not employees, [FN129] they retain even less
bargaining power regarding ownership rights than faculty. Due in part to
the fact that they are not employees, graduate students are severely limited
in their ability to form an organization or committee that could oversee
their rights. Another reason for this limitation is that graduate students
are affiliated with the university for a relatively short period of time.
Their inability to organize makes negotiating for equitable intellectual
property policies even more difficult.
As a result of the graduate students' bargaining limitations, the university
and its professors should consider the plight of graduate students when
revising the policies. Such a suggestion may be fanciful, especially since
it seems unlikely that faculty would advocate for greater rights for students
than they currently receive. Considering that all professors once stood
in the same position in which their students stand today, however, this
suggestion may not be so whimsical. Professors can recognize some of the
frustrations graduate students endure since they may have encountered the
same difficulties when they were students.
Through design courses which integrate a student's education and ingenuity,
students are challenged to find solutions to difficult problems: They may
attempt to reduce sulfur dioxide emissions from coal-gassified power plants,
optimize cooling modules for railroad electric motor controllers, or develop
innovative engineering techniques to adapt cars for cold weather environments.
[FN130] Inspired by the allure of realizing the potential of their designs,
students spend many hours working on these projects. The traditional demands
of homework assignments and exams, coupled with serious time constraints
such as the intense design experience and teaching assignments, can make
the student's life very stressful. [FN131]
There is no evidence that universities and faculty recognize the existence
of these new demands on students. In fact, graduate students often spend
time investigating all conceivable avenues of a particular research topic
in pursuit of their certification because universities recognize that these
students comprise a constant supply of cheap teaching and research labor.
In this sense, the student is at the mercy of the program. The university
enjoys the economic rewards of the labor, while the advising professor may
prosper through academic recognition in the scientific community. Students
may feel some sort of satisfaction for simply having taken part in successful
research projects. However, they undoubtedly feel that the years spent on
the research are surely worth more than a feeling of satisfaction. Universities
are simply "deriving the profit from all these bright, dedicated young
people, then throwing them away like yesterday's newspaper because there
are more coming." [FN132] Faculty and universities must begin to realize
these new problems when evaluating the current system [FN133] of ownership
of student-generated intellectual property.
C. Individual Student Ownership & Management
Student ownership of intellectual property would not come without problems.
The conflicts of interest, the financial support to administer patent protection,
marketing, and the effect on traditional industry-university and government-university
relationships are all areas of concern that could derail any attempt to
allocate ownership rights to individuals. As long as a student's intellectual
property is distributed in a manner consistent with university commitments,
however, the student should encounter few problems in managing her intellectual
property.
With individual ownership comes the responsibility of managing the property.
This becomes rather costly and tests the student's ability to finance the
process, which university technology transfer offices now handle. [FN134]
These offices provide assistance in patent administration, product assessment,
market evaluation, and licensing of products, with minimal financial return.
The mere fact that now a student, instead of a university, owns the intellectual
property rights should not affect the role of a technology transfer office.
The cost of using the services the offices provide can be collected through
the profits derived from licensing schemes in much the same way office personnel
are currently funded.
After a product assessment and market evaluation, the technology transfer
office could refuse to allocate its resources to those inventions and creations
which it believes will not be worth its time and effort. A student who disagrees
with the office's assessment would be free to solicit firms, agents, and
brokers to market the invention. Universities may take a paternalistic view
that students will render themselves vulnerable to unscrupulous brokers
who will take advantage of the students. However, if the invention, based
on the technology transfer office's assessment, is not exploitable, then
students will not be vulnerable since there is nothing to exploit. If, on
the other hand, there is the potential for financial gain through the exploitation
of the invention, then the university technology transfer office should
accept the duty to market the invention. The technology transfer office's
involvement in the marketing process and its affiliation with the university
will attract industry and other developers to invest their resources with
the university's research teams. Under such a system, the university does
not lose anything that it is legally entitled to, while the student retains
the intellectual property rights and the accompanying financial benefits.
D. Student-University Joint Ownership
In general, inventors are those who create patentable subject matter. [FN135]
A joint invention is the product of a collaboration of the inventive ventures
of two or more individuals working toward the same end and producing patentable
subject matter through their combined efforts. [FN136] The entire inventive
concept need not occur to each, nor must each physically work on the project
with the others or put forth a reciprocating effort. [FN137] Joint inventorship
requires only some quantum of collaboration or connection between inventors.
[FN138] However, simply carrying out procedures assigned by another or reducing
an idea to practice is not enough to establish joint inventorship. Joint
inventors of patentable subject matter become joint owners of the patent
upon its issuance; therefore, each individually enjoys the limited monopoly
rights, free of any duty to account for profits received, that accompany
all patents. [FN139]
The student collaborator who acts as one of a group of principal investigators
in the development of a patentable invention and makes significant contributions
to the final product may legally be entitled to all of the rights of co-ownership.
A university's refusal to include the student in royalty and licensing revenue
agreements may backfire. A graduate student who is a named inventor on a
patent, or who fits the legal definition of an inventor under 35 U.S.C.
s 116 is in a very powerful position that universities may fail to consider.
In both of the scenarios, the student may refuse to assign his or her rights
in the patent and, thus, may be able to destroy the university's expected
licensing agreements due to the unaccountability. Under no duty to account
to the university as a co-owner, the student may be able to license the
invention to a competitor of the university's licensee and undercut the
university's licensing fee. [FN140] Thus, it is easy to see how a student
could destroy the value of a license to a potential licensee of the university.
These conflicts are further exacerbated when the joint inventors and co-owners
of a patent do not share the same economic or long-range goals. [FN141]
Complications also arise when graduate students make significant contributions
to copyrightable computer programs and software. Whether or not a student
can claim joint authorship depends in part upon the amount of contribution
the student makes to the copyrightable expression [FN142] and, in part,
upon the view that courts adopt regarding the intent to merge the contribution
into the copyrightable work at the time of creation. [FN143] The contribution
must be copyrightable expression, not just simply ideas. [FN144] The joint
author of a copyrighted work automatically acquires an undivided interest
in the entire work along with the power to license it. Joint authors of
copyrighted works, unlike joint owners of a patent, must account to one
another for profits received as a result of licensing the work. [FN145]
When students and faculty join their inventive and creative efforts to
compose a computer program, the students, as co-authors, become co-owners
of the copyright and control its commercial exploitation. The faculty member
may have assigned the rights in the copyright as part of the employment
agreement; the nonemployee student, however, has not. The university finds
itself in a difficult position. [FN146] In this situation courts have begun
to consider a graduate student's contribution as an employee work for hire
rather than as a joint work. [FN147] This is inconsistent simply because
the student is not an employee. [FN148]
CONCLUSION
The Founders believed that creativity and innovation could be fostered
best when individuals are motivated to work and are compensated for the
fruits of their labor based on their productivity. This canon has not disappeared
over the past two hundred years. The inventive process has become the most
significant factor in economic growth. [FN149] The trend in university intellectual
property policies to reward faculty for their creations shows that universities
recognize the correlation between the motivation to work, the compensation,
and economic growth. Due to students' nonemployee status and their inability
to organize a force that can act to negotiate equitable ownership policies,
faculty and university administrators need to consider the inequities students
face today. Although the move to a more student-friendly policy will raise
new issues, such issues should not discourage universities from changing.
Having already adopted more faculty-friendly policies, universities have
the ability to manage the change.
The legal right of an inventor in his or her invention should not be seen
as a threat to the financial structure of university research. Ultimately,
the university is an institution of higher learning and the rewards of fruitful
research should be seen as an incidental effect, not a long-term result.
Recognizing a student's legal right in his or her creation encourages the
student to set higher goals.
Today's graduate students play a vital role in the overall framework of
research and development in the United States. There is no justifiable reason
why graduate students should not be recognized with ownership interests
in their intellectual property. Such recognition will provide students with
favorable impressions of their universities. Ultimately, these students,
in their capacity as industry researchers, can act as key links in the distribution
of future research grants, thereby providing universities with a consistent
source of funds.
FNd1. (c) Copyright 1995 by Sandip H. Patel.
FNa1. J.D. Candidate, 1996, Indiana University School of Law--Bloomington;
B.S.Ch.E., 1993, Michigan State University. Special thanks to Professor
Fred Cate and attorneys T. Sam Choo, Gary Cohn, John Roberts, and Reid Willis
for their comments on earlier drafts of this Note. I would also like to
thank my parents for their support and encouragement.
FN1. A study by the National Science Board indicates: [D]octoral graduates
who are employed in industry may serve as key links in initiating cooperative
research efforts with their former university. The familiarity of these
graduates with the capabilities and interests of their former professors
and with the needs of their employers makes them highly desirable as initiators
of university/industry research collaboration. It is not uncommon for a
former graduate student to call his major professor and propose a joint
research effort. NATIONAL SCIENCE BOARD, UNIVERSITY-INDUSTRY RESEARCH RELATIONSHIPS
94 (1982).
FN2. See, e.g., Dan Moreau, Good Jobs for Fresh Grads, KIPLINGER'S PERS.
FIN. MAG.; Mar. 1995, at 110, 112.
FN3. See William J. Cook & Gary Cohen, Made in America Comes Back: Manufacturing
Is the New Hot Button at Leading Engineering Schools, U.S. NEWS & WORLD
REP., Mar. 23, 1992, at 81, 84.
FN4. The Author's frequent references to chemical engineering programs do
not imply that the issues and problems discussed in this Note are limited
to those programs. Indeed, they are equally germane to all of the engineering
and natural science fields of study.
FN5. Wolfgang K. H. Panofsky, Big Science and Graduate Education, in SCIENCE
POLICY AND THE UNIVERSITY 189, 193 (Harold Orlans ed., 1968). The student's
participation in research provides him or her with another source for learning
"the techniques that exist only in research involving genuinely new
questions and [how] to make judgments in the choice of research problems,
tools, and methods." Id.
FN6. "The combined federal basic and applied research investment reached
an estimated $28 billion in fiscal year 1993. A large fraction of it--37
percent, including one-half of the basic research total and one-fourth of
the applied research total--was carried out in the Nation's universities
and colleges." NATIONAL SCIENCE BOARD, SCIENCE & ENGINEERING INDICATORS
107 (1993).
FN7. Monsanto has given almost $100 million to Washington University for
biological research and first refusal rights on patentable inventions arising
from the work it funds. Tim Beardsley, Trends in Biological Research: Big
Time Biology, SCI. AM., Nov. 1994, at 90, 92A. As of February, 1990, Monsanto's
generous support had funded over 50 research projects and had yielded over
40 patents or patent-pending discoveries. Naomi Freundlich, Why Monsanto
Keeps Going Back To School, BUS. WK., Feb. 5, 1990, at 63. Monsanto also
has given Harvard Medical School $23 million, in addition to a sizable donation
to the Harvard endowment, to support the work of medical scientists involved
in fundamental cell research related to understanding the development of
tumors. NATIONAL SCIENCE BOARD, supra note 1, at 43. In 1980, the Exxon
Corporation began providing the Massachusetts Institute of Technology with
$8 million to support basic research in combustion processes related to
the burning of coal, coal liquids, shale oil, and heavy crude oil. Id. at
43-44. The fruits of research endeavors independent of industry or government
funds also boast hefty economic figures. For instance, the popular drink
"Gatorade" has brought the University of Florida over $21 million
since 1973, when faculty researchers invented and tested the drink's ability
to replenish nutrients lost through perspiration. Jack Wheat, In the Lab:
"The Next Gatorade" Means to University Researchers What the National
Championship Does to Many Sports Fans, MIAMI HERALD, Jan. 24, 1993, at 6B.
According to Dr. Frederic Erbisch, the director of Michigan State University's
Office of Intellectual Property, the university has received over $13 million
annually since 1993 from patent licensing and royalties of the world's leading
anti-cancer drugs, Cisplatin and Carboplatin, which were invented by the
university's researchers. Tom Henderson, The State of Technology Transfer,
CORP. DETROIT MAG., July 1995, at 54. Since 1980, the University of California-San
Francisco and Stanford University have received over $100 million in royalties
and licensing revenue from a biological process developed by the universities'
faculty members. See infra note 45. According to the Association of University
Technology Managers, Inc., in 1993 alone, University of California, Stanford
University, Columbia University, University of Wisconsin-Madison, and University
of Washington received over $128 million in royalties from licensing agreements.
Executive Summary and Selected Data Fiscal Years 1993, 1992, and 1991, AUTM
LICENSING SURV., Oct. 1994, at 8. Often the revenue from university-generated
patents goes unnoticed since the inventors, along with university technology
transfer personnel, create businesses to market the invention. The Massachusetts
Institute of Technology, perhaps the most successful of all universities
in this area, has "spun off 836 businesses with sales of $60 billion."
Howard Goodman, University Research: Whose Work Is It, Anyway?, PHILA. INQUIRER,
Sept. 12, 1993, at A1.
FN8. "In constant dollars, academic [research and development] financed
by industry increased an estimated 265 percent from 1980 to 1993."
NATIONAL SCIENCE BOARD, supra note 6, at xxii. Faculty surveyed at the Massachusetts
Institute of Technology, Stanford University, Pennsylvania State University,
and University of California-Berkeley indicate an "increased interest
by industry in funding research and an increased willingness and capacity
of universities to accept such funding, which, by its nature, leads to more
applied research." GARY W. MATKIN, TECHNOLOGY TRANSFER AND THE UNIVERSITY
292 (1990).
FN9. Universities are in the business of educating students and producing
information. The pursuit to commercialize this knowledge is a fundamental
strategy change and may interfere with educational goals at the expense
of students. Former Harvard University president Derek C. Bok believes that
the prospect of technology transfer arouse[s] anxiety on the campus of almost
every distinguished research university ... [and this concern stems] from
an uneasy sense that programs to exploit technological development are likely
to confuse the university's central commitment to the pursuit of knowledge
and learning by introducing into the very heart of academic enterprise a
new and powerful motive--the search for commercial utility and financial
gain. Derek C. Bok, Business and the Academy, HARV. MAG. May-June 1981,
at 23, 26; see also Richard E. Anderson, The Advantages and Risks of Entrepreneurship,
ACADEME, Sept.-Oct. 1990, at 9, 11 (arguing that universities' pursuit of
additional commercial resources creates new risks and alters the university
environment).
FN10. One commentator notes, however, that "many policies contain internal
inconsistencies, undefined terms, and unnecessarily vague language."
Laura G. Lape, Ownership of Copyrightable Works of University Professors:
The Interplay Between the Copyright Act and University Copyright Policies,
37 VILL. L. REV. 223, 256 (1992). However, university copyright policies
show some concern for faculty's interest in their creative works, albeit
in the form of purely symbolic assertions of commitment to academic freedom,
royalty provisions, and through express disclaimers by the university of
copyright in certain works of authorship. Id. at 261. Another commentator
notes that "[p] olicies drafted by universities range all over the
map .... Patent policies ... often require inventors to hand over ownership
and a share of the revenues to the university." D'Vera Cohn, Professors
Invent Collegiate Quandary, WASH. POST, Oct. 22, 1986, at A1, A15.
FN11. Beardsley, supra note 7, at 92A.
FN12. Id.
FN13. Nearly one-fourth of all patents issued to United States academic
institutions since 1969 were awarded in 1990-91. NATIONAL SCIENCE BOARD,
supra note 6, at xxii, 152. This rapid growth "was especially true
in the health and biomedical-related areas and is one indicator of the potential
role played by academic [research and development] in the development of
technology and new products. It may also be an indication of increased interest
by university researchers in the marketplace." Id. at xxii-xxiii.
FN14. NATIONAL SCIENCE BOARD, supra note 1, at 105.
FN15. Id. at 34 (finding that most company representatives cited the access
to high-quality manpower as "the single most important motivator"
underlying their desire to establish joint university/industry research
programs).
FN16. See supra note 7.
FN17. As government funding for university research projects slowly erodes,
universities are frantically seeking and cheerfully welcoming industry grants.
See Derek C. Bok, What's Wrong With Our Universities?, 14 HARV. J.L. &
PUB. POL'Y 305, 316 n.34 (1991) (stating that "universities with successful
[graduate] faculties receive substantial amounts of money to help defray
their overhead expenses while institutions that lack such faculties do not").
FN18. NORTHWESTERN UNIVERSITY, GRADUATE STUDY IN CHEMICAL ENGINEERING 15
(1991) (stating that satisfactory completion of the Ph.D. program usually
requires 4 1/2 to 4 3/4 years); TEXAS A&M UNIVERSITY, GRADUATE CHEMICAL
ENGINEERING 2 (1991) (noting that completion of Ph.D. program may take up
to five years); UNIVERSITY OF NOTRE DAME, CHEMICAL ENGINEERING 23 (1992)
(noting that in recent years, those students who entered the program with
an undergraduate degree in chemical engineering "have completed the
Ph.D. degree requirements in approximately 4 years"); UNIVERSITY OF
WISCONSIN, A TRADITION OF EXCELLENCE IN CHEMICAL ENGINEERING (1992) (pamphlet)
(noting that "most students complete the Ph.D. requirements in 4 to
5 1/2 years"); YALE UNIVERSITY, ENGINEERING AND APPLIED SCIENCE AT
YALE UNIVERSITY: GRADUATE PROGRAM 1992-1993 41 (1992) (stating that "the
upper limit for completing doctoral work is six years"). Many universities
do not set approximate time lengths for their programs. Instead, they leave
open the time commitment and focus on the students' satisfactory completion
of significant research these along with a specified number of course credits.
See, e.g., DARTMOUTH COLLEGE, THAYER SCHOOL OF ENGINEERING: GRADUATE DEGREE
PROGRAMS 14 (1992); LEHIGH UNIVERSITY, GRADUATE STUDY AND RESEARCH IN CHEMICAL
ENGINEERING 4 (1992); THE OHIO STATE UNIVERSITY, GRADUATE SCHOOL BULLETIN
40-41, 58-59 (1992); RICE UNIVERSITY, GRADUATE STUDY IN CHEMICAL ENGINEERING
2-3 (1992); UNIVERSITY OF MASSACHUSETTS AT AMHERST, GRADUATE PROGRAM IN
CHEMICAL ENGINEERING 2-3 (1992); UNIVERSITY OF PITTSBURGH, GRADUATE STUDY:
CHEMICAL AND PETROLEUM ENGINEERING 10 (1992); THE UNIVERSITY OF TEXAS AT
AUSTIN, GRADUATE STUDIES IN THE DEPARTMENT OF CHEMICAL ENGINEERING 15 (1991).
FN19. U.S. CONST. art. I, s 8, cls. 1, 8.
FN20. See 1 WILLIAM C. ROBINSON, THE LAW OF PATENTS FOR USEFUL INVENTIONS
s 33 (Boston, Little, Brown, and Co. 1890).
FN21. Id.
FN22. Id.
FN23. 17 U.S.C. s 102(a) (1994).
FN24. Id. s 102(b).
FN25. Id. s 106 (1994).
FN26. 35 U.S.C. ss 101-103 (1988).
FN27. Id. s 271 (1988 & Supp. V 1993), amended by Pub. L. No. 103-465,
108 Stat. 4809, 4988 (1994).
FN28. An inventor is one who makes "some contribution to the inventive
thought and to the final result" of an invention. Monsanto Co. v. Kamp,
269 F. Supp. 818, 824 (D.D.C. 1967). One who merely suggests an idea without
the means of reducing the idea to practice is not an inventor. Regents of
the Univ. of Cal. v. Synbiotics Corp., 849 F. Supp. 740, 742 (S.D. Cal.
1994).
FN29. The term of a United States patent begins on the date it issues and
ends 20 years from the date on which the application for patent was filed
in the United States. 35 U.S.C. s 154 (1988), amended by Pub. L. No. 103-465,
108 Stat. 4809, 4983-85 (1994).
FN30. Some describe the process of innovation as "the search for, and
the discovery, development, improvement and adoption of new processes, new
products, and new organizational structures and procedures." Thomas
M. Jorde & David J. Teece, Innovation, Cooperation and Antitrust, 4
HIGH TECH. L.J. 1, 5 (1989). Invention, on the other hand, can be defined
as that part of innovation that represents the "discovery" aspect.
Steven Cherensky, A Penny for Their Thoughts: Employee-Inventors, Preinvention
Assignment Agreements, Property, and Personhood, 81 CAL. L. REV. 597, 609
(1993).
FN31. 35 U.S.C. s 101 (1988).
FN32. Id. ss 101-102.
FN33. Id. s 102.
FN34. Id. s 103.
FN35. Id. s 102(a).
FN36. Id. s 102 (a)-(b).
FN37. Brenner v. Manson, 383 U.S. 519 (1966) (holding that until a pharmaceutical
drug's utility to human beings is established, it is of no utility for the
purpose of s 101).
FN38. One seeking to obtain a patent will encounter a minimum wait of one
year from the date the application is filed; often the procedure takes two
years. Jerome S. Gabig, Jr., Federal Research Grants: Who Owns the Intellectual
Property?, 9 HARV. J.L. & PUB. POL'Y 639, 645 (1986). The average cost
of obtaining a single patent is about $10,000. Edward L. MacCordy, The Threat
of Proposed Patent Law Changes to the Research University, 20 J.C. &
U.L. 295, 306 (1994). Due to these high costs, small entities are often
limited to seeking patent protection for only the most economically promising
creations. Id.
FN39. In the context of university-generated research, university technology
transfer offices typically conduct the analysis leading to the conclusion
of whether or not to seek patent protection. These technology transfer offices,
no doubt, are mindful of the fact that "[a]pproximately fifty percent
of all patent litigation that proceeds to judgment results in the patent
being ruled invalid." Gabig, supra note 38, at 645; see also Nicholas
L. Coch & Edward J. FitzPatrick, Due Diligence Required of Exporters
to the U.S., NAT'L L.J., Oct. 23, 1995, at C21 (noting that current statistics
indicate that "patentholders prevail in the Federal Circuit approxmately
80 percent of the time, as compared to a 50 percent victory rate in the
federal district courts").
FN40. 383 U.S. 1 (1966).
FN41. See Bott v. Four Star Corp., 218 U.S.P.Q. (BNA) 358 (E.D. Mich. 1983),
aff'd, 732 F.2d 168 (Fed. Cir. 1984).
FN42. See In re Deminski, 796 F.2d 436 (Fed. Cir. 1983).
FN43. Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693
(Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
FN44. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed.
Cir. 1985) (stating that the obviousness of the invention is judged against
a hypothetical person possessing ordinary skill in the art).
FN45. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (holding that the use
of bacteria to decompose oil was patentable subject matter because the bacteria
were not the product of nature but of human ingenuity and that no patent
statute explicitly excluded living organisms from the scope of patent protection).
Soon after the Chakrabarty decision, Professor Herbert Boyer of the University
of California-San Francisco and Professor Stanley Cohen of Stanford University
received a patent for their method of transplanting functioning genes from
different organisms into bacteria, which could then be grown in large quantities.
What previously could be accomplished only through laborious extraction
procedures from animal or plant tissue could now be produced at will by
using bacteria as the production source. The two biologists assigned their
patent rights to their respective universities, which in turn licensed the
process in exchange for a fee. The patent has generated over $100 million
since 1980. Beardsley, supra note 7, at 92; see also Marjorie Shaffer, University
Patents: When Research Labs Go After Business, N.Y. TIMES, Feb. 23, 1992,
s 3, at 10.
FN46. Diamond v. Diehr, 450 U.S. 175 (1981) (upholding two patent claims:
one for a method of operating a rubbermolding press with the aid of a digital
computer, and another for a method of continuous recalculation that could
not be performed without a computer).
FN47. COPYRIGHT LAW REVISION: REPORT OF THE REGISTER OF COPYRIGHTS ON THE
GENERAL REVISION OF THE U.S. COPYRIGHT LAW, 87th Cong., 1st Sess. pt. 1,
at 3 (1961).
FN48. 17 U.S.C. s 102(a).
FN49. The Copyright Act of 1909 lacked a statutory definition of "author";
however, the United States Supreme Court stated that an author is the person
"to whom anything owes its origin." Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53, 57-58 (1884). Over a century later, the Court,
upon noting the absence of a statutory definition of "author"
under the Copyright Act of 1976, defined an author as "the party who
actually creates the work [by] translat [ing] an idea into a fixed, tangible
expression entitled to copyright protection." Community for Creative
Non-Violence v. Reid, 490 U.S. 730, 737 (1989).
FN50. 17 U.S.C. s 106.
FN51. Id. s 302(a) (1994).
FN52. Id. s 407 (1994). Note, however, that the deposit requirement in s
407 is not a condition precedent to protection. Id. s 407(a). Deposit serves
to preserve remedies in an action for infringement.
FN53. 35 U.S.C. s 102(f).
FN54. H.R. REP. NO. 1476, 94th Cong., 2d Sess. 553 (1976), reprinted in
1976 U.S.C.C.A.N. 5659, 5664-66.
FN55. 17 U.S.C. s 102(a); Feist Publications, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991) (holding that although the amount of creativity necessary
to enjoy copyright protection is minimal, alphabetical listing of names
in the white pages of a telephone book does not satisfy this minimal threshold
of creativity).
FN56. 17 U.S.C. s 102. There is no copyright protection for any fact, "idea,
procedure, process, system, method of operation, concept, principle, or
discovery," regardless of the form in which it is expressed. Id. s
102(b).
FN57. Id. ss 401-405 (1994).
FN58. Cherensky, supra note 30, at 606-07.
FN59. For short biographical information on inventors who succeeded in an
organizational environment, see Constance Holden, Model Systems, 252 SCIENCE
1122, and on independent inventors, see KENNETH A. BROWN, INVENTORS AT WORK:
INTERVIEWS WITH 16 NOTABLE AMERICAN INVENTORS 219 (1988).
FN60. For instance, in 1991, 71% of all patents granted were owned by corporations.
NATIONAL SCIENCE BOARD, supra note 6, at 172.
FN61. United States v. Dubilier Condenser Corp., 289 U.S. 178, 187 (stating
that one hired to invent is bound to assign all patent rights in the invention
to the employer), amended, 289 U.S. 706 (1933); see also infra notes 83-86
and accompanying text.
FN62. See, e.g., Houghton v. United States, 23 F.2d 386, 390 (4th Cir.)
(noting that an employee not specifically hired to invent but later assigned
the task of inventing can make no claim to ownership due to a "duty
which the employee owes to his employer with respect to the service in which
he is engaged"), cert. denied, 277 U.S. 592 (1928).
FN63. Since Standard Parts Co. v. Peck, 264 U.S. 52 (1924), courts have
uniformly determined that, in the absence of an agreement to the contrary,
the employee owns the invention unless the employee was hired to employ
his inventive skills to create the invention at issue.
FN64. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1376 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); Townsend v. Smith,
36 F.2d 292, 295 (C.C.P.A. 1929) (defining a conception as the "definite
and permanent idea of the complete and operative invention as it is thereafter
to be applied in practice that constitutes an available conception within
the meaning of patent law"); see also Burroughs Wellcome Co. v. Barr
Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (stating that a conception
is only final if the "idea is so clearly defined in the inventor's
mind that only ordinary skill would be necessary to reduce the invention
to practice, without extensive research or experimentation").
FN65. But some argue that the principle of equity no longer applies since
it grants employers too valuable a right in exchange for minimal contributions.
Mark B. Baker & Andre J. Brunel, Restructuring the Judicial Evaluation
of Employed Inventors' Rights, 35 ST. LOUIS U. L.J. 399, 407 (1991) (citing
the liberal application of the shop right doctrine as the primary reason
that equitable principles no longer are a justification for the doctrine
and advocating a complete overhaul and transformation of the doctrine to
a more employee-friendly one). Equity is only one of three views justifying
the shop right doctrine. A second view stresses that the shop right is an
implied contract arising from the employee's implied grant of limited rights
in the invention to the employer in exchange for use of the employer's resources.
See id. A third view, introduced by the United States Supreme Court in Gill
v. United States, 160 U.S. 426 (1896), states that an employee, having acquiesced
and participated in the application of the invention in the employer's business,
is thereafter estopped from demanding that the employer cease use of the
invention or that the employer pay royalties. In this situation, estoppel
acts as a complete defense to a patent infringement action brought by an
employee against his employer.
FN66. This is true regardless of whether or not the employee was hired to
invent or employ his creative skills. Note, however, the "employee
who is not hired to invent does not implicitly agree to assign any patent,
even one created through his employment, because his salary is not intended
to be compensation for inventing." Ronald B. Coolley, Recent Changes
in Employee Ownership Laws: Employers May Not Own Their Inventions and Confidential
Information, 41 BUS. LAW. 57, 59 (1985).
FN67. Consolidated Vultee Aircraft Corp. v. Maurice A. Garbell, Inc., 204
F.2d 946 (9th Cir. 1953) (discussing the amount of money necessary to create
a shop right in an employee's invention); Dewey v. American Stair Glide
Corp., 557 S.W.2d 643 (Mo. Ct. App. 1977); Gemco Eng'g & Mfg. Co. v.
Henderson, 84 N.E.2d 596 (Ohio 1949) (stating amount of time spent while
on the job sufficiently gave employer a shop right in the employee's invention);
see also United States v. Dubilier Condenser Corp., 289 U.S. 178, 188-89,
amended, 289 U.S. 706 (1933). Some commentators disapprove of implied contracts
regarding an outright assignment of a patent based solely on the existence
of an employment relationship. See, e.g., 6 DONALD S. CHISUM, PATENTS ss
22-25 to -26 (rev. ed. 1995); 2 PETER D. ROSENBERG, PATENT LAW FUNDAMENTALS
s 11.04 [1] (rev. ed. 1995).
FN68. Baker & Brunel, supra note 65, at 411 (arguing that common law
doctrines governing employee-inventors frustrate inventive activity and
fail to stimulate innovation).
FN69. The patent system still serves its purpose even under this scenario
since it still acts to encourage the employer to generate inventions by
granting exclusive rights in exchange for disclosure. The employer in turn
provides the employee the incentive to invent by rewarding the employee
with promotions, added benefits, and increased compensation. The employer
acts as a kind of "middle-man," enjoying the rewards of patent
ownership limited only by its marketing skills.
FN70. One circuit court stated that an "agreement to assign, in gross,
a man's future labors as an author or inventor,--in other words, a mortgage
on a man's brain, to bind all its future products,--does not address itself
favorably to our consideration." Aspinwall Mfg. Co. v. Gill, 32 F.
697, 700 (C.C.D.N.J. 1887).
FN71. For an overview of cases dealing with preinvention assignment contracts
over the past century, see William P. Hovell, Patent Ownership: An Employer's
Rights To His Employee's Invention, 58 NOTRE DAME L. REV. 863, 875- 81 (1983).
FN72. An adhesion contract is one in which one party drafts a contract's
provisions entirely for its own benefit without affording the other party
a realistic opportunity to bargain, or under such conditions that the other
party cannot obtain its desired ends except by acquiescing to the provisions.
See John P. Sutton, Employment Contracts, in LEGAL RIGHTS OF CHEMISTS AND
ENGINEERS 45, 48, 52 (Warren D. Niederhauser & E. Gerald Meyer eds.,
1977) (noting that "[t]oday the employment contract is a contract of
adhesion"); see also Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 834
(Ct. App. 1986). In Cubic Corp., the California Court of Appeals stated
that "[t]he determination that a contract is adhesive is only 'the
beginning and not the end of the analysis insofar as enforceability of its
terms is concerned."' Id. (quoting Wheeler v. Saint Joseph Hosp., 133
Cal. Rptr. 775, 783 (Ct. App. 1976)). In addition, "[a] contract of
adhesion can be fully enforced according to its terms unless some other
factors exist, such as the oppressive or 'unconscionable' provision."
Id. (citing Graham v. Scissor-Tail, Inc., 171 Cal. Rptr. 604, 611 (Ct. App.
1981)).
FN73. Unconscionability refers to an absence of any meaningful choice by
one party which, together with the other contract terms, results in an unreasonably
favorable outcome for the other party. See Cubic Corp., 229 Cal. Rptr. at
834; Chretian v. Donald L. Bren Co., 198 Cal. Rptr. 523, 525 (Ct. App. 1984).
In the context of preinvention assignment contracts, the absence of meaningful
choice exists due to the fact that such contracts are used on an industry-wide
basis.
FN74. The difficulty in analyzing the adequacy of consideration stems from
the notion that both parties are bargaining for something (rights in the
invention) that does not exist at the time of bargaining and that may never
exist. Moreover, the likelihood of an economically significant invention
is a low- probability event for the employee-inventor. Cherensky, supra
note 30, at 624 n.131. Such an invention, however, is a more probable occurrence
for the employer who employs many inventors. Id. at 623. As a result, the
employee- inventor does not consider the assignment clause important when
negotiating the employment contract. Id. Note that the continued employment
asserted as adequate consideration for the assignment of valuable inventions
fails, since the employee-inventor who agrees to the preinvention assignment
terms yet fails to develop a patentable invention is never held liable for
a breach of contract. Id. at 624.
FN75. "Most of contract law is premised upon a model consisting of
two alert individuals, mindful of their self-interests, hammering out an
agreement by a process of hard bargaining." JOHN D. CALAMARI &
JOSEPH M. PERILLO, CONTRACTS s 1-3, at 6 (3d ed. 1987). Therefore, freedom
of contract may only be "free" when the contracting parties share
equal bargaining power. Baker & Brunel, supra note 65, at 411 (finding
that employee-inventors lack the ability to contract freely with their employers);
Cherensky, supra note 30, at 621 (arguing that such a parity in bargaining
position rarely exists between employers and their employee-inventors because
most employment contracts are offered on a "take-it- or-leave-it"
basis).
FN76. 17 U.S.C. s 101.
FN77. Id. s 201(b) (1994).
FN78. The work-for-hire doctrine is, in form, indistinguishable from the
hired- to-invent doctrine aside from the context of applicability. Under
the work-for- hire doctrine, the author--the one to whom the work owes its
creation--is not credited, in form. See supra note 49. The "author"
under the work-for-hire doctrine is the employer. See 17 U.S.C. s 201(b).
As a result, and due in part to the informal nature in which the copyright
law system operates, the "true" author goes unrecognized. Under
the hired-to-invent doctrine, however, the patent filed in the United States
Patent and Trademark Office contains the name of the individual responsible
for the invention identified as the inventor. Because a patent may only
be granted to an individual and not an entity, the individual employee is
at least recognized on the patent as the "true" inventor. See
35 U.S.C. ss 116, 118 (1988).
FN79. See supra notes 68-75 and accompanying text.
FN80. See supra text following note 67; infra note 89 and accompanying text
(suggesting that despite possessing the resources to make and use the invention,
the employer, such as a university, which lacks the capabilities to sell
the invention, is left with an inalienable right).
FN81. A nonexclusive, royalty-free, nontransferable license to reproduce
and distribute the copyrightable subject matter in the university community
may at least serve some educational purpose.
FN82. See Pat K. Chew, Faculty-Generated Inventions: Who Owns The Golden
Egg?, 1992 WIS. L. REV. 259, 261-62 (stating that "[d]espite what is
generally assumed, long established legal principles grant to employees,
such as faculty, the inherent right of ownership to their inventions"
and that "this inherent right is abrogated only by an explicit agreement").
FN83. Id. at 262. ("Universities' various rationales, however, are
questionable, and they do not justify universities' ownership rights. The
[universities' intellectual property] policies themselves may not even be
enforceable.").
FN84. 289 U.S. 178, amended, 289 U.S. 706 (1933).
FN85. Id. at 187 (citations omitted).
FN86. ROSENBERG, supra note 67, s 11.04, at 11-28 to -29; see also Houghton
v. United States, 23 F.2d 386, 390 (4th Cir.), cert. denied, 277 U.S. 592
(1928) (stating that "[a]n employee, who undertakes upon the direction
of his employer to solve a specific problem within the scope of his general
employment, is as truly employed and paid for the particular project as
if it had been described at the outset in the contract of employment").
FN87. See University Patents, Inc. v. Kligman, 762 F. Supp. 1212 (E.D. Pa.
1991) (holding that employment handbooks outlining terms of tenure could
be used to create a preinvention assignment agreement and declining to address
the issue of whether the university professor was hired to invent); Speck
v. North Carolina Dairy Found., Inc., 319 S.E.2d 139 (N.C. 1984) (holding
that the professors and researchers who used university resources to develop
a patentable process were hired to invent and that their invention belonged
to the university since they developed the process while engaged in research
and development for the university).
FN88. The mere fact that the university provided the financial resources
to acquire a patent does not, in and of itself, create a shop right; it
is merely considered as evidence that the employee implicitly agreed to
grant a shop right. See, e.g., Wommack v. Durham Pecan Co., 715 F.2d 962,
969 (5th Cir. 1983) (holding that the employer acquired a shop right despite
the fact that the employee funded the patent application procedure himself).
The key factor in determining whether the employer acquires a shop right
is not the employer's assistance, but the employee's consent. Id.
FN89. One commentator believes that a university would be better served
if faculty members reimbursed the university for the resources used instead
of retaining any shop rights. Chew, supra note 82, at 270. Professor Chew's
proposal makes sense because universities often lack the resources needed
to take full advantage of a shop right. Thus, shop rights for these universities
only serve to facilitate future research.
FN90. Id. at 269. Both parties accept the risk that the faculty's research
may not be economically successful. "The faculty, with their professional
careers at stake, are more regretful about their lack of success than is
the university. If the faculty's research is successful, perhaps even wildly
so, then that is the windfall that the parties hoped for but were not guaranteed."
Id. at 269 n.40.
FN91. Id. at 288.
FN92. University Patents, Inc. v. Kligman, 762 F. Supp. 1212 (E.D. Pa. 1991)
(holding that employment handbooks outlining additional terms of employment
could be used by the employer to establish the existence of a preinvention
assignment agreement).
FN93. Chew, supra note 82, at 288-89; see also RESTATEMENT (SECOND) OF CONTRACTS
s 206 (1981).
FN94. One recent study discovered a "surprising number of instances
in which inventors voluntarily surrendered all patent rights and financial
returns from inventions." MATKIN, supra note 8, at 301. The reluctance
of faculty to become involved in the often time-consuming patent process
may reflect the poor procedural administration of university intellectual
property policies. Most of the faculty members that participated in the
study, however, recognize the importance of technology transfer activities
and relations with industry and believe that they are important enough to
justify the significant time commitments. Id. at 302.
FN95. Chew, supra note 82, at 289; see also RESTATEMENT (SECOND) OF CONTRACTS,
supra note 93, ss 3, 18, 19, 69. Technology transfer policies are usually
drafted by the university and lack the personal negotiation that strengthens
the provisions of a contract. Moreover, when faculty are hired, they are
not always familiar with the policy relating to the assignment of their
research. "Even if they are aware of the existence of a policy, it
is unlikely they understand the significance of the university's claim to
ownership to their inventions." Chew, supra note 82, at 289.
FN96. See Regents of the Univ. of Colo. v. K.D.I. Precision Prods., Inc.,
488 F.2d 261 (10th Cir. 1973); University Patents, 762 F. Supp. 1212; Speck
v. North Carolina Dairy Found., Inc., 319 S.E.2d 139 (N.C. 1984).
FN97. Chew, supra note 82, at 281 (quoting an anonymous source).
FN98. This is especially true where the institution is a public university
and its faculty are considered state employees. For examples of state employee-
invention statutes, see CAL. LAB. CODE s 2870 (West 1989); ILL. ANN. STAT.
ch. 762, para. 1060/2 (Smith-Hurd 1993); MINN. STAT. ANN. s 181.78 (West
1993); N.C. GEN. STAT. ss 66-57.1 to .2 (1992); WASH. REV. CODE ANN. s 49.44.140
(West 1990). See generally Coolley, supra note 66.
FN99. This could raise ethical issues between a professor and the university.
The professor motivated by altruistic rather than economic beliefs could
effectively undermine the university's interest in the profits accompanying
commercial exploitation of the invention by dedicating the invention to
the public through publication. The university must proceed with caution
in such a case. An attempt by the university to limit the professor's ability
to disclose the invention in this manner through contractual agreements
may cast doubts on the university's goals of promoting academic freedom,
generating information, and freely disseminating that information. See J.
H. Reichman, Overlapping Proprietary Rights in University-Generated Research
Products: The Case of Computer Programs, 17 COLUM.-VLA J.L. & ARTS 51,
92 (1992) (stating that "universities are well advised to acknowledge
expressly that a faculty member's decision to publish research results ...
always trumps any commercial interests that the university intends to exercise"
(citation omitted)).
FN100. See supra note 78 and accompanying text.
FN101. The nature of the profession has not yet approached the level where
faculty are expected to bring in patents as frequently as they are expected
to publish.
FN102. Lape, supra note 10, at 233. But see Rochelle Cooper Dreyfuss, The
Creative Employee and the Copyright Act of 1976, 54 U. CHI. L. REV. 590,
597 (1987) (stating that although universities employ faculty, require research
as a condition for employment, and provide resources to carry out research,
such actions still fail to establish the university as "the motivating
force behind the work").
FN103. See 17 U.S.C. s 101.
FN104. Notwithstanding the fact that faculty publish as part of their employment
responsibilities and use university resources and supplies, the "universal
assumption" prior to the Copyright Act of 1976 was that the faculty
are entitled to the copyright. Hays v. Sony Corp. of Am., 847 F.2d 412,
416 (7th Cir. 1988). The Hays court suggested that faculty own copyrights
in works they create, notwithstanding the fact that the works are created
during "school time [and] for school purposes" and would ordinarily
be considered a work for hire. Id. at 416-17. The court cited the academic
researcher exception to the work-for-hire doctrine under the 1909 Copyright
Act, finding an "absence of any indication that Congress meant to abolish"
the academic researcher exception in passing the Copyright Act of 1976.
Id.
FN105. In addressing the issue of whether a professor's work was one made
for hire, two cases, Williams v. Weisser, 78 Cal. Rptr. 542 (Ct. App. 1969),
and Sherrill v. Grieves, 57 Wash. L. Rep. 286 (D.C. 1929), in keeping with
policy and custom, held that such works were not works for hire.
FN106. One commentator, after a thorough investigation, concludes that the
Copyright Act of 1976 "did not disturb the professors' exception from
the work- made-for-hire doctrine; to the extent that such an exception ever
existed, it continues to exist." Lape, supra note 10, at 246; see also
Hays, 847 F.2d at 416-17. But cf. Leonard D. Duboff, An Academic's Copyright:
Publish and Perish, 32 J. COPYRIGHT SOC'Y 17, 33 (1985) (arguing that portions
of the 1976 Act indicate a trend toward abolishing the application of custom);
Todd F. Simon, Faculty Writings: Are They "Works Made for Hire"
Under the 1976 Copyright Act?, 9 J.C. & U.L. 485, 507 (1983) (arguing
that the 1976 Act abolished the academic researcher exception and preempts
the common law). Professor Lape believes that these analyses are "logically
flawed and therefore fail to support the conclusion drawn from them."
Lape, supra note 10, at 240. The argument that the 1976 Act abolishes the
academic researcher exception serves to support the proposition that universities,
through the advent of intellectual property policies, are increasingly appropriating
more and more property from their faculty. If the exception did not survive
the 1976 Act, then universities would be entitled to more property after
the 1976 Act than prior to the 1976 Act. However, university policies are
more prevalent today than ever before. Universities preface their policies
by noting that the arrival of new technology, an increased interest in faculty
creations, and the accompanying economic rewards in the commercialization
of such creations are among the primary reasons for asserting an ownership
interest in faculty works. See, e.g., GUIDE TO THE OWNERSHIP, DISTRIBUTION
AND COMMERCIAL DEVELOPMENT OF M.I.T. TECHNOLOGY (Patent and Copyright Policy
Statement) (1989); HARVARD UNIVERSITY FACULTY OF ARTS & SCIENCES, PRINCIPLES
AND POLICIES THAT GOVERN YOUR RESEARCH AND OTHER PROFESSIONAL ACTIVITIES
1 (1992); THE OHIO STATE UNIVERSITY, POLICY ON PATENTS AND COPYRIGHTS 1
(1989); STANFORD UNIVERSITY, RESEARCH POLICY HANDBOOK 86, 92-95 (1989);
THE UNIVERSITY OF ILLINOIS, THE GENERAL RULES CONCERNING UNIVERSITY ORGANIZATION
AND PROCEDURE 7, 10 (1991).
FN107. 17 U.S.C. s 201(a) ("Copyright in a work protected under this
title vests initially in the author or authors of the work.").
FN108. See, e.g., Weinstein v. University of Ill., 811 F.2d 1091, 1094 (7th
Cir. 1987); Regents of the Univ. of Colo. v. K.D.I. Precision Prods., Inc.,
488 F.2d 261, 269 (10th Cir. 1973); see also supra notes 71-75.
FN109. See 17 U.S.C. ss 201(b), 204(a); Lape, supra note 10, at 248- 50
(noting that a failure to incorporate the university copyright policy by
reference into the signed employment agreement satisfies neither s 204(a)
nor s 201(b) since there is no evidence that a grant was ever made).
FN110. 17 U.S.C. s 201(b) (stating that the employer, considered as the
author, owns all of the rights comprised in the copyright "unless the
parties have expressly agreed otherwise in a written instrument signed by
them").
FN111. Kathleen M. Capano et al., Note, In re Cronyn: Can Student Theses
Bar Patent Applications?, 18 J.C. & U.L. 105, 115 (1991).
FN112. Because the student is not an employee, nor hired to do anything,
the conditions needed to conclude one has been hired to invent are absent.
See supra notes 84-87 and accompanying text.
FN113. The fact that the university may be liable under the doctrine of
respondeat superior may lead a court to conclude that a student is an employee.
But see Ross v. University of Minn., 439 N.W.2d 28, 33 (Minn. Ct. App. 1989)
(holding that a resident in the University of Minnesota psychiatry residency
program is a student rather than an employee for purposes of a decision
to dismiss the resident for academic reasons despite the fact that the resident's
tenure exhibited many characteristics of an employee). In Community for
Creative Non-Violence v. Reid, 490 U.S. 730 (1989), the United States Supreme
Court concluded that one must consult s 220 of the Restatement (Second)
of Agency when determining whether a hired party is an employee for purposes
of the Copyright Act. A court will consider a variety of factors when determining
the status of the hired party. These factors include location of work, type
and duration of the relationship between the parties, method of payment,
skill required, source of the financial resources and tools, and whether
the work is part of the regular business of the hiring party. Note that
none of these factors are determinative. See Hilton Int'l Co. v. NLRB, 690
F.2d 318, 321 (2d Cir. 1982).
FN114. Donovan v. American Airlines, Inc., 514 F. Supp. 526, 531-32 (N.D.
Tex. 1981), aff'd, 686 F.2d 267 (5th Cir. 1982) (holding that flight attendant
trainees and reservation sales agent trainees are not "employees"
for purposes of the Fair Labor Standards Act while training at a facility
(1) where the skills acquired are similar to those that could be gained
at a vocational school; (2) where regular employees are not displaced by
the trainees; (3) where the employer derives no immediate advantage from
the training activities; and (4) where the trainees are not entitled to
employment at the conclusion of the training period and are not compensated
in the form of wages during the training period).
FN115. Courts consider whether the student received compensation for the
work allegedly performed as an employee and whether any portion of such
compensation is withheld for the purposes of federal, state, or local income
tax and social security coverage. See Regents of the Univ. of Mich. v. Michigan
Employment Relations Comm'n, 204 N.W.2d 218, 225 (Mich. 1973) (holding that
interns, residents, and postdoctoral fellows are employees for purposes
of the Public Employees Relations Act and consequently have the power to
form a labor organization in order to negotiate with hospital administrators
regarding compensation and employment conditions). The receipt of fringe
benefits available to other employees, such as health coverage, is also
pertinent to students' classification as employees. Id.
FN116. See supra notes 83-87 and accompanying text.
FN117. Issuance in a timely manner might include submission with admissions
material or with the notice of acceptance.
FN118. See supra notes 40-44 and accompanying text.
FN119. The public may also miss out on the invention if the student is so
frustrated that she never attempts to develop a patentable invention.
FN120. Moreover, the United States does not follow a first-to-file rule,
which awards a patent to the first one to file an application with the United
States Patent and Trademark Office; thus, the risk is more apparent than
real. Under the first-to-invent rule followed by the United States, an inventor
need only show diligence in reducing the invention to practice from the
time immediately preceding the second inventor's entrance into the field
in order to acquire the patent. Hull v. Davenport, 90 F.2d 103, 105 (C.C.P.A.
1937). A student may argue that she lacked the funds to reduce her invention
to practice or file and as a result was not able to file sooner. Courts
have recognized similar arguments in upholding the first conceiver's right
to the patent. See Foster v. Magnetic Heating Corp., 297 F. Supp. 512 (S.D.N.Y.
1968), aff'd on other grounds per curiam, 410 F.2d 12 (2d Cir.), cert. denied,
396 U.S. 829 (1969). For a discussion on a proposed change from the first-to-invent
rule to a first-to-file rule, see MacCordy, supra note 38, at 297-302.
FN121. See supra note 74.
FN122. Many participate as research assistants for course credit. These
students are not employed as research assistants. In fact, some must pay
the tuition fee corresponding to the number of course credits in order to
act as research assistants.
FN123. See supra notes 117-18 and accompanying text.
FN124. See supra notes 72-75 and accompanying text.
FN125. Those faculty members possessing research traits and skills marketable
in industry can leave the university for more lucrative positions as many
have already done in the engineering and computer science fields. Lape,
supra note 10, at 267. The university allocation of ownership rights contributes
to the flight of bright individuals from universities in search of more
recognition and compensation. See Robert L. Jacobson, Low Pay and Declining
Working Conditions Seen Threatening Colleges' Teacher Supply, CHRON. HIGHER
EDUC., Mar. 27, 1985, at 21 (reporting that leaving academia for professional
careers in industry has become a trend in recent years).
FN126. Cf. Cherensky, supra note 30, at 624 n.131.
FN127. See supra note 75.
FN128. It is not unreasonable, however, to think that a faculty member may
commit fraud in appropriating information worthy of intellectual property
protection from the graduate student, since the amount of material the faculty
member publishes weighs heavily on whether he will obtain tenure. See Bok,
supra note 17, at 310; Bill L. Williamson, Using Students: The Ethics of
Faculty Use of a Student's Work Product, 26 ARIZ. ST. L.J. 1029, 1039 (1994)
(discussing the pervasive practice in American education, and in law schools
in particular, through which professors advance their careers at the expense
of their students and, in doing so, teach students that theft is not only
acceptable but often rewarded); see also 60 Minutes: Get Real (CBS television
broadcast, Feb. 26, 1995) (discussing a trend toward using graduate students
to teach college classes in place of professors, as professors focus instead
on research duties in order to gain tenure).
FN129. See supra part IV.A.
FN130. See William K. Durfee, Engineering Education Gets Real, TECH. REV.,
Feb. 1994, at 42 (publication of the Massachusetts Institute of Technology
Alumni Association).
FN131. Stanford University Professor Paul Berg, who shared the 1980 Nobel
Prize in Chemistry for fundamental research on genetic engineering, "fears
that universities' new push to transfer technology puts pressure on academics
to do work likely to yield practical results." Beardsley, supra note
7, at 92B. Professor Berg notes that "[y]oung people will be under
pressure to do things that will bring income to the university." Id.
FN132. Sharon Begley et al., No Ph.D.s Need Apply, NEWSWEEK, Nov. 5, 1994,
at 63.
FN133. Worth mentioning, although beyond the scope of this Note, is the
graduate student's lack of involvement in the revision procedures of most
university intellectual property policies. For instance, at The Ohio State
University, only one graduate student sits on the committee of eleven responsible
for reviewing, recommending, and advising the university on matters relating
to their policy, and serving as a board to which a researcher might appeal
a dispute. THE OHIO STATE UNIVERSITY, supra note 106, at 3. At other universities,
such as Indiana University, students play no role in the revision or appeals
process. INDIANA UNIVERSITY, Patent Procedure, in STATEMENT OF PRINCIPLES
ON INTELLECTUAL PROPERTY 4 (1994).
FN134. Technology transfer, when associated with research universities,
means "the transfer of the results of basic and applied research to
the design, development, production, and commercialization of new or improved
products, services, or processes." MATKIN, supra note 8, at 5.
FN135. See supra note 28.
FN136. Monsanto Co. v. Kamp, 269 F. Supp. 818, 824 (D.D.C. 1967).
FN137. Id.
FN138. 35 U.S.C. s 116; Kimberly-Clark Corp. v. Procter & Gamble Distrib.
Co., 973 F.2d 911, 917 (Fed. Cir. 1992) (holding that the two individuals
responsible for substantial improvements in leak-free disposable diapers
could not be joint inventors since neither had knowledge of the other's
contributions). Some form of communication and shared knowledge is all that
is needed to satisfy the collaboration threshold. See Robert J. Lauson &
Bruce A. Brunda, Federal Court Decisions Attempt to Settle Joint Inventorship
Questions, NAT'L L.J., Oct. 31, 1994, at C15.
FN139. 35 U.S.C. s 262 (1988), amended by Pub. L. No. 103-465, ss 533(b)(3),
534, 108 Stat. 4989, 4990 (1994) ("In the absence of any agreement
to the contrary, each of the joint owners of a patent may make, use, offer
to sell, or sell the patented invention within the United States, or import
the patented invention into the United States, without the consent of and
without accounting to the other owners."). Joint ownership of copyright,
on the other hand, requires the owners to account to one another for any
profits received. See, e.g., Reichman, supra note 99, at 84.
FN140. As an alternative to competing with the university in securing licensing
agreements, the student may simply disclose the invention to the public
by timely publishing. See supra text accompanying note 99.
FN141. A discussion and analysis of co-ownership of patents is beyond the
scope of this Note. However, the brief foregoing discussion illustrates
not only some of the difficulties of student ownership of patents, but also
the potential dangers of the current system when students are aware of their
legal rights.
FN142. A respected scholar of copyright law suggests that an author need
not make a copyrightable contribution to a work in order to be considered
a joint author, since neither the Copyright Act of 1976 nor its legislative
intent support or allude to any such requirement. 1 MELVILLE B. NIMMER &
DAVID NIMMER, NIMMER ON COPYRIGHT s 6.07, at 6-24 to 6-25 (rev. ed. 1995).
Professor Nimmer advocates a standard whereby the contribution needs to
be more than de minimis. Id. at 6-23. This view is consistent with the constitutional
purpose, engendering creative activity, since joint works could be created
with greater ease. This is especially true in the area of computer software
where a joint author often goes unrecognized due to the inseparable nature
of the contributions and a subsequent finding of no creative contribution.
See Scott C. Brophy, Joint Authorship Under the Copyright Law, 16 HASTINGS
COMM. & ENT. L.J. 451, 472-73 (1994). Brophy writes: If the purpose
of copyright law is to create a balance between incentive to create and
dissemination of information to promote learning, culture, and development,
then giving joint author status to one who feeds ideas to another who creates
expression will not thwart the purpose. After all, without the idea, it
is quite possible the expression would never exist. Id. (footnote omitted).
FN143. 17 U.S.C. s 101 (defining a joint work as one "prepared by two
or more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole"); Childress
v. Taylor, 945 F.2d 500 (2d Cir. 1991) (standing for the proposition that
there must be an intent, at the time of creation, to merge a work with another
work to form a unitary whole). But see Nancy P. Spyke, The Joint Work Dilemma:
The Separately Copyrightable Contribution Requirement and Co-ownership Principles,
40 J. COPYRIGHT SOC'Y U.S.A. 463 (1993) (finding that a consensus as to
what constitutes intent does not exist). For a general analysis of the intent
requirement of joint works and an analysis of recent decisions regarding
the requirement, see Brophy, supra note 142.
FN144. But cf. supra note 142.
FN145. Interestingly, in the case of a computer program or software, portions
of the work may be entitled to patent as well as copyright protection. In
the case of a joint work, the authors/inventors would in some instances
be under a duty to account under copyright law, and under no duty to account
under patent law. One commentator notes that "the potential conflict
between [patent law and copyright law] should not be underestimated."
Reichman, supra note 99, at 84.
FN146. University joint ownership with a student could inhibit the university's
efforts to transfer the intellectual property to industry and compromise
a university's ability to profit from any intellectual property rights it
solely owns. In the case of a computer program, the commercial value of
which stems from the improvements made on the original university-generated
program, the exclusive right to create derivative works is vital to an effective
licensing agreement with industry. Id. at 88 (stating that "the university's
true capacity to commercialize a computer program might depend partly on
its acquisition of the faculty authors' adaptation rights and partly on
its ability to limit the number of nonfaculty owners of copyright").
FN147. Childress, 945 F.2d at 507 (describing a research assistant's contribution
in the form of "some protectable expression or merely a sufficiently
original selection of factual material as would be entitled to a copyright,
yet not be entitled to be regarded as a joint author of a work in which
the contributed material appears"); see also Reichman, supra note 99,
at 85 n.172 (noting that "[s]uch a contribution need not be a work
made for hire if, for example, it exceeds the scope of any employment agreement
that may be in force"). This view, however, is inapplicable in the
case of graduate students, since they are not employees.
FN148. Issues regarding co-ownership in copyrights, as in patents, are introduced
merely to show an example of one difficulty that a move toward a more student-friendly
university intellectual property policy will encounter.
FN149. Baker & Brunel, supra note 65, at 403.