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My advisor is trying to patent an idea without me. I got to know that he is registering the patent through the IP officer at our University. When I asked him about it, he did not give me a straight answer and has not responded to any of my emails inquiring about this. The idea he is trying to patent is literally the entire paper that a colleague and I wrote as co-first authors. I have defended my PhD and I am about to begin my job in industry.

Any advice on how to go about this situation ?

If I go against him,I have 2 fears at the moment i.e.

  1. He might make my colleague's PhD miserable because the two of us would be on the patent, which he does not like (he tried to remove one of the inventors on a previous patent but I convinced him otherwise). I was lucky enough to graduate on time.

  2. He would not provide me any more recommendation letters for green card, etc.

And advice is appreciated.

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    Who came up with the main idea behind the proposed patent? – Patricia Shanahan Aug 26 '18 at 9:27
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    Is the paper published? If so then your supervisor may find that the idea cannot be patented. So your problem goes away. – Prof. Santa Claus Aug 26 '18 at 9:38
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    This is unfortunately common. Happened to me already twice, and I have several colleagues who went through similar situation. I am still in good terms with both ex-advisors who scooped me off patent ideas. Take a deep breath. – Scientist Aug 26 '18 at 11:52
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    1. Yes, the paper is published. I believe there is a rule that within one year of the work shown to public, the patent can be filed. – computationally_curious Aug 26 '18 at 12:37
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    @computationally_curious: The one-year rule exists in US law, but not in most other countries. – Nate Eldredge Aug 30 '18 at 22:40
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The proper place to handle this, now, is the IP office at the university. Raise the issue in your own name so that your colleague doesn't suffer any consequences, but if negotiations follow, make sure everyone appropriate is included.

But you may also want to consult an IP lawyer. The university may be able to help you with this also.

It is hard to avoid all negative consequences in a situation like this, of course. Especially if the professor is a bad actor with power.

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    +1 The IP office has a strong interest in the patent being valid. Not listing all the inventors on the application can make it invalid. – Patricia Shanahan Aug 26 '18 at 13:13
  • Depending where the OP is, there may not exist any truly local IP office nor moderator in the institution. Also in some cultures and countries the law is not the best resource, particularly with academic disputes. Your last paragraph is very real. – Scientist Aug 26 '18 at 13:29
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I have had similar issues in the past. My advice is that you first consider how important is this patent for your career (and why), and try to deal with the delicate situation in the best possible terms.

In both cases where I had this exact same problem, these were ex-supervisors who seriously treated the joint ideas as their own. So you have to be careful in approaching the topic, as they may be genuinely surprised (in their heads) by any accusations. I believe I dealt with the situations in the best possible way, mainly by securing publications and not fighting them. I was ultimately not included in any of the two patents. One of the patents was apparently never approved exactly because I published the exact idea online as soon as possible, first in my personal blog and then as a "perspective" in a single-authored review paper.

I remain in good terms with them to this day. I understand they were egoistic and self-centred in completely ignoring my merit but I have heard of several similar cases. I believe anyone can be pushed that way amidst department pressures, by the sheer power to just do it. Usually all they want/need is a CV line, and have no monetary interests in the patent idea itself.

Perhaps you could likewise? If you really need this specific patent, and your advisor is clearly unwilling to face the problem, understand you'll enter a major conflict. I don't think it will be worth the trouble, in most cases, unless you're confident this patent will make you rich or unbeatable in the job market.

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    If all they want is a CV line, how does it harm them to share the credit? – Peter Taylor Aug 27 '18 at 7:52
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    @PeterTaylor I don't know exactly how to answer that. In my situations they really treated shared ideas as their own, and insisted on having that impression. I think it's partially ego plus avoiding having to deal with someone else who might want a more privileged authorship status. – Scientist Aug 27 '18 at 14:10
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    I think this is excellent practical advice - like you, I don't approve of the conduct of these people, but it is important to be realistic about what can be done to salvage/preserve one's interests as a (more) junior academic – Yemon Choi Aug 31 '18 at 0:00

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