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I am working on a research project funded by a company. So, I have two supervisors - one at the university and the other at the company.

The company likes the work I did and is encouraging me to disclose the invention at the university's technology transfer office. I made the mistake of filling up the technology transfer form with the names of both supervisors and sending it to them for comments. This is what one would usually do with publications.

However, I learnt only later that inventorship in a patent is completely different from authorship in a research article. I also understand that incorrectly naming an inventor on the form can invalidate the patent.

None of my supervisors made any intellectual contributions that led to the invention. I am also able to prove this as I have documents/slides about topics discussed during meetings.

How do I deal with this situation as both my supervisors expect their names to be on the patent? I must also mention that my university supervisor is extremely unprofessional. I have had problems with him in the past with publications. He could damage my career if I offend him. On the other hand I'd hate to share credit for something which I came up totally on my own when he was actually putting me under a great deal of pressure to work on one of his ideas that was not relevant to the problem at hand.

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    This seems like a legal question, not one for academics. – Buffy Sep 27 '18 at 15:18
  • But still I would like to have practical advice from experienced people. Making the wrong decisions could damage my career – yaska Sep 27 '18 at 16:11
  • The contract is with the university and doesn't really throw any light on the matter. I have forwarded it to the office and they said the same thing. They will be taking a look at the contract between the company and university and getting back to me – yaska Sep 27 '18 at 17:39
  • All this is causing a lot of delay and I don't have much time left in the contract – yaska Sep 27 '18 at 17:40
  • He could damage my career if I offend him. — Go back in time and find a new advisor. — On the other hand I'd hate to share credit for something which I came up totally on my own — Unless you have a time machine, you may have to swallow your pride. – JeffE Sep 27 '18 at 18:14
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I suggest discussing the matter with the technology transfer office and asking them how to proceed.

They have expertise in patent applications, and should be able to advise you. If you can say "The technology transfer office says..." it may reduce pressure on you when talking to the supervisors.

At the best, the advisors know better than to expect to be on a patent without an intellectual contribution to the invention, and would have assumed you had only listed them to get their input on the application.

  • The advisors "may" know better, but will they act morally and ethically with that "plum" in front of their noses... – Solar Mike Sep 27 '18 at 16:30
  • I agree that this is exactly what tech transfer offices are their to sort out. However, in terms of personal benefit, i've always found that being generous with credit will almost always work out better for you. – Ian Sudbery Sep 28 '18 at 11:02
  • @IanSudbery Being generous is OK if it is a matter of how big the contribution was. However, inaccuracy in the inventor list can make a patent invalid, and the OP did say they made no intellectual contribution. – Patricia Shanahan Sep 28 '18 at 13:43
  • I'm not sure this can be right. At my institution students cannot be named as inventors, and we have a contractual obligation to protect all possible IP. Not saying this is good or right, but there is clearly more to it than "inaccuracy in the inventor list can make a patent invalid". – Ian Sudbery Sep 28 '18 at 14:14
  • @IanSudbery I only have experience of US patent applications in industry, where we were told to be careful to list the inventors. It certainly seems weird to not list an inventor just because they are a student. – Patricia Shanahan Sep 28 '18 at 14:31

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