33

Context: I work for a small private company in the US energy sector. Recently, my colleague found an application opportunity for the tool I developed as my PhD dissertation. We tested it out with a public utility to great success, and it's getting some press. There is a high likelihood of future business.

Lack of citation: The company is trying to represent the work as a "Company Project" and they have removed all citations and mentions of me individually. I am worried that if I leave the company at some point, they will continue using my science, continue not crediting me, and I will feel cheated, even though I brought up the idea of using it while working here.

Lack of public voice: In addition, I was told all press contact must go through our Marketing department, even though I have been contacted independently by journalists that saw me present this project / my science at conferences earlier this year. I am not supposed to speak with them, and instead redirect them to our Marketing group. I find this very odd.

Question: On one hand, I am an employee of this company where the project was carried out. On the other hand, I did not develop the tool while in this role - I developed it as a PhD student five years earlier. I feel that because of this, I should receive due credit. The company doesn't own my dissertation knowledge - or do they? What should I do?

closed as off-topic by David Richerby, corey979, OBu, Jon Custer, Azor Ahai Nov 16 '18 at 18:35

  • This question does not appear to be about academia within the scope defined in the help center.
If this question can be reworded to fit the rules in the help center, please edit the question.

  • 3
    Is it published? – Captain Emacs Nov 16 '18 at 0:35
  • 1
    Yes and no. Yes, it is published in conference publications, some of them peer reviewed. Bits and pieces are also published in some books. In terms of a peer-reviewed industry journal, no, though it is under review. – Obviously Anonymous Nov 16 '18 at 0:41
  • 7
    It's also published online as part of the university's online academic commons for dissertations. – Obviously Anonymous Nov 16 '18 at 0:53
  • 8
    Shouldn't this be asked in law.SE or workplace.SE instead? Not sure this is the right community for this question. In other words, I believe you either want to talk to a lawyer or to your boss. – user347489 Nov 16 '18 at 7:28
  • 3
    I'm voting to close this question as off-topic because the question is about a situation that is completely outside academia. – David Richerby Nov 16 '18 at 9:39
40

I think that your best bet is to contact the IP department at the academic institution where you did your PhD:

  • They can inform you about your rights concerning the work you did there as a student
  • Potentially it's also in their interest to get credited for the work done by their PhD students, so they might be your ally in case there is a legal case.

Edit (addition): Alternatively, you could try to negotiate internally with your company, they might be open to offering you something. But in this case you wouldn't be in a strong position, so it depends how you think the company might react.

  • 6
    Good idea. I have considered this, but I am worried that if they are not in my favor, or feel the university is owed part of the profits, that I will set off a bad series of events and jeopardize my career. I might have someone inquire on my behalf. – Obviously Anonymous Nov 16 '18 at 1:06
  • 3
    @ObviouslyAnonymous I think it is still important to get in touch with the university, because the university may in fact own some part of the IP here. If they feel they are owed part of the profits they may later go and sue the company, which is presumably worse. – xLeitix Nov 16 '18 at 6:44
  • @xLeitix that is something the companys IP department/lawyers should figure out. Going solo might be really bad for op. – DonQuiKong Nov 16 '18 at 7:34
  • @ObviouslyAnonymous in this case I think the safest option is for you to hire a lawyer, or at least to consult one in order to know your options and the potential risks. I'm also completing my answer to propose a different idea, see my edits. – Erwan Nov 16 '18 at 12:23
  • @ObviouslyAnonymous if the phd was funded / a studentship the university might hold sole rights to the IP. at which point you using that application in the business was IP theft. Contact the University ASAP and find out. If 2 years from now the university sues your company for violating that right your career will be over. if you nogatiate now it could actually help your career – J.Doe Nov 16 '18 at 12:37
19

You are in an very difficult situation here.

The first thing to realise is that, unlike academia, companies make a point to decouple service from the people who provide it.

This is the opposite from the academic position where you as individual are entitled to be cited properly when your work is used in public. PR of a company does not count as academic work, so the fear of being seen as 'plagiarisers' will not scare them, and as you never mention a patent, there is no infringement there that the company has to be afraid of, either.

Furthermore, your company, I suspect (but IANAL), is entitled to control your public marketing-relevant communication.

I do not think that you can easily force the company to credit you as developer of this method. Companies are not academia. They are interested in keeping the credit for themselves, because this means raw money.

If you do not have a patent, the most you can do is to leave them and offer your know-how elsewhere (but again, your methodology/idea of using your technique in this particular context may now contractually "belong" to the company, via NDA or even possible pending patent, so you cannot even suggest this idea anymore to a competitor).

You could consider consulting a lawyer. But, if the matter is only about credit and not money, I do not really see how they can be of much help.

  • I agree about consulting a lawyer, but I don't think it is correct that withdrawal of service is the only route available to the questioner; a route, certainly, but not the only one. For example, per Erwan's answer, there is the possibility that the university will likewise be aggrieved by the way the company is acting, and act together with the questioner to seek redress for the way that the company is acting. – Myles Nov 16 '18 at 10:53
  • 3
    @Myles This was recommended by others, I did not see a reason to repeat this suggestion here. – Captain Emacs Nov 16 '18 at 11:40
10

Claim the tool as your intellectual property, then license or sell it to your company.

The IP to your tool could be held by a few people: you, your university, your funder, maybe even your professor, but it's certainly not held by your company. So unless the tool was released for free (e.g. a CCBY license), you should be able to derive royalties for it. I would speak first to your alma mater's IP office to establish who owns the intellectual property, and then negotiate with your employer.

I'll say though it looks like the conflict of interest will be tremendous. Some employers might argue that you're supposed to do your utmost for your duties (there's such a clause in some of the employment contracts I've signed), which might include using IP owned by you. Even if the company is OK with paying you a royalty, there's still a significant conflict of interest: what if a better tool comes along, would you resist using the better tool because you want to be paid royalties? It heavily depends on you and the company's character, of course, but you might ultimately find you have to work elsewhere.

7

I'm not a lawyer, but assuming you're in the US there are some basic protections you have. Your company does not own your intellectual property unless you have explicitly given it to them. Your company cannot control your behavior unless you voluntarily agree to abide by certain rules (such as in an employment contract or employee handbook). If you violate such a contract then they may have grounds to sue you for damages, but realistically the biggest threat they hold over you is termination of employment. You should assess what is it you really want to achieve and what that is worth to you.

That said, if push comes to shove there are specific protections you have over your work:

If they're reproducing or distributing elements of your dissertation or other written works, such as written passages, charts/graphs, user manuals for your tool, etc. these things are protected under copyright. They would normally need your explicit permission to reproduce and distribute these things, and for-profit businesses usually have a very hard time claiming the fair-use exception.

If they're using software you have written then copyright law protects you in a different way. You have the copyright over software you have written, and you control how this software may be reproduced and distributed. Copyright is very powerful in the software realm, since even making a single digital copy for a co-worker is considered reproduction and distribution. However, the way you made your software available is important: if you published it online under any specific license then the terms of that license will dictate how the company can use that software. If you put it online or gave it to them with no specific agreement or license in place then you probably retain all the normal copyright protections.

If your tool is not software but rather a physical tool or a conceptual method, you may have protections under patent law. However, patent protections are not automatic, so if you never filed for a patent then this does not apply to you.

If any of these cases apply then you probably have quite a bit of leverage over the company, if it's really true that your work is an avenue to future business.

Even if you're not protected in these specific ways, you are presumably the expert on your tool and the most capable person when it comes to using it. It took you years to get to the point where you could create and employ your tool effectively, and your refusal to cooperate with your employer could represent years of development time for them. At worst, your current position means that any competitors in the marketplace are facing years of their own development if they want to have someone like you working on their staff.

  • 2
    My understanding of Work for Hire is that in general a company definitely owns the work they specifically asked you to do: en.wikipedia.org/wiki/Work_for_hire . But I'm not sure how much that applies in this case because it isn't clear to me who hired who to do what work. – Eilon Nov 16 '18 at 4:18
  • 5
    @Eilon Based on the question, it sounds like the work being contested (the dissertation) was done before the OP was employed by the company. Nobody hired the OP to do that work. So the work-for-hire rules would not apply at all in this case. – David Z Nov 16 '18 at 6:04
4

To some extent, this depends on the value of the product, and what you'd like to get out of it.

If the product was developed outside of the company, they have no right to it. They are also unable to protect themselves against claims from you (or maybe your university), as you (or maybe your school!) have every right to just sell the product to a competitor (if you dot a few i's and cross a few t's). If your employer really wants to develop on this idea, and put resources into it, and incorporate it into their plans, it is clearly in their best interests to deal with IP issues up front. Surprises down the road that have to do with these issues are often very unwelcome.

Now, the hard part! These are your employers, and I suspect you would like to maintain a nice relationship with them. Opening this can of worms, however nicely you approach it, does have some likelihood of souring this relationship, so as you go along, you have to think about whether your rewards are worth this risk.

One approach would be to start with your manager, and say "if anyone thinks this software is important, I'd gladly work with you and my school to make sure that we have a solid legal platform to protect the company investment." If they think that's important, they should welcome this. They may also look into this, and say "not worth the trouble" and drop the project. If your ask is simply recognition, and not bucks, I think everyone would end up happy (though be ready for your university to throw in a monkey wrench if they expect licensing fees -- there is certainly a chance that they dig in their heels if the idea has real value).

If your biggest concern is your job, you should consider dropping the whole thing.

All this is complicated. You should certainly consider finding an appropriate lawyer to help your with these issues (I am not a lawyer).

2

I agree with Erwan that you should contact your university.

If you feel uncomfortable contacting them, you can always first refer to their policies on intellectual property. It should be available online on their website, and if not, you can always contact them but only ask about intellectual property policies regarding dissertations without giving any information.

If your tool was developed without assistance from sponsored research funds or using school funds or facilities, your university is not likely to claim IP rights. If other people were heavily involved, then credit would obviously have to be shared with them. One thing to be cautious about is that because it's from a Ph.D dissertation, there is a chance that you may have signed something giving the university IP rights or distribution rights. If you received, say, a tuition waver in exchange for work hours, or if it was developed as part of work carried out for the university, that would also make it more likely to be university property.

Now, data obtained from the "project", which I assume refers to the testing of the tool at the public utility, belongs to the company, since you gave them permission (I am assuming) to use the tool for that purpose. However, since the company was in no way involved (I am assuming) in the development of the tool, nor did you transfer IP rights to the company (I am assuming), they can't claim IP rights over the tool itself.

If you signed something that effectively hands over the IP rights of the tool to the company, of course, that's a different story.

That said, I should note that it is likely to be in your best interest to consult your university, because it could save a lot of hassle later down the road. It would be a nightmare if you released a commercial version only to have the university claim ownership.

2

You may not have any rights:

You invented a tool*, during your PhD. Presumably you didn't file a patent for your invention and presumably your university didn't either. This severely limits any rights you have.

I suspect the knowledge of your dissertation is public domain: It is not owned by you nor your university, it can be used freely.

Using your tool as a foundation, your company developed an application, which has been well received. (Developing the application is merely your job.) The company is rightly promoting the application as a "Company Project" and rightly gagging you from speaking to the press, that's the marketing department's responsibility. The application is the company's intellectual property, not yours. You most likely have no right to use the application outside of your employment, e.g., if you leave the company.

The company doesn't own my dissertation knowledge - or do they?

No they don't, but I suspect the knowledge is public domain.

What should I do?

Do nothing, I suspect, but, you haven't given us enough information and you might want to speak to an IP attorney.


*What do you mean by tool?

  • "I suspect the knowledge of your dissertation is public domain: It is not owned by you nor your university, it can be used freely." I guess that is the crucial point here. Is this indeed the case? Are there any sources backing up this suspicion? – Trilarion Nov 16 '18 at 13:45
  • @Trilarion I don't know whether this is the case and I doubt the OP knows either. A IP attorney would need to be consulted and they'd need to consider the OP's employment contract (if any) during their PhD, in addition to understanding exactly what the tool is. – user2768 Nov 16 '18 at 14:17
  • If it's a software tool, there might be copyright protection despite no patent, and there's the issue of who is entitled to license fees -- the OP or the university, A lawyer is a good idea. – Scott Seidman Nov 16 '18 at 14:28
  • @ScottSeidman Even if it is software, it depends whether it was used in the application and, if so, how it was used. – user2768 Nov 16 '18 at 16:02
  • @ScottSeidman The thesis and any software will have copyrights, but copyrights can't protect ideas, only tangible expressions of ideas. – Charles Nov 16 '18 at 16:17
1

tool I developed as my PhD dissertation.

What kind of tool? Over here (Germany) the copyright (i.e. the economic exploitation rights) for software are by default owned by the employer, i.e. possibly your university if you had an employment contract for your PhD work. If we're talking about a software tool, they need a license by the owner of the copyright.

Copyright wrt. the dissertation itself is not of importance here unless the company wants to make copies of the dissertation or quote/reuse parts of it (as opposed to using the methods described).

Methods and knowledge described in the thesis: unless there's a patent (which would grant the patentholder the exclusive right to use e.g. that method), everyone is free to use whatever they learn from reading your thesis. Just as you are free to use everything you learned from reading any other book or paper.

Thus:

The company doesn't own my dissertation knowledge - or do they?

No, but they also don't need to own your dissertation knowledge in order to use it. (With the exception of their employees including you) they also cannot forbid anyone else to use that knowledge: they'd need to own a patent on that knowledge (or the copyright for software) to do that.

The important idea behind the patent is that the exclusive rights are granted in exchange for making the content of the patent public, i.e. from the point of view of patent law, you had the choice to keep it private (unpublished). But patent law requires you first to think: if you want a patent, i. e. to forbid others to make use of your knowledge, you need to declare that before making the knowledge public. If you don't want your knowledge to be public, keep it secret and neither ask a patent nor publish your knowledge. If you want to make the knowledge public, but don't want to forbid anyone to use it: fine, no need to file a patent, just publish it.

Which is what you did: A normal PhD thesis is public (and published) in every sense of the terms, and so are your research papers.

I am worried that [...] they will continue using my science, continue not crediting me, and I will feel cheated, even though I brought up the idea of using it while working here.

No point in feeling cheated here, see above. If there's anything you could feel cheated about it's that you did not file a patent (in case that was possible: not all gains in knowledge can be patented or protected by copyright). Any other company, including competitors of your current employer and any future employers of yours can use the knowledge they get from reading your thesis, just like your present employer.

Still, you may want to consider whether you like to work for an employer who turns out not be very generous (after all, saying thank you and that your contributions are valuable and publicly crediting you for your contribution costs more ego than money).

Lack of citation: The company is trying to represent the work as a "Company Project" and they have removed all citations and mentions of me individually.

Unless they try to get publicity by writing a scientific paper (where the usual academic standards for citing the source of ideas apply), they are bound by copyright. I.e. they need to cite (and possibly obtain a license) only if they quote or reuse tables or graphs from your thesis. Copyright btw. does not cover fact knowledge (if you measure and publish the density of pure water at 4 °C, others can use and quote your numbers without the need to obtain a license. Databases are different, though, and may not be reused without license)

I was told all press contact must go through our Marketing department, even though I have been contacted independently by journalists that saw me present this project / my science at conferences earlier this year. I am not supposed to speak with them, and instead redirect them to our Marketing group. I find this very odd.

(Side note: I found it even more odd, when I encountered a similar situation in an academic research institution)

IMHO it is within the rights of your employer to decide who the contact/spokesperson for the company project is. IANAL, but I don't expect* the company can forbid you to talk to journalists about your PhD thesis.
Whether you want to ruin your relationship with your employer about this question or whether it would be strategically a much smarter move to say that as you are interested in that project since long before they ever became aware of it, you'd like to be more deeply involved in this - and this way try be the important guy first marketing talks to about the project and after a while try to get a sufficiently public position.

The other recommendation I have is: try to find out why you are not supposed to speak to the journalists. A couple of reasons that for me would lead to totally different conclusions come to my mind:

  • Your company may be working towards a patent right now. That hypothetical patent needs to achieve a certain non-negligible advance over the state of the art. Everything described in your thesis is already state of the art, so they can patent only new inventions on top of that. But they may be afraid that you accidentally reveal relevant internal information to the journalist - and that would make that revealed knowledge also state of the art and thus endanger the patent. The marketing guys may be pros in realizing what internal knowledge must be kept internal - wheras your employer may (rightly or wrongly) think that you are still more in academic mode and tend to tell things.
    (I'd probably try to be involved in any such patenting project, but think this a sensible reason)
  • It may be the general policy that marketing/PR is the only point of contact of the public.
    (Whether I'd think this a sensible reason or not would depend - but if the general PR policy of the company doesn't suit you, this should enter your thoughts about what you want for your professional future)

  • They may try to gag you and get out all your knowledge and then ditch you.
    Of course, not sensible/acceptable.


* For Germany I have learned that broad gagging clauses in the employment contract that try to forbid more than what an employer can claim legitimate interest for are totally void. Together with the extremely employee-friendly court rulings we have here, I'd feel completely safe talking about my thesis work of 5 years before joining my current employer.

For the whole answer: keep in mind that I'm most used to Central European (German) legislation and working customs. Your legislation and work culture may have a different view on some of these aspects.

Not the answer you're looking for? Browse other questions tagged or ask your own question.