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I am working for a company as an intern. Then I proposed some ideas and drafted a paper. In the meantime, I got some help from my university PhD friends so I list them as the co-authors. I planned to submit it to a conference. However, the company told me that they want to file a patent for this work first. And then they told me I should not submit the paper unless I exclude the ones who are not related to the company (i.e. my PhD friends). But actually, he contributes a lot to this research work. Obviously, I don't want to exclude him.

I am not sure. Why is it like that? Is this the company policy or the patent law? I thought paper and patent are different things.

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    Yes, you are deep into "lawyer" territory - don't take your coworkers or boss's suggestions on anything here as any sort of valid legal advice. If they think you all can proceed without lawyers involved they are extremely foolish.
    – Bryan Krause
    Jun 24 at 14:07
  • I guess the only way now is to persuade my friend to give up the authorship. Maybe it is the cleanest way. Luckily he did not spend too much energy on it. Basically I have done 95% of the work. I will talk with him.
    – hidemyname
    Jun 24 at 15:33
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    The law depends on your jurisdiction, but in the US: "Pursuant to 35 U.S.C. 116, "[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.""
    – Bryan Krause
    Jun 24 at 15:40
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    Looks like a mess. Check if you friend's help is in the commerically valueable part, or just in the scientific explanation. In the former case, he has every right to also be in the patent, and proof for that claim in the form of your manuscript. Don't loose a friend on this!
    – Karl
    Jun 25 at 8:18
  • Broadly, this depends on either long legal battles… or the wording of your contract of employment. Can you precis that part of the contract that deals with development projects, patents and the like? Jun 26 at 22:20

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Ah, that is quite a mess you have made. The mistake was to bring in your friends to help on a company-owned project. I doubt that your manager at the company would have agreed to that, not least because of the IP involved. As part of your on-boarding you likely were informed that the company owned what you did for them as an intern.

However, the company are now making a mess of their own, since they need to face up to the fact that work was done by people at the university.

So, lots of lawyers will get involved, so tell them the truth of what happened and then let the lawyers do what they do...

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    @hidemyname " I guess the problem is that they didn’t know the rule as well" that is quite likely in my experience Jun 25 at 11:15
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    Because previously other students also come to some companies. Their work resulted in publications. But this time the problem is that the company wants a patent. And we all don't realize that this is a different process this time.
    – hidemyname
    Jun 26 at 10:36
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Devil's advocate here.

I got some help from my university PhD friends so I list them as the co-authors.

Did they help you, or did they contribute to the final product that you want to publish/patent?

If they helped you, the acknowledgments are enough for them and it is the easy escape from long legal discussion/consequences you will have (expect to loose PHD friends, though, because they almost surely helped you expecting to co-author a paper).

For the future readers: if you are an intern, keep the brilliant ideas you have while being intern somewhere for yourself, develop them only afterwards (i.e., do not disclose to your intern manager, just mention it broadly when/if discussing a contract renewal...).

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    Side note: this is a huge mess. Because OP is neither 100% cynical (OP would have kept the idea for themselves, good luck to the PhD friends legally demonstrating they contributed to the patent), nor 100% altruist (OP gave your PhD friends a good idea to develop, they did so, but you wanted a reward), and likely a bit "better knowing" (OP disclosing to the company they are developing a new product? very cumbersome, let's do everything under the table and get a big celebration/reward for submitting a patent in some months...) In short, because OP is human.
    – EarlGrey
    Jun 24 at 14:14
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I agree with you and the other answers that this is a mess.

However, I'd like to tackle the actual question:

Can the patent and paper have different authors (assume they include the same content)?

Yes. Being inventor is not the same as being author. The intellectual contributions needed for a scientific paper are not necessarily the same as the intellectual contributions of the invention. You may have inventors who did not contribute sufficiently to warrant co-authorship and you may have authors who did not contribute sufficiently to warrant co-inventorship.

Both authorship and inventorship can only be determined by closely examining the actual contributions of everyone involved.

Inventorship is about sufficient contributions to the solution as claimed in the patent.

Important differences include:

  • for a scientific paper identifying and describing the problem is an intellectual contribution, but for the invention only contributions to finding the solution count.
    If someone comes up with a formulation of the problem that makes the solution obvious (which it wasn't before), I guess it would be a contribution to the solution. If it's more like "hey, we have a problem here", rather not.

  • for a scientific paper, devising experiments to characterize the performance of the invented device or process is a proper intellectual contribution (assuming it's not routine work), but it is not a contribution to that invention.

  Why is it like that? Is this the company policy or the patent law? I thought paper and patent are different things.

We obviously cannot say anything about a company policy we don't know. Plus legislations differ. So the following is about what I know about the related legal questions in .

However, it is quite possible that people contribute intellectually so as to properly become co-author to the paper without being co-inventors for the patent.

Example 1: I invents a new measurement device and does some basic experiments demonstrating that it works. I files the patent as sole inventor. For the paper, I teams up with a validation expert V who develops a rigorous experiment to measure the actually achieved performance of the new device, and this is published with co-authors I and V.

Example 2: imagine you are in the life sciences studying a particular biological phenomenon in a team: a biologist B who is expert on the biological question and the biology side of the experiments, a physicist P who is specialist for the measurement technique, and a statistician S who contributes expertise on experimental design and does the data analysis.
P invents an improvement to the measurement technique without substantial help from B or S.
=> P is inventor on the patent, the paper describing both the biological question and the invention is co-authored by B, P, and S.

Of course, there may be separate papers about the biological question and the invention, citing each other for the respective details. Then, P would be single author on the invention paper, and B and S would be co-authors of the biology paper (possibly P also, depending on how much intellectual contribution is left after the invention is "cut out")

And of course, B or S may have contributed substantially to the invention and would accordingly be inventors as well.

Now, as part of their new instrument development, P may have consulted engineer E whose work contributed to the invention. Then, P and E would be co-inventors for the patent, while E's contribution to the paper may only be sufficient for an acknowledgement.


I am working for a company as an intern

This puts a big question mark to who actually owns the IP here, so I'd advise you to get proper legal consulting also on this.

Over here, an internship is not necessarily an employment. In particular not if the internship is prescribed by your university curriculum for Bachelor or Master studies. In that case it would be quite likely that the IP you produced is owned by you and neither by the company nor the university, and there'd be particular legal restrictions about contracts for handing over that IP to the company or university (due to the power imbalance).

Another, entirely new level of mess would be added if you were both employee of the university and employee of the company since the legal defaults in employment contracts over here create a legal conflict - which however, is not yours but between university and company (and which is typically solved as part of cooperation contracts for joint projects)

(To add to the mess, the legal procedure on claiming an invention is somewhat different for companies vs. [public] universities.)


Whom to consult?

  • There are patent information centers (about 20 throughout Germany) who offer initial consulting for inventors. They are neutral as in being neither part of the university IP management (who may be party here), nor part of the company.

  • Chambers of commerce and (university) business incubators offer initial consulting for people who think about starting a business, and often also initial consulting for inventors.
    At least the university incubator services are likely used to the very first crucial question of starting a spin-off based on some invention being whether the effort to legally disentangle the situation is worth while or whether the potential business is buried at this point;-)
    If they are not able to answer your questions, they will at least be able to point you to someone who is.

  • The university IP office likely offers consulting as well, but they may be an interested party. However, if you do not have any personal commercial interest in the patent, that is unlikely to negatively affect you.


Personal experience: I've invented something where the patent information center people said it's likely patentable, but the legal situation with my public research institute (even without company involvement) was so entangled that I decided it was not worth while to follow up the matter.
However, when people talk about inventions vanishing in drawers, I have a story to contribute now ;-)


Further advise

From what you write I think the best way for you is to treat this as an opportunity to learn, but not expect any additional outcomes.

  • Determine authorship the way it is always done.
  • Try to find out (via consulting above)
    • whether your friend should actually be co-inventor. If so, list them.
    • whether you have any obligations towards your university wrt. the invention.

It may be that the practical solution to this mess is to have only the paper but not the patent: for the company, while this means they cannot keep anyone else from using this solution, it already gives them the legal certainty that also noone else can file a patent on this (forbidding them to use the invention) in the future.

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Your company has an interest in having its patent be valid. If they include work of others in the patent as indicated by authorship of the paper, the patent is less defensible. Since patent and paper are not identical, it might be possible, but the company lawyers will certainly want to avoid a problem.

An alternative possibility is to get your friends to sign over their portion of the patent to the company. Then they could actually be co-authors of the patent. You might want to elevate this to the company lawyers first.

Patent rights are to be taken very seriously. Usually, when it comes to a fight with another company, it ends with a compromise and mutual licensing, at least in the Computer industry. If you make a silly mistake like including other people on the author-list of a related paper, you weaken the negotiation platform. Litigation and preparation for litigation is very expensive.

Finally, you are an intern. Are you being paid reasonably well? Is the paper related to your work with the company? Did others at the company contribute at all or a lot? Do you have an advisor who can get you in contact with the university intellectual property lawyers? A lot will depend on the local laws.

To answer the question: Yes it is possible, but your company will be very unhappy. They might not own your work, though.

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    @hidemyname I'm not aware of anything in US patent law that lets you decide after the fact what part of the work is done by the company and what part is done by the university in order to keep the patent for just the company, and can't imagine that being allowed under any other patent system. I don't know why you think this is appropriate or possible. You need to consult with a lawyer, not make up your own legal theories.
    – Bryan Krause
    Jun 24 at 16:22
  • @BryanKrause: decide as in find out is of course possible and the thing to do. Decide as in change history, not... Jun 25 at 12:40
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    "get your friends to sign over their portion of the patent to the company." this may not be up to the friend to decide, since their IP production may be owned by the university. The same may or may not be true for OP (depending on legal status and legal defaults in OP's legislation)... Jun 25 at 12:55

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