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In our research institute, advisors give phd students a lot of freedom and sometimes are not so much involved in the research. This was also the case for my latest research project. I gave him some demos every now and then to show my progress and another phd student helped me out a bit with making some examples and nice figures. However, I came up with the initial idea and step by step made the necessary decissions to come to the point where we are now. We are now in a phase where my advisor and the university want to patent my research and we are discussing all the possibilities with people from the legal departement. However, in all documents the other phd student + my advisor are also mentioned as "inventors". Wheras I'm quite sure that according to the laws related to being an inventor on a patent, they are officially not an inventor of this research project. The research that I did is quite applied so there is some chance that we can make some money with it in the future (selling it or starting a company). The university states that the inventors get 30% of all the profit that comes from the patent. This means that I would only get 10% since we are with 3 co-inventers. Also when I would start a company that does something with these results I would still have to give them some of the profit whereas they did not do something significant in the end.

When I look at researchers at other universities, I notice that it is quite common that all the authors on a paper are also the inventors of the patent that is associated with it. I can imagine that for most of these cases all the people involved at some innovative contribution which makes them a legitimate inventor. On the other hand it is also quite hard to say to your advisor that they should not be an inventor on the patent...

Is this an unspoken rule at many universities that advisors and co-workers are also inventors on a patent (similar to authors on a paper)? Is someone having experience a similar situation? How should I bring this up to my advisor and co-worker or would it bring me into more trouble when I would start this discussion?

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    People can be listed among the 'inventors' without getting a share of the royalties (like for physicians, for whom it's sometimes illegal to receive royalties). Apart from that, I think a polite discussion about who should be inventor is definitely a good idea. – Cape Code Jan 12 '15 at 17:26
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    Do you have a co-authored paper related to the patent with these people? – Alexandros Jan 12 '15 at 17:36
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    There is indeed a paper with all 3 of us on it, but it will not be available before the patent is finished filled. But rules for being an author on a paper are not the same as the laws for being an inventor on a patent. Especially in our institute it is a hard topic since also on research papers they often put other professors on them before just to please them. – Don Batist Jan 12 '15 at 17:40
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    @EnergyNumbers From the beginning my advisor put all three of us as inventors in the documents, emails. We dont have the patent yet and are in an early phase so now is the moment to discuss this stuff if I ever want to bring it up. – Don Batist Jan 12 '15 at 17:42
  • @DonBatist tangential to this question, adding coauthors that did not contribute to papers is definitely a problem that needs to be addressed. This is not the way academia works. If caught, this can cause serious problems. – Marc Claesen Jan 13 '15 at 9:37
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First of all, your legislation is what counts. Patent law differs substantially between legislations. The remainder of my answer is based on the situation in Germany - but similar rules may exist for your legislation.

Is this an unspoken rule at many universities that advisors and co-workers are also inventors on a patent

IANAL, and I'm not even totally sure about the situation in Germany, but I'd look for spelled out rules in

  • the "employee invention law" (Arbeitnehmererfindungsgesetz)
  • if you are employee as well as PhD student: your work contract or the relevant collective wage agreement
  • you may have signed a contract for your PhD that has relevant clauses, e.g. stating that any invention you invent is treated as "academic invention" regardless of whether you are also employee of the university or not.
  • If you are PhD student but not employee (e.g. paid by a scholarship), things may be totally different.
  • If you are in a research institute which is not part of a university, rules again can be different (industrial invention rules instead of academic invention could apply)

I found a web site dedicated to "inventor's compensation" (in German and for Germany). They explain rules to estimate how much the invention the inventor's own invention and how much the company contributed (influenced e.g. by whether you used the university lab + instruments, and by your profession: how much of an inventor you are expected to be due to your profession and job).
This website explains that for you as well as for your (supposed) co-inventors, a point value (according more or less to a check list plus some common sense) should be calculated, and the percentages of co-inventorship are then calculated as percentages of the sum of all co-inventors' point values.

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The fact that "all the authors on a paper are also the inventors of the patent that is associated with it" probably protects you more, otherwise an unethical supervisor could easily do the patent by himself behind your back.

On the other hand, wanting to remove the other co-authors from the patent is probably unethical on your side. In any case, you would have a hard case proving that this was entirely your idea when you have co-authored the related paper and cooperated on this project from the beginning. Also, if indeed your patent is that good (which unfortunately most aren't) you will still make a lot of money, regardless of 10% vs 30% (since the bulk of the money will still go to the university).

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