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Chapter 6
Case Study: The Difference Between Authorship and Inventorship Jeffrey Kovac* Department of Chemistry, University of Tennessee, Knoxville, Tennessee 37996, United States *E-mail:
[email protected].
This ethics case explores the difference between authorship and inventorship, but the principle ethical issues concern the relationship between a research advisor and a graduate student. Although the specific issue has to do with patent rights, this case can lead to a more general discussion regarding ethical issues that can arise in the advisor-student relationship.
Patent Application Bonnie Sanchez was a graduate student working in the research group of Arthur Taylor, a well-known synthetic polymer chemist. Taylor had an idea for a new catalyst for stereo-specific polymers which he asked Bonnie to develop in the laboratory. After a year of research with the usual frustrations, Bonnie got the catalyst to work and began exploring is usefulness in the polymerization of a variety of monomers. After seeing Bonnie’s early results, Taylor was convinced that his catalytic system could be scaled up and would be useful in the polymer industry, so, he contacted the university patent office and filed a patent application listing himself as the sole inventor. He did not tell Bonnie about the patent application. After Bonnie had shown that the catalyst was broadly applicable, Taylor asked Bonnie to write an article describing the research she had done. Because this was Bonnie’s first article, there were multiple revisions, but eventually they submitted the article to Macromolecules, with Bonnie as the lead author. The published article received a great deal of attention from both academic and industrial polymer chemists, and both Bonnie and Dr. Taylor received calls and
© 2018 American Chemical Society Mabrouk and Currano; Credit Where Credit Is Due: Respecting Authorship and Intellectual Property ACS Symposium Series; American Chemical Society: Washington, DC, 2018.
e-mails from companies interested in using the catalyst. As a result, Bonnie went to Dr. Taylor and asked, “Shouldn’t we file a patent application?” “I already have,” replied Dr. Taylor. “I went to the university patent office before we wrote the article to make sure I had established inventorship.” “Wait a minute,” said Bonnie. “Shouldn’t I be listed as a co-inventor? After all, I’m the one who got the system to work.” Dr. Taylor patiently explained, “That is not how the system works. The inventor is the person who had the idea. Just because you were a co-author, even the lead author, does not make you a co-inventor. The rules are different for patents than for articles.” “That doesn’t seem fair,” said Bonnie, “I think I deserve some of the credit.” 1. 2. 3. 4. 5.
Was Dr. Taylor’s behavior in not telling Bonnie about the patent application professionally responsible? Why or why not? How could Dr. Taylor have handled the situation differently to avoid an unpleasant discussion with Bonnie? Do you think that Bonnie should be listed as a co-inventor? Why or why not? Assuming that the catalyst is commercially successful, should Bonnie receive any financial compensation? What responsibilities do the chemistry department and the university’s research office have in educating faculty, postdocs, and graduate students in the basics of patent law and the difference between inventorship and authorship?
68 Mabrouk and Currano; Credit Where Credit Is Due: Respecting Authorship and Intellectual Property ACS Symposium Series; American Chemical Society: Washington, DC, 2018.
