New Technology - Who Is the Designer?
Part 1
Edgar Engineer is a licensed civil engineer and principal
investigator on a university project researching environmental
contamination problems. His work involves the sampling of
groundwater and soil to determine the nature and extent of
contamination at a local commercial site. As a result of his
research at the site, Edgar identified a need for improvements
in commercially available sampling technologies; essentially,
Edgar wanted to provide more samples for improved analysis
without any negative impact to the project in terms of cost or
sample integrity. He sketched out a sampling concept that he
believed would save significant labor and cost, and shared the
idea informally with Doris, the manager of the site, who
encouraged Edgar to explore construction strategies.
Edgar contacted Fabio Fabricator, a vendor who supplies
sampling equipment, to discuss a sampling system that would do
what Edgar wanted. Edgar's concept included general design
requirements and performance specifications in the written
request for cost proposal. Fabio responded to the request,
discussed the sampling idea with Edgar, and agreed to build a
prototype that would meet Edgar's sampling performance
needs.
Doris agreed to split the initial costs with Edgar, provided
that this technology would be proven and ultimately used first
on her site, and that her site would benefit directly from
eventual cost savings. Over the next few months, Edgar and
Fabio met occasionally to review Fabio's drawings and refine
the performance specifications. Fabio customized a
hand-operated sampling machine (which he had been selling and
was currently patenting) to meet Edgar's requirement that it be
remotely operated. Fabio built a system that incorporated other
existing technologies into the unique design that would meet
Edgar's sampling requirements. Some of these technology ideas
were suggested by Edgar. Upon completion, the prototype was
delivered to Edgar, who began conducting field tests of the
design and performing sampling tests to determine its
effectiveness.
During this period of testing, Edgar led a research project
comparing samples from the new technology with traditional
sampling techniques. Edgar assigned the field development and
machine testing to Mac, a mechanical engineering post-doc, who
made field improvements to some parts of the system and also
directed Fabio to redesign certain components to improve
reliability. Upon completion of the comparability study, the
new technology's sample quality was shown to be as good as the
other, more time-consuming sampling protocols.
In her company's annual report and advertising, Doris
enthusiastically publicized this successful time- and
cost-saving innovation that she had helped support and develop,
claiming it was designed by Fabio for Edgar's institution.
Edgar's main interest was in the faster, improved protocol that
this device enabled, and he published several conference and
journal papers discussing the advantages of the innovative
sampling approach, the technology's field development, and the
research comparing it with older methods. Edgar co-authored
these papers with the Mac, and Doris, who were integral to
proving the technology in the research project. Meanwhile,
Fabio developed improved models of the sampling machine for
industry and began marketing the technology. Everyone seemed
happy: Edgar's research project (and Doris's site cleanup)
progressed more rapidly with renewed funding, and Fabio printed
up some new catalogs including the new product.
A year later, Edgar discovered that Fabio had applied for a
new patent covering the overall sampling system. Edgar
complained to colleague at the university, "I met with Fabio at
a conference last week and saw the new sampling machine. Fabio
is pursuing a patent on it, and we got into a bit of a
discussion. Most of the ideas that went into it were mine, with
changes to their existing equipment. I told him that I wanted
to be listed on the patent, and he said that he'd 'keep me
informed of the status.' I don't think that's good enough, and
I would like some advice on how to proceed."
Discussion Questions
- Whose idea (intellectual property) is this technology?
Who designed the technology? Are these the same questions?
Support your position, identifying additional information
that, if available, would support your view.
- Suppose Fabio is not an engineer, but instead has good
mechanical skills that make him an experienced fabricator. He
asks Edgar to review and comment on the technical drawings
and size specifications to ensure the system will have proper
capacity when operated. Is Edgar performing technical peer
review of a vendor's product, or is he acting as a licensed
engineer "in responsible charge" of design approval?
- Should Fabio have been included as a co-author in Edgar's
research papers? Why or why not?
- Should Fabio have included Edgar in the patent
application? Why or why not?
- What about the roles of Mac and Doris in the prototype
design modifications and funding? Should they have been
included in the patent application as well? Why or why
not?
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Part 2
Fabio sees this situation differently. Edgar approached him
with performance requirements, just like any other buyer of his
products. Although these performance requirements related to
Edgar's good idea, Fabio designed the specific technology that
merited the new patent. Fabio believed that Edgar - a civil
engineer - did not have the mechanical background to design the
machine; he only had the knowledge to define the problem.
Modifications to the sampler retrieval unit that Fabio was
already selling and patenting were a central part of the
sampling machine; these were modifications within the scope of
Fabio's original product design.
Moreover, Edgar's performance specifications conformed to
Fabio's patent, simply allowing Fabio to apply his design in a
new way, coupling it with existing technologies. In fact, Edgar
provided no more than rough cartoon sketches and written
criteria that the technology had to meet; the cartoon sketch
Edgar provided was hardly a design, Fabio believed, but more
like an outline of the sampling problem. It was Fabio who
independently produced all technical drawings used to construct
the technology - the same drawings that were included in his
application for the additional patent describing the unique
features of the sampling machine. The studies that Edgar's
institution published significantly boosted Fabio's status as
product vendor, but Fabio did not believe they directly
contributed to the design.
Edgar's colleague responded to his complaint with the
following advice on the patent: "If you have your ideas
documented and signed in your notebook, the university could
strongly recommend that your name be on the patent application.
If Fabio does not put your name on the application, it would
put his whole patent in jeopardy."
Edgar explained, "I have several files on the design of the
vehicle, although nothing is really signed or in a notebook. My
notes document the study we did with the technology, focusing
on the modification of accepted protocols. I was going to draft
a letter to Fabio laying out my thoughts. Would you be
interested in reviewing it?"
Discussion Questions
- Does this additional information alter your judgment
about who designed the technology? Why or why not?
- If you were Edgar's colleague, how would you respond to
him?
- Do the facts that Fabio is not an engineer but an
experienced mechanic, while Edgar holds an engineering degree
and a professional license, make a difference in your
assessment?
- Suppose that Edgar and Fabio worked for the same firm or
research institution, with Edgar as the principal
investigator and Fabio as the technician; does your
assessment change?
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Epilogue
Ultimately, Fabio received patents for the hand-operated
sampler and for the automated sampling machine. Edgar was upset
that he was not named in the patent, but neither he nor the
university pursued the issue with Fabio. The university did
recognize Edgar's efforts and publications with a favorable
promotion review, and Edgar's work remained highly respected.
Fabio remained a vendor of this new sampling machine and other
equipment.
Discussion Questions
- How many points can you identify in the story where Edgar
could have acted to change the outcome? Identify at least two
alternative actions Edgar could have taken at each stage of
the story that might have provided a more satisfactory
outcome.
- Was the outcome fair? Why or why not?
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