Whose Intellectual Property?

Sal is a graduate research assistant in a laboratory involved in developing an innovative technology that is of significant commercial interest. Sal is working on this cutting-edge research with two other graduate students, Hal and Val. They are working under the guidance of Professor Love, who has funding from the National Science Foundation (NSF) and an industrial sponsor.

Although the research has yet to reach a stage where it might be commercially viable, the industrial sponsor wishes to be the first company to capitalize on this technology when the research has reached such a stage. The National Science Foundation's interest in sponsoring this project is based on the fact that the project offers a rare opportunity to advance scientific knowledge in an entirely new area.

Sal and his fellow students, Hal and Val, were originally attracted to this project because of the opportunity to be at the forefront of research. Each of them are especially enthusiastic about their work in the laboratory as new discoveries are being made. Professor Love has been very supportive and has provided good guidance on the project. Professor Love stresses the educational value of such an opportunity and is especially pleased with the enthusiasm that the graduate students exhibit.

Sal, Hal, and Val are close friends and they each work on areas of the research that complement one another. They are nearing graduation (to within a semester or two of each other). One Friday evening when they were having their weekly after-work get-together, the topic of discussion turned to matters concerning their professional goals. They decided that they would like to work together and set up a company of their own. What could be a better opportunity for a group of graduate students who work well together than to stay together, and go on in business?

Being engrossed with their research, they can only think of setting up a business which would bring their present research to fruition and into the commercial realm. After all, this is where their expertise lies.

• What must these students consider in order to respect the intellectual property rights of the industrial sponsor? Of Professor Love?
• How is NSF's requirement for public disclosure balanced against the industrial sponsor's need for confidentiality?
• What are the criteria for determining how much of what is learned in the laboratory is considered confidential intellectual property and how much of it is considered reasonable to be made use of by this group of students? Are there any skills that a graduate student acquires from research that the industrial sponsor or Professor Love has a right to prevent the student from using?
• What are the rights and responsibilities of Sal, Val, and Hal?
• What are the rights and responsibilities of Professor Love?
• How would the scenario, as outlined, be treated differently if Sal, Val, and Hal were working in a commercial company doing the same research and development work?