BioMax and Intellectual Property
A knock is heard on the open office door of Alex Michaels, intellectual property (IP) officer for the university, and a young man pokes his head in.
"Mr. Michaels, do you have a few minutes to talk with me?" asks Yong Yu Chou.
"How can I help you," replies Michaels.
"My name is Yong Yu Chou, and I am a second year graduate student in Prof. Summers' lab. I wanted to see if you could help me understand this paper she wants me to sign. I have not seen her for a month, and she just left for three weeks in Europe to go to a conference and give talks."
"How can you do your research if you never see your professor?" asks Michaels.
"Oh, it is no problem. She sends email messages every day or two with instructions on what I should do in the lab, and I email her my results. She says that I am doing very well on the work for the project she is doing with BioMax."
Michaels says, "Ah yes, I remember working with her on the IP provisions of that contract and making sure she'd have no problems with publishing."
"I know, that is why I came to talk to you."I have emailed Prof. Summers two times," says Chou. "But she does not answer my questions. She only tells me what experiments I need to do, and reminds me that I need to send this signed confidentiality agreement to BioMax before the 1st, tomorrow."
"Well, that's odd. So this document you want to ask me about is for BioMax. Let me take a look. What is it you don't understand?" asks Michaels quickly scanning the page.
"It's the part about my data. Look at the third paragraph where it says that BioMax will own all the data, and will determine when and where it will be published. What about my dissertation?"
Discussion of the Case
Interests of the Affected Parties
- Alex Michaels has an interest in fulfilling the responsibilities of his position in a proficient and efficient manner that facilitates the research conducted at the university. He also has an interest in establishing and maintaining good working relationships with the research faculty who create intellectual property at the university.
- Yong Yu Chou is interested in learning about his discipline, doing his research, developing skills as a professional researcher, and completing his degree. He is interested in maintaining a good trainee-advisor relationship with Prof. Summers, and continuing to be supported with a stipend and/or tuition remission. He may also have an interest in developing a good relationship with BioMax for the purpose of future employment.
- Prof. Summers is interested her professional status in the university and her discipline. As such, she is interested in the successful progress of her students, in her research team completing and publishing the results of her projects, and in continuing to receive external funding. She has an interest in having her laboratory being a good lab for graduate students to work in.
- The university has interests in receiving external funding to support its researchers and students, and in being a good place for faculty to do research, graduate students to study, and industrial funders to find partners for research.
- BioMax is interested in getting the best research results as quickly as possible for the funds that it expends and in protecting its financial interests.
Obligations
- Michaels has obligations to all parties in this scenario. First, to help ensure that the agreements in which the university is involved are honored. Second, to look after his employer's interests, the interests of its researchers and students, to maximize potential income and benefit from partnerships with industrial funders, and to follow university policies. Third, to facilitate faculty research programs, to protect faculty interests in the intellectual property generated, and to respect the relationships faculty have with the members of their laboratories. Fourth, to protect the intellectual property rights of graduate students as well as to support the education of students.
- Chou has an obligation to educate himself about all aspects of importance to a professional researcher, including intellectual property. He has an obligation to himself to complete his degree, and an obligation to Prof. Summers to respect her role as his research advisor.
- Prof Summers has an obligation to Chou, and all of her graduate students, to facilitate their education in their discipline and as young professional researchers. She also has an obligation to herself, her research sponsors, and the university to responsibly complete and publish the results of research she has undertaken. She has an obligation to fulfill the terms of agreements to which the university is a signatory. Finally, she has an obligation to ensure that she does not agree to any "side agreements" that would place her or anyone in her lab in conflict with their educational or employment responsibilities.
- The university has an obligation to educate and protect its students, facilitate the work of its researchers, and to support its staff members.
- BioMax has an obligation of fulfill the terms of agreements to which it is a party, as well as an obligation to maximize profit for its investors.
Ethical Issues
It appears that there may be some conflict between the form that Chou is being asked to sign and the IP provisions of the contract between BioMax and the university. If so, Michaels finds himself with a conflict between his duty to help insure that all parties abide by the terms of the contract, and respecting the trainee-advisor relationship between Chou and Summers as well as his own interest in maintaining a good working relationship with Summers and BioMax. Based on what Chou has told Michaels about they way he is conducting his research, Michaels also has a conflict between his obligation, as a member of the university community, to support its educational mission and his interest in maintaining good working relationships between himself and Summers and between Chou and Summers. Summers does not perceive the conflict in which she is putting her graduate student and lab by being willing to have her graduate student agree to confidentiality terms that could jeopardize his education. In addition, Chou's interest in completing his degree may be in conflict with his interest in maintaining good relationships with Prof. Summers and BioMax.
Consequences of Actions
If Michaels takes no action and Chou signs the form for BioMax, there would be later problems with publication of the research and completion of Chou's dissertation, as well as questions as to why Michaels did nothing after Chou brought the situation to his attention. This is likely to be disruptive as well as not good for Michaels' job evaluation.
If, on the other hand, Michaels quickly fires off irate emails to Summers and BioMax accusing them of breaking their agreement with the university and exploiting a graduate student, it will be very difficult to make progress in resolving this situation and maintaining a good working relationships among the parties. This will be a particular problem for the relationship between Chou and Summers if Michaels is perceived as having undercut Summers' authority, or if Chou is seen as having gone over Summers' head.
Michaels needs to be aware of all his obligations in this situation, and gather as much background information as is practical before he acts. He cannot take too long to act, but he does need to review the original contract, carefully read the form Chou has brought to him, determine just what work the form refers to, and if this is the same research as that is covered by the original contract. Even if the research referred to by the form is not covered by the contract, there may be problems with a conflict between the provisions of the form and university policy. An approach that seeks information and clarification from Summers and BioMax might serve Michaels the best. He might also want to talk informally with another professor in Summers' department that he trusts about how graduate students normally conduct their dissertation research, and any concerns he may have as a result of his conversation with Chou.
