Intellectual Property Policies:

Effects on Senior Design Capstone Courses

Gary H. Brandenburger, D.Sc.Director Entrepreneurial & MBA/MS-BME Programs

Adjunct Professor Biomedical Engineering

Chih-Mao Hsieh, PhDMonami Chakrabarti, BA, MA

Stuart Rosenberg, BS, MS

Our Goals for Senior Design Course Improvement

Better prepare students for actual engineering practice and first job in industry

Teach and encourage entrepreneurism

Improve students’ employability

Exceed ABET requirements

3 Simple Hypotheses

Involving students in intellectual property issues and activities is vital to experiencing the design process

Real-life engineering projects from industry provide some of the most valuable design course experiences

Many (most?) of the valuable real-life engineering projects are intertwined with issues of intellectual property

Real-life engineering projects are intertwined with issues of intellectual property

IntellectualProperty

Best Projects

New InventionsExisting

Inventions

Trade Secrets

Market Research

CorporateIP Policies

Can of Worms…

IntellectualProperty

Best Projects + University

Policy =

Pilot Study Design

Survey leading colleges and universities

Poll senior design instructors

Assess multiple departments at some schools

Use standardized questionnaire administered by phone

What We’ll Discuss Today

Initial phase of survey data collection done

Focus on subset of questions

Highlights of preliminary results

Possible conclusions

University IP Policy Issues

Are undergraduate students allowed to:

sign confidentiality agreements?

sign agreements assigning IP rights?

own IP they invent without faculty co-invention?

sign IP agreements with the faculty or industry sponsors of their design project?

University IP Policy Issues

Industry sponsored design projects:

Does university assert ownership of IP created as part of the design project?

What limits does the University place on confidentiality?

Should faculty contribute to potentially patentable inventions or avoid involvement?

Preliminary Results

Interviewed 48 instructors at 28 universities

All instructors very supportive of study

Universal interest in seeing results

Study touched on numerous “hot buttons”

“Hot Buttons”

Nondisclosure agreements (NDAs)

Allow/Offer/Promote industry sponsored projects?

Encourage students to create patentable inventions?

Who owns the patent rights?

and many more…

Nondisclosure agreements (NDAs)

Totals from interviews 21 courses at 16 universities actively use NDAs 2 Universities prohibit NDAs (Not universally enforced) 4 Instructors discourage NDAs 3 Instructors don't know university NDA policy 8 courses at 7 universities allow but do not need 3 courses at 2 universities allow but rarely need

Informal poll: >15 other universities use NDAs

Industry sponsored projects?

5 courses at 4 universities have ONLY industry sponsored projects

15 courses at 13 universities have 1/3 or more projects from industry sponsors

13 courses at 11 universities have a mix of industry and other sponsored projects

2 courses at 2 universities have a small but growing number of industry sponsored projects

11 courses at 10 universities allow industry and/or students to retain all IP rights

Industry sponsored projects or not?

7 courses at 7 universities handle IP rights on a case by case basis

5 courses at 4 universities have few projects from industry sponsors

8 courses at 5 universities have NO industry sponsored projects

14 courses at 11 universities: no IP has resulted from company sponsored projects yet or instructors don’t know who would have IP rights if it did

4 universities retain all IP rights for industry sponsored projects

What Instructors Tell Us

They promote industry sponsored projects because this offers students:

Most realistic, challenging design experience Protected environment to learn Opportunity to interact with industry design teams Industry-standard design review and feedback Teaches students how to deal with IP and to negotiate with

company Increased likelihood of job with industry sponsors after

graduate Advantage in seeking the best jobs after graduation

What Instructors Tell Us

They promote industry sponsored projects because this offers students:

Most realistic, challenging design experience Protected environment to learn Opportunity to interact with industry design teams Industry-standard design review and feedback Teaches students how to deal with IP and to negotiate with

company Increased likelihood of job with industry sponsors after

graduate Advantage in seeking the best jobs after graduation

What Instructors Tell Us They disallow or limit the number of industry sponsored

projects because:

NDAs prohibited or discouraged Vague or ambiguous university IP policy Too difficult or time consuming due to

lack of legal and logistic support no standard contracts, must negotiate each anew university takes too long to negotiate & approve contracts need to cultivate & maintain industry relationships

Just don’t believe in industry sponsored projects Fear dealing with possible inventions

Wave of the Future: Multi-Disciplinary Capstone Courses

Offered at three universities

Two support teams with students from all engineering departments

One offers cross-campus design teams

Students experience diverse teams business, management, legal, marketing, art , social work

and other engineering disciplines like actual product development teams in industry

Wave of the Future: Multi-Semester Capstone Courses

Optional first or optional second semester

Sequence of courses starting in freshman, sophomore or junior years

Time and opportunity to construct prototypes

Wave of the Future: Industry Sponsor Financial Support

Grant or fee to cover team’s actual expenses team’s use of university facilities

Support ranges from $500 - $50K per project

May or may not be tied to specific project

Advantages of Industry Sponsor Financial Support Basis for university waiving IP rights

Sufficient funds to cover team’s prototyping expenses

At some universities underwrites senior design facility with: Support staff and technicians Industry relations staff Manufacturing Machine shop Electronics lab CAD facility

Stay Tuned for Further Developments!

Decide whether to interview additional instructors and universities

Complete study and data analyses

Send white paper to participating instructors, request updated information

Submit journal article

What interdisciplinary work is done? How do students collaborate with people in other fields?

Who submits ideas for design projects? (Check all that apply) Students generate their own ideas Faculty who are involved with determining the students’ grades Other Faculty or researchers or university employee inventors who do influence

the grade Other Faculty or researchers or university employee inventors not involved with

grading Industry partners who have an ongoing collaboration on the design course

(multiple projects over multiple years) Industry-initiated university project that gets included in design course (occasional

project) Other: Don’t know

What interdisciplinary work is done? How do students collaborate with people in other fields?

If a student develops his or her own idea for a class, and the idea results in a patentable invention, does university have a policy regarding students’ rights to ownership in IP to which they materially contributed?Check which apply: Students must assign all rights under standard policy upon entering the

University Students must assign all rights upon entering the course Student rights handled on case-by-case basis (Student assignment of rights

dealt with only upon creation of IP in the course) If yes, can you describe briefly what issues you have faced and how you dealt

with them when individual cases do arise? There is no policy at all Students retain all rights

(who owns the invention? Be aware that many students/professors think that the inventor is the owner – so the issue is clearer if we ask if inventors must assign their ownership rights to the University or other entity.)

Other (explain)

What interdisciplinary work is done? How do students collaborate with people in other fields?

How do you protect IP (includes any form of information, not just patentable inventions) associated with the class?

Sign agreement covering confidentiality and non-disclosure upon entering class

Sign such agreement on a case-by-case basis Never sign such agreements No policy regarding confidentiality Other

To whom do these agreements pertain? (e.g. between individual students and the university, among students in the class, etc)

How are issues handled when academics conflict with innovation?

Has your university encountered any situations where the students or the design course's academic objectives might be compromised by the experiential nature of the course? Consider four specific situations: Students getting paid in conjunction with the course Unfairness, real or perceived, regarding the students level of participation or value of experience

throughout the project Students' managing effectively the time spent on the design course versus time left for the students

other courses Student IP ownership Bias, real or perceived, in the grading as a result of IP or financial outcomes

What does your university do to assure that students gain educational experience from a project and are not used as "labor" valued primarily for their prior skills to earn a grade? How has this affected policies?

How pleased are you with your current policy? works well, no changes needed works reasonably well, needs minor changes works but need significant improvement doesn’t work at all

Are there any other comments you would like to make on IP policy?

Optional Questions(time permitting)

What is the role of a Technology Transfer or IP Management office in promoting innovation?

How is the Technology Transfer or IP Management office involved when a student in the design course has an invention? Consultation (idea evaluation, helping inventor find resources to pursue IP) Funding (pays for patent application and legal counsel) Support for new ventures (incubator, seed money) Support for technology licensing (market analysis, finding and funding contract) Securing new research (government or privately commissioned projects) Other: Don’t know

Do engineering students collaborate with students or faculty from other schools, departments or campus groups? If so, who participates? What is the nature of participation? Business (management, entrepreneurship, marketing) Law (patent, regulatory) Art (graphic design, industrial design) Humanities (ethics, social studies) Medical (clinical applications, applied research) Other: Don’t know