Graduate Students’ Patent Rights

Lessons Learned from University of West Virginia v. VanVoorhies

Terry Wright

I. Patent Rights within a University System
Within any given university there is almost always an intellectual property policy that will govern the patent rights of both faculty and staff members.  Generally, these policies will apply to the faculty and staff through their employment agreements and call for the assignment of a particular invention to the university, regardless of whether the faculty or staff member knew of the obligation.  Although the application of these policies may be easier to stomach in light of an employment agreement, where the university employee exchanges the proceeds of their work for not only employment but laboratory space as well, applying the policies to student inventors is less appealing.  Yet graduate students are usually covered under these policies because they are classified as staff within the university.[1] Additionally, unlike other university employees, a graduate student’s position and patent rights within a university are not well defined.[2] Recently, however, a case arising in West Virginia shed light on not only the graduate student’s position within a typical university intellectual property system, but has also provided insights into the way a student inventor may protect his or her interests in their invention.

II. Lessons
learned from University of West Virginia v. VanVoorhies
a. Background
VanVoorhies enrolled at the University of West Virginia (WVU) in 1990 to pursue graduate studies in engineering.  While pursuing his Ph.D., VanVoorhies worked with a professor, Dr. James Smith, to invent the “contrawound toroidal helical antenna,” a small, low-profile antenna.  Pursuant to WVU’s intellectual property policy, VanVoorhies and Smith disclosed the invention to WVU and subsequently executed a patent application on the antenna and assigned all of the patent rights in that application, as well any patent rights in further continuing applications, to WVU.[3]
In December of 1993, VanVoorhies received his doctorate from WVU and, prior to beginning work as a Post-Graduate Research Assistant at WVU, he invented a “half-wave contrawound toroidal helical antenna.”  That second invention was a continuation of the first invention that he and Dr. Smith had previously invented.  Although, VanVoorhies did disclose the second invention to WVU, he did not respond when WVU sent him a patent application and another assignment to execute.[4] WVU subsequently filed a patent application on the second invention as a continuation-in-part of the prior invention without VanVoorhies being involved.[5] VanVoorhies, however, also filed a patent application on the second invention and listed himself as the sole inventor.  Furthermore, VanVoorhies did not assign this application to WVU, he assigned the invention to VorteKx, a company in which VanVoorhies was the sole shareholder and president.
Upon discovering the conflicting applications, WVU sued VanVoorhies in 1997, claiming that he had breached his duty to assign the second invention to WVU.[6] The court in that case ruled in favor of WVU and found that VanVoorhies did in fact breach his duty to the university by not assigning the second invention to the University because it was a continuation-in-part of the first invention and was thus covered by the prior assignment.[7] VanVoorhies then appealed to United States Court of Appeals for the Federal Circuit.  However, the appellate court also ruled in favor of WVU.[8]

b. How Student Inventors May Be Protected
Although VanVoorhies ultimately failed to show that he did not breach his duty to assign the second invention to WVU, many issues appeared in the decision of the appellate court that may provide insight into how a student inventor may protect their interests.  Possible solutions may include a different treatment of original and subsequent assignments of patent rights, changing the intellectual property policy of universities, and liberalizing the requirements imposed upon student inventors who claim a breach of fiduciary duty.
Requiring the original patent application to be assigned to the university may be justified because the university is providing education and laboratory space to the student when the invention was first created.  However, this justification is not as significant when the student invents additional subject matter after completing his work at the university and is no longer using the university’s resources.
In the case of VanVoorhies, the court held that VanVoorhies was required to assign his second invention to the University because it was a continuation-in-part application for the same antenna that he had invented while he was a student at WVU.[9] The Manual of Patent Examining Procedure (MPEP), used by the United States Patent and Trademark Office (USPTO), however, defines a continuation-in-part application as one that adds matter not disclosed in the earlier application.[10] Something new has been invented, and even though the new invention may be based on a prior invention it is held out by the USPTO as describing something that was not found in the prior application.  Universities should not be allowed to make a claim for this type of application when the student invents the new matter after he or she has left the university.
Many universities encourage educational and economic development of their students and the communities in which they are found.[11] In order to accomplish these goals it is imperative that the students who graduate from the universities should be able to take with them what they have learned while attending the university.  Permitting alumni to enjoy proprietary control of continuation-in-part applications would accord with this philosophy.
In spite of this focus on encouraging development, many universities still employ intellectual property policies that require inventions stemming from work initially performed at a university to be assigned back to the university, regardless of whether the particular inventor is still attending or employed by the university.  In VanVoorhies, the court based its ruling, in part, on the fact that the intellectual property policy of WVU, which was reflected in the original assignment, required all continuation-in-part applications to be assigned back to the university.[12] This has both the purpose and effect of depriving the student of any economic benefit based on prior work done and at first glance appears to be more a case of university greed than of encouraging student development.
Nevertheless, these types of intellectual property policies have become widely accepted since the Bayh-Dole Act of 1981.[13] This Act allows for universities that receive federal funds to elect to receive patent assignments.[14] Since this enactment, the number of technology transfer offices at universities has increased dramatically because the universities are now free to develop license relationships with outside corporations by use of the various assignments.  This development may provide a benefit to students because more money will be coming into the university.  However, at the same time it is operating at the expense of student inventors, whose role in the university system is often overlooked.
In light of these occurrences, many courts have recently recognized a breach of fiduciary duty as a possible remedy for student inventors.[15] In assessing whether a fiduciary duty exists courts have developed factors to assess the relationship between the parties to determine whether a fiduciary relationship arose.  These factors include “the degree of kinship between the parties; the disparity in age, health, mental condition, and education an business experience between the parties; and the extent to which the servient party entrusted the handling of its business affairs to the dominant party and placed trust and confidence in it.”[16]
In the case of VanVoorhies, VanVoorhies claimed that the professor he was working with, Dr. Smith, had breached their relationship of trust by inducing VanVoorhies to list Smith on the first patent application.[17] Although, the court did not rule on whether a fiduciary relationship existed between VanVoorhies and Smith, it held that his claim had failed because VanVoorhies could not produce evidence that there was a breach of trust by Smith.[18] The court did note, however, that VanVoorhies was “at all times aware of the patenting and inventorship decisions being made regarding the first invention, and he participated in and acceded in those decisions by jointly signing the [first] application and assignment with Smith.”[19]
This was not the case, however, in Chou v. Univ. of Chicago.[20] In that case, Chou’s breach of fiduciary duty claim succeeded because her mentoring professor during her graduate studies, Dr. Roizman, had named himself as the sole inventor on an invention which Chou had also invented.  Chou had previously suggested patenting her inventions to Roizman, but did not know that Roizman had already executed the applications, naming himself as the sole inventor. Additionally, as a result of these conversations, Roizman asked Chou to resign or else he would fire her.  The court, in that case, allowed Chou to succeed on her breach of fiduciary duty claim. Chou had proven a fiduciary relationship with Roizman because she was able to show not only that Roizman had acted in a supervisory capacity over her due to her status as a student, but that he had acted against her interests in not disclosing the filing of the patent applications.[21] Moreover, in concluding that a fiduciary relationship existed, the court noted the disparity in both the experience and positions occupied by Chou and Roizman.[22]
It therefore appears that courts are willing to recognize a fiduciary relationship between a graduate student and their mentoring professor.  However, to succeed on a claim for a breach of that duty, the student must be able to show an actual injury, such as not being identified as an inventor on a patent application.
III. Conclusion
Assignment of intellectual property rights, especially patent rights, has become a well accepted practice in most universities.  However, in light of a university’s alleged “commitment” to students, these policies should be re-examined to assure that a student’s interests in their work are adequately protected.  The trend in finding an obligation to assign inventions back to the university even after graduation is alarming.
The basic premise of intellectual property rights and patent law is to protect the rights and interests of the inventor.  In spite of this though, graduate students, who generally make up a large majority of a university’s work force in research, are often overlooked and not adequately protected.  Instead of developing policies that will push a university into financial and national recognition, universities should also focus on developing intellectual property policies that will protect the people whom the university is meant to serve, their students, instead of forcing them to resort to breach of fiduciary duty claims.

[1] Carmen J. McCutcheon, Fairplay or Greed: Mandating University Responsibility Toward Student Inventors, 2003 Duke L. & Tech Rev. 26 (2003)
[2] Id.
[3] U.W.Va., Bd. of Trustees v. VanVoorhies, 278 F.3d 1288, 1292 (Fed. Cir. 2002)
[4] Id. at 1293.
[5] Id.  (37 CFR § 1.47(b) (2004) allows a party with a proprietary interest in an invention to file an application on behalf of an inventor who refuses to sign and execute an application.)
[6] U.W.Va., Bd. of Trustees v. VanVoorhies, 84 F.Supp. 2d 759 (N.D.W. Va. 1998)
[7] Id. at 774.
[8] U.W.Va., 278 F.3d at 1305.
[9] Id. at 1297.
[10] Manual of Patent Examining Procedure §201.08 (2004)
[11] See e.g. University of Louisville, Mission Statement at http://
[12] U.W.Va., 278 F.3d at 1293.
[13] 35 USCS § 200 (2005)
[14] Id.
[15] Melissa Astala, Wronged by a Professor? Breach of Fiduciary Duty as a Remedy in Intellectual Property Cases, 3 Hous. Bus. & Tax L.J. 31 (2003)
[16] Id. at 34 (citing 37 Am. Jur. 2d Fraud and Deceit §32 (2001)).
[17] U.W.Va., 278 F.3d at 1300.
[18] Id.
[19] Id.
[20] Chou v. Univ. of Chicago, 254 F.3d 1347 (Fed. Cir. 2001).
[21] Id. at 1363.
[22] Id. at 1362.