Faculty Intellectual Property in Capstone Design Projects

A pinewood derby is a racing event for Cub Scouts, who, with the help of an adult, build their own cars out of wood. Parents, and occasionally other family members, help the Cub Scout design, carve, paint, add weights, and tune the final car. However, it is often the case that the adult takes over the construction of the car [1]. Similar to the pinewood derby, faculty advisors to capstone design project teams need to remember that student projects are meant to focus on student design, and they should let the students complete their own design work, being careful not to become too involved in their teams’ design activities.

The Capstone Design Conference

The next Capstone Design Conference is scheduled for 6–8 June 2016 in Columbus, Ohio. Topics of interest to capstone design course stakeholders will include capstone project expectations, industry relationships, intellectual property, contemporary themes, student issues, assessment, multidisciplinary collaboration, extending capstone experiences beyond the senior year, and others.

This conference provides a forum for the faculty and staff to share ideas about improving and/or starting engineering capstone design courses. To foster meaningful discussion and outcomes, the conference features interactive panel sessions, poster presentations, workshops, and industry demonstrations. Faculty, administrators, industry representatives, and students are welcome to participate in this engaging conference.

More information is available at www.capstoneconf.org.

Design projects are a major part of the capstone design course. By focusing on the design process and allowing students to gain hands-on experience in design, they help prepare students for careers in engineering. In many capstone design courses, students design a product or device to solve a problem and build and test a prototype to verify and validate the design. Student teams are often advised by some combination of industry sponsors, clinical advisors, and/or faculty advisors. Faculty advisors serve as technical advisors to the teams and provide guidance to keep them on track. They are not members of the team, and should not significantly contribute to the team’s final design. Capstone design projects are about student design, not faculty design; therefore, faculty should not become inventors along with the students on the team. Capstone project teams are not like research teams led by faculty working with graduate students, where the team works together to solve a problem and generate solutions that might become commercialized. They are meant to be teams consisting of undergraduate students who develop their own solutions to a problem.

At some schools, this attitude is reflected in formal policy. For example, at Texas A&M, the team obligation policy for the senior design course includes the following (italics added) [2]:

The faculty mentor may not provide design advice to avoid contributing intellectual property to the project. However, faculty members can potentially be available to work with the sponsor under a separate contract as is deemed mutually beneficial to both the sponsor and the faculty member.”

At The Ohio State University, a document describing the role of senior design coaches and mentors warns against taking away opportunities for student creativity by playing a designer role for the student team, and instead encourages students to create their own solutions (italics added) [3]:

“To ensure the success of the Multidisciplinary Capstone Design Projects and build the partnership between Ohio State students and industry, the guidance of an experienced advisor is essential. These advisors are normally faculty members with experience working with student teams and industry projects and who have some degree of technical familiarity with the project scope. The most difficult aspect of being a faculty advisor can be finding the right balance of guidance to provide enough direction without taking away opportunities for creativity. It is important not to become the lead designer but to encourage students to seek their own sources of knowledge and create their own solutions. Some of the primary tasks of the advisor are to:

  • coach the team in a manner that creates a collaborative atmosphere
  • facilitate the student—customer interface and guide the team in communication
  • foster the implications of engineering decisions based on business and technical factors
  • stimulate team members to be self-initiating and assist students in finding the necessary technical resources to understand and solve the design problem
  • guide the team to follow the design process with a strong focus on defining the problem and meeting established benchmarks for process and time.”

The engineering accrediting board ABET requires programs to show evidence that students develop the “ability to design a system, component, or process to meet desired needs within realistic constraints such as economic, environmental, social, political, ethical, health and safety, manufacturability, and sustainability” and defines engineering design as “the process of devising a system, component, or process to meet desired needs. It is a decision-making process (often iterative), in which the basic sciences, mathematics, and the engineering sciences are applied to convert resources optimally to meet these stated needs” [4].

To allow our students to develop their design skills, provide them with “opportunities for creativity,” and demonstrate the ability required by ABET, faculty advisors should make an effort not to make significant inventive contributions to the project. They should serve as subject experts and focus on technical advising, motivating, coaching, providing moral support, and guiding the team along the design process.

After speaking with capstone design instructors at other institutions about faculty involvement in capstone design projects, I was made aware of situations where faculty advisors, trying to move a project that was stagnating, suggested specific technical approaches or design features to the team. The team followed these suggestions, and their final design included features or design characteristics that were suggested by the faculty advisor. In these situations, faculty advisors were not intending to contribute to the students’ final design or reduce opportunities for creativity; they were simply trying to help the team move the project along. In some cases, intellectual property resulted from the final design, and since the faculty advisor made an inventive contribution to the design, he/she was listed on the patent application as an inventor along with student inventors. I know of another situation where a faculty advisor proposed a project and shared his vision for a solution to a particular problem for which the students developed a detailed design. In this case, depending on what the faculty advisor contributed to the final design, the argument could be made that the faculty advisor should be listed as an inventor along with the students. Each situation is different and must be considered on its own merits.

The question of who is included on patent applications is an important one for faculty and students to understand. Patents are not like publications where the faculty is often included as coauthors because they supervised the work of the graduate student who wrote the paper. Building and testing prototypes, collecting and analyzing data, and interviewing potential customers are all significant contributions to the project but do not constitute inventorship. Inventors are those who have made inventive contributions to the design that are described in the independent claims of the patent. Thus, faculty cannot be listed as inventors simply because they advised the project team, students cannot be listed as inventors because they built or tested the prototype, and managers of engineering or research and development departments cannot be listed as inventors simply because intellectual property was created by employees in their departments.

Patent attorneys take great care to determine who qualifies as an inventor. Patents can be invalidated if noninventors are included, or if inventors are not included. All inventors must be included in patent applications regardless of the institution’s policy on intellectual property and who owns the rights to the patent. These errors can be challenged years after the patent issues and, if the patent is invalidated, could result in significant financial loss to the owners of the patent (assignees). For industry-sponsored design projects, if the sponsoring company is funding the project and the students sign patent assignment agreements, then the company can be listed as the assignee on the patent, but the true inventors must be listed as such. Assignees own the patent, but the inventors are those who made the inventive contributions.

For those of you who are senior capstone design instructors and/or faculty advisors, what is the focus of your course? Is it on faculty/student coinvention, or student design work? Do your faculty project advisors provide inventive contributions to student teams (either intentionally or unintentionally)? I am very interested in learning about the standard practices at other institutions regarding faculty intellectual property in student capstone design projects. Please let me know by contacting me at jay.goldberg@mu.edu with your responses to these questions, so I can anonymously share them with members of the capstone design community in a future column.

References

  1. “Pinewood derby,” Wikipedia. [Online]. (accessed 18 Dec. 2015).
  2. “Team obligation,” Dept. Biomed. Eng., Texas A&M Univ. [Online]. (accessed 18 Dec. 2015).
  3. “Coaches and mentors,” College of Engineering, The Ohio State Univ. [Online]. (accessed 18 Dec. 2015).
  4. “Criteria for accrediting engineering programs,” ABET, Baltimore, MD, 11 Nov. 2014.