Samantha Chang: Who owns the invention?

This video presents intellectual property concepts (patent protection, inventor/patent owner distinction, confidentiality agreements, trade secrets, etc.) to students in a fun and entertaining way.

Professors can now use this new tool to support the delivery of the Samantha Chang case study. Ask for it today at ic.casestudies-etudesdecas.ic@canada.ca.

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As a child, Samantha Chang took cameras apart just to see how they worked.

In school, she created science fair projects about light and optics.

And just after she turned 18, before she even started classes at Provincial Technical University, (Welcome to PTU) she got a job in an engineering research lab there.

Her boss, Professor John Milbourne, (Email received from her mother. The email says: " Hi John!! Guess what!? My daughter just enrolled at PTU!!! She's amazing!! Did you know that when she was only six year old she") was a friend of her mother. He hired Samantha even though he never hires anyone less than a third-year student.

Delighted to be in a lab with the best equipment and software available, Samantha happily worked as a gopher and assistant (She holds a box titled "paperwork") to the engineers, technicians, grad students and undergrads. As a casual employee, she didn't appear on the institution's payroll, but she got paid ten dollars per hour out of the research money.

That summer, Professor Milbourne's lab was puzzling out a quality control problem faced by AutoPartsCo.

They made cooling fans for car engines, and because the blades ran at high speed, there couldn't be any extra metal on the edges after machining. Even a burr as small as half a millimetre could affect performance.

Professor Milbourne's team tried using an infrared light detection system to solve the problem of identifying defective blades. They needed to detect all defects accurately without misidentifying perfect parts as defective.

Everything they tried, though, resulted in some parts being identified as defective when they really weren't.

Part of Samantha's job was keeping track of the various imaging devices and helping people to find the right one. Because she became familiar with all the devices and how they worked, Samantha was the one who came up with the solution.

She asked: "Why use infrared light?" She thought devices tuned to visible red light might work.

Using her idea, within a few days research engineers eliminated the problem of flawless parts being identified as defective.

PTU was anxious to file a patent application. Since other manufacturers faced the same problem, they might receive revenue from licensing.

AutoPartsCo was thrilled that the problem was solved and that they wouldn't have to pay to use the technology.

Their agreement with the university said that all inventions made during the course of the contract would be owned by PTU with a royalty-free licence given to AutoPartsCo.

Professor Milbourne told Samantha she would be named as an inventor on the patent application.

Thrilled, Samantha immediately told her mother, and her mother proudly bragged to colleagues about her daughter's success. (Her mother posted "My little girl is officially an inventor at PTU" on a social network. That post was commented by: Jeremy Jones, "Congrats to both of you!"; Sarah O'Neil, "That's amazing news!"; Peter Hunt, "Wow!")

Paperwork began. According to PTU policy, any invention made by a grad student or full-time employee of PTU under a research contract would be owned by the university.

But Samantha was a casual employee. (The professor is wondering about the situation.)

The research administration office sent documents to Samantha asking her to transfer her rights over to PTU. Apprehensive, she said she wanted to consult her mother.

  • If you were advising Samantha, what would you tell her to consider?
    • Cost?
    • Legal advice?
    • Licensing?
    • Commercialization?
  • Did her idea meet the requirements for patent protection even though it used existing technology?
    • New?
    • Useful?
    • Non-obvious?
  • How did telling her mother, and her mother telling others, affect the case?
    • Public disclosure?
    • Absolute novelty?
    • Confidentiality?
  • Who owned the invention if Samantha signed? And if she doesn't?
    • Samantha?
    • AutoParts Co?
    • PTU?

These days Professor Samantha Chang doesn't need to take cameras apart for fun. (Samantha is on the cover page of the Scientific Magazine entitled "Innovator of the Year")

Working in a lab with the best equipment and software, she's building things for other people to take apart.

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A production of the Canadian Intellectual Property Office, an agency of Industry Canada. Government of Canada.

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