Addressing Intellectual Property and Student Needs in Industry Collaborative Student Projects

Proceedings of the 2010 ASEE North Midwest Sectional Conference, by Craige O. Thompson, JD, B.S.E.E, P.E. and William B. Hudson, Ph.D.

Abstract

Many engineering programs are encouraging collaborative student projects with industry sponsors. These joint or sponsored projects can benefit both students and sponsors providing real world experience for the students and low cost research or development opportunities for the sponsor. However, both sides must enter into these arrangements with open eyes and realistic expectations. This paper will explore the balance of interests among (i) students’ career advancement, (ii) non-disclosure obligations, (iii) intellectual property (IP) rights, and (iv) project funding. 

Introduction

The Electrical and Computer Engineering and Technology department at Minnesota State University, Mankato has approximately 25 electrical and computer engineering students graduate each year. The department is fortunate to be supported by a very active Industrial Advisory Board (IAB). This board meets at least twice a year and has in the past been involved in reviewing student senior design projects. As a result of IAB member interest and involvement with local industry and inventors, the Fall 2009 and Spring 2010 senior design experiences were truly collaborative and real world experiences. The first project consisted of a rework of an existing commercially available product. The second design effort consisted of taking a concept that was undergoing patent protection and creating hardware to support demonstration of the proof of concept. Both experiences were incredibly positive for the students and sponsors but also provided challenges that others following this path should be aware of. 

Design experience 1

The Fall 2009 senior design experience truly began during the summer of 2009 with the course instructor meeting with the president of the company with the product needing redesign. The product is a very successful commercial product in which the company is planning to move from a dated input method into something that is more user-friendly. Further, the project was to explore the possibility of adding additional data storage and analysis to provide the company with a recurring income stream. The project provided many lessons learned for course instructor, the project sponsor and also the students. These will be described in general terms because currently the project is still under a nondisclosure agreement.

Positives associated with this project:

• Students were able to visit the production location. 
• Students were able to see current products and move a current product into the lab for redesign.
• Students were able to use the current product as a test-bed.
• Students had to work with existing portions of current product which forced them to work with real-world constraints

Design Experience 1 Implementation

The students were divided into teams of three or four. Each team was assigned a portion of the project and in some cases teams had overlapping or parallel responsibilities. One of the challenges associated with this is that some teams had more of a hardware focus while others had more of a software focus. Efforts in senior design are always expended to make sure students have a balanced hardware and software experience as part of their final design experience. Because this design needed to be completed in one semester students chose to use many off-the-shelf components and became in many cases systems integrators.

Challenges that occurred with this project: 

• The students have a limited ability to discuss the project with others because of nondisclosure agreements required by industry sponsor. 
• Time dependency created significant challenges in a one credit class to complete this effort within 15 weeks. 
• The end result really has become a proof of concept rather than something that can be easily manufactured. 
• Students because of the very rapid need to get this done in many cases did not have as holistic experience as with other projects.
• Dependencies of one group on the deliverable of another group became a challenge. Timeline slipping for one group and their deliverables created significant of issues with others resulting in finger pointing. 
• How does the sponsoring company move forward with lessons learned?

Design experience 2

The second design experience occurred as a result of the discussion with one of our IAB board members who was working with a firefighter seeking a patent for his invention. As a starting point the firefighter came and presented his system concept to the senior design course during the second class meeting in the Spring 2010 semester. During the remainder of the week the students in the class were required to submit brief project proposals of what they would like to do for their final semester project in the senior design course to the course instructor. Based on the information provided by our potential sponsor two groups decided to undertake designs to support his product development. In both cases these teams had three members and in both cases the teams elected to take portions of the project that covered both hardware and software concepts. The nondisclosure agreement (NDA) was prepared and provided students for their examination and acceptance. Students who elected to work on this project had to complete and abide by the nondisclosure agreement. This agreement was iterated upon multiple times to make sure that students had the ability to discuss the project with potential employers and yet the provisions of the agreement would protect the inventor from inappropriate disclosures. Key provision of a sample agreement can be found at the end of this paper.

Issues to be resolved before design effort:

• All involved must have a clear understanding of the NDA and what it requires and what limitations it imposes. It is recommended that as we did, the author be available to discuss the implications of the NDA with students.
• It is critical when efforts like this occur in a one semester course that groundwork for this occur before the semester starts.
• The scope of each team’s assignment and the required design interfaces between teams should be carefully matched to team size so that each team can produce a useful prototype independent of the progress of other teams.

Concluding thoughts

The current course configuration for senior design at Minnesota State University Mankato provides students one course credit for each semester of effort in their senior design course. Most students are completing 15 credits of coursework during both semesters in their senior year. Additionally, most students are working part time to fund their education and in the Spring semester most students further increase their workload by seeking fulltime employment.

The positives associated with industry sponsorship are great! Comments from students working on the projects point to the positive experience of working on a project that really can make a difference. The students realized that their efforts supported increasing corporate viability of a small company with their first semester effort and developed the prototype for a new system in the second system effort that could be the basis or helping or protecting others. The students’ efforts were further validated when the prototype from the second semester effort won the grand prize award at the 2010 Minnesota Inventors Congress.

Questions that still exist: What happens at the end of the semester – what should really happen? Students want/need to move on but small companies still need help moving forward. In the case of the second design system the Inventors Congress provided public exposure and opportunities for this inventor to continue moving forward. In the case of the other system the course instructor is still working with the company trying to find cost-effective engineering talent to move their product line forward.

Lessons learned:

• As has been found in the past, student teams of greater than three reduced the learning experience and were much harder to coordinate and grade.
• Student teams that depend upon others result in significant finger-pointing.
• Faculty engagement with industry sponsored projects significantly increases the faculty workload.
• Students engage and expend significantly more effort on projects with external sponsorship.
• Industry expectations must be clearly managed with it being clearly understood that the output of student projects is best viewed as proof of concept.
• Students in a senior design course are not well-equipped to create true manufacturing
• Students need to have an understanding of intellectual property and appropriate documentation before entering into industry sponsored projects.
• Students’ willingness to complete documentation with industry sponsored projects is better than with faculty directed and created projects.

Biographies

William B. Hudson, Ph.D. 

Dr. Hudson has been teaching senior design at Minnesota State University for 8 years. Prior to joining the faculty at Minnesota State Dr. Hudson held faculty positions at Kansas State University and New Mexico State University and industry positions at Lindsay Manufacturing, Sprint as well as serving as a consultant.

Craige O. Thompson, JD, EE, PE.

Mr. Thompson directs Thompson Patent Law Offices PC, a patent boutique law firm that provides experienced counsel on offensive and defensive patent matters. Previously, Mr. Thompson practiced law at Fish & Richardson for 7 years, after a 10 year career as a design engineer with Plexus Corp.