Drafting the Unknown

As I’m reading through university IP policies, I’ve begun to notice how those drafting the policies are grappling with the unknown. There are a number of unknowns–many policies don’t evidence that the drafters know IP, and others work hard to reduce the complications of dealing with patent and copyright by conflating the two as “intellectual property” and those who do the work as “creators” or “originators”–anything but authors and inventors. These sorts of things do odd things to policy, by introducing new definitions distinct to the policy, and often with uncertain implications. In other words, by trying to “cover” things, policies may actually create new unknowns that exist only because the policy exists. Policy is itself a social creature, a real character on stage, not one that wears white, or a sash, and therefore is to be considered invisible, or the true relationships among things and people, made visible through the magical authority of policy drafters.

There are a variety of strategies to cover the unknown. The one that comes to mind for me is that of Johannes Scotus Eriugena, who opens his On the Division of Nature by dividing the world into the known and the unknown, and then starting with the unknown. This is so clever that the work was condemned by the Powers That Were, surely something that should endorse the work to us today.  It is also something that should give us pause in dealing with innovation. Innovation does not come, generally, from the status quo, or from the known. It comes from the unknown. It is more likely to look like the High Plains Drifter than like a report from a Blue Ribbon Committee. Drafting for the unknown takes a huge mental toll on folks who deal routinely with the routine. Take complexity, abstract the detail, attach statements in a high style and call them principles, and then stick the policy statements that are desired into place. This works, in its dull authoritarian way, when stuff is known, and the job is to keep it in place. It is more difficult when stuff isn’t known–either because the drafters don’t know it (better if they know they don’t know and admit it, than to enter the Bozonet and try to handwave and bs their way through), or because the stuff out in front of them is changing in ways they cannot control, don’t want to control, and perhaps cannot even anticipate.

For research discovery, in particular, there’s not a lot of point in being able to anticipate it, or the innovation that comes from it. One has, perhaps, hope, or grace, or skepticism, or enthusiasm, but it’s all over this big hole in one’s imagination where the thing that isn’t is supposed to arrive, except when it does arrive, it doesn’t show up in that hole, likely, and does some damage to the prim and proper parts of the imagination that made the tidy hole in the first place. Yeah, that kind of innovation. And yet, folks feel the need to write policies toward it.

Things get conflated. Invention and patent. Work of authorship and copyright. But what are inventions before they get patented? What happens if one files for a patent, but doesn’t get it–what then? Worse, what if one gets paid for a prospective license to an invention that turns out not to be one, except in the form of a hopeful label attached to it?  How is such a thing owned? Who gets the proceeds? What else like this can be an “invention”?  Software? Information? Know-how? Expertise? Results? Technology? We can pile up the words for things that aren’t patentable but seem to be related and try to pack it all into invention. Same for works of authorship–we can develop the idea of works of authorship and everything else like works of authorship but aren’t protectable by copyright (and therefore are not owned by copyright)–titles for books, lists of mechanically arranged data, utilitarian designs, and thus we come up with the idea of ownership of stuff as if it were other stuff that could be owned. Use patent ownership as a proxy for non-inventive stuff, non-patentable stuff that can’t be owned that way, as if it could be owned that way. “Title” to inventions that aren’t, and thus title that isn’t title, but constructed for the purposes of policy (so everyone agrees to it as a condition of employment, and so it becomes a little procedural fiction that gives power of interpretation to someone dealing in the policy).

Here are some drafting techniques.

  • 1) Define a known thing, and exclude all else (the unknown stuff)
  • 2) Everything except (the known thing)
  • 3) Construct a list of known things, prefaced by “including but not restricted to”or ending with “etc.” (trailing off into the unknown)
  • 4) Construct a list of categories as if there are no others (so everything is known)
  • 5) Address the immediate and invoke a class (with an unknown boundary)

When these sorts of things get done in policy statements, they have odd effects. If a policy says that there are gifts and grants, and offers guidance in telling folks how to tell the difference, the policy also is ordaining that there are only gifts and grants (class 4, above), and in essence requiring that some offered payment cannot be unknown–it must be made to conform with one category or another–is it a gift or a grant? It cannot be, say, a “designated fund payment” that is neither gift nor grant. That would be against policy, and going against policy flaunts policy, creates inefficiencies, requires attention of supervisors, complicates life, works against the intentions of the policy drafters, disrupts order, is unfair, potentially corrupt, and perhaps criminal. Thus, a category 4 policy statement, as a matter of policy (and therefore mutual agreement among employees) denies the unknown and requires uncomforming things to conform or be rejected. One might see how such a policy stance has problems for things that present as “innovative”–meaning, not in the established categories.

Here is a nice instance of class 3:


is a general term which includes computer software, general instructional materials (including video tapes), novel machines, devices, compositions of matter (compounds, mixtures, genetically engineered cells, plants or animals), genetic forms, mask works, production processes, production methods, plant varieties, etc.

At some point the list gets long and the drafters add the “etc.” It means, there are other things like these things, and either we know what they are but have run out of space or interest, or we don’t know what they are, but you should, or someone later can decide.  This is a definition after all, so the “etc” plays the role of making the definition into whatever else can go into the “etc.” The question is, who gets to decide?

Here’s another:

“Significant Use of Board or University Resources” includes but is not limited to any of the following: use of research funding; use of funding allocated for asynchronous or distance learning programs; use of university-paid time within the employment period other than during sabbaticals or consulting as permitted under Board and university policies or except in the creation of scholarly works; assistance of support staff; use of telecommunication services beyond ordinary telephone services; use of university central computing resources; use of instructional design or media production services; access to and use of research equipment and facilities, or production facilities. The Board does not construe the use of office space, library resources, personal workstations, or personal computers as constituting significant use of university resources. Except as provided above, the Board does not construe the use of instructional materials, instructional labs, and instructional facilities by non-employee students as a condition of enrollment and fulfillment of degree requirements at the university as a significant use of university resources. In addition, use of an electronic blackboard provided by the university does not change the disclaimer by the board of copyright ownership under Article I, Section B.I. in the underlying content of any scholarly work as distinct from its online or electronic format developed through blackboard.

Clearly someone here is struggling with the unknown, creating a list, expanding it, and the creating another list of exclusions, and adding to it.  And another thing.  And another thing. Oh! another thing. Clearly, someone is drafting the Unknown. It’s a worthy challenge.

In IP policies, one typical issue is how to establish claims to inventions. Of course, universities could simply not do this, but that’s not the agenda. And there are reasons to deal with inventions, even if the claim is not mandatory, and even if the claim is not on behalf of the university–but these are, at present, innovative categories, and run into class 4 thinking. In dealing with claims, IP policies tend to use a two-pronged approach–scope of employment or use of university facilities. Each of these has its variations–is it scope of employment or field of expertise or what’s in the job description or official assigned duties? Regardless, the general drafting strategy is to state the categories, and then to state that anything outside these categories (the unknown) is not claimed (a class 1 approach). The challenge for drafters has to do with faculty–what constitutes their “own time”? Surely it’s not before 8am and after 5pm plus the weekends. But then what is it?  We sense a species of the unknown–in this case, how to restate the obligations of faculty in terms of corporate management employment?

Let’s take a look at one treatment of this approach (yeah, it’s from the same policy I was just poking at–but trust me, there are a lot of them like this):

All patentable inventions conceived or first reduced to practice in the conduct of University research by full time, part time or visiting faculty, postdoctoral researchers, staff and/or students of Rice (defined in these policies as University researchers) shall belong to Rice University. For the purpose of this patent policy, University research includes all scholarly research conducted in the course of the inventor(s) University employment including performance of research sponsored by the University or an external agency/corporation or with University facilities or resources.

Although not explicitly described elsewhere in this document, inventions (and other intellectual property) developed by any Rice employee during the course of non-research activities of the University shall also belong to Rice University.

The first paragraph states a claim to patentable inventions made in research activities, then defines research activities to include “scholarly research” in the “course of employment” or “with University facilities or resources.”  “Scholarly” limits research rather than merely providing a secondary adjective. What about non-scholarly research–just what is that, anyway? Is it research that does not address some academic debate or theory? Is it stuff one does for personal development, to figure out how others do something, and for which publishing “I can now do what a lot of other people can do” isn’t worth it, so it isn’t exactly scholarly? Perhaps this is part of the unknown.

At any rate, if we look at the second paragraph, the care with regard to the first paragraph and its division into scope of employment including sponsored research + use of university resources does not appear to matter: all “non-research” inventions are also claimed by the policy! This is a stumper. Since research has just been defined to include use of university facilities, is non-research everything else that also is within the scope of employment or uses university resources? And if so, what is left? Non-scholarly research that is within the scope of employment or uses university resources? Why not just say, the university claims all inventions made within scope of employment or with university resources?

Even here we have problems. Are faculty hired to invent? Is the act of inventing within the scope of employment, or is it merely within one’s area of expertise (say)? If we go this route, then the policy might be reasonably interpreted to say, if the university expressly hires you to invent, then it claims ownership of those inventions. In which case, why not just say that?–“if we hire you to invent, or you propose to invent in sponsored research, then the inventions are to be assigned to the university upon request. Anything else isn’t.”

Deeper into the policy we find the excluded stuff:

Patent rights to inventions made by individuals on their own time and without the use of University resources belong to the inventor. In such cases the University shall make no claim on royalties.

The categories aren’t done particularly well. “On their own time” is put out as a contrast to “University research” and in particular to research done in the “course of employment.” University “resources” bears a similarity with the prior “facilities and resources.” It would appear one could use University facilities, but not resources, and still have an independent invention. In some definitions, “facilities” means buildings, in particular, while “resources” refers to such things as funding, staff, proprietary databases–that is a bunch of non-facilities things. Does “facilities and resources” stand for everything a university has, of the form “facilities and non-facilities” (where “non-facilities” are called “resources”) or is it (“facilities, resources, etc.” or “including but not limited to facilities, resources, funding, staff time, and proprietary databases”)? One way to read the gesture is that the university intends to claim everything that could be within scope of employment and anything using anything the university has to offer. Another way, however, is that the university aims to claim only a limited set of things, those of “scholarly research” and leave others alone “non-scholarly” stuff.

We might observe the inconsistencies. In first part, the claim is to patentable inventions. In the second part, the claim is to all inventions, whether patentable or not. In the third, the excluded stuff, the claim is directed to patent rights in inventions, not to the inventions themselves. Perhaps this all just inattention, sort of a sophomoric effort that didn’t get a good proofread. Perhaps it is a “you know what I mean despite the inconsistencies, the lack of coverage, and the skewed logic” effort. When it is packed into a policy statement that forms a part of an employment contract, however, the gesture takes on greater significance.

The greater significance is that while the policy establishes the form of a claim to ownership, it leaves a lot open–what is “scholarly” research? What non-research activities of the university might involve no use of facilities or resources? Why should inventions made in university facilities but on one’s “own time” not be claimed?

It would be more direct to claim inventions made in any university activity and then worry about what a university activity is. Even then, there’s a deeper problem, a deeper unknown, about invention. If folks are generally not hired to invent, and are not assigned to invent (“Figure out how to make that ventilation fan stop vibrating!–Hey, I’ll use a lubricant derived from rendered lab rat fat!”), then how does one know when an invention arises within the scope of employment? In a corporate environment, one might get at this by referring the invention to the “business, or reasonably anticipated business” of the company. For a university, however, this is useless.  Its business is “teaching students” and “doing administrative things” and “fighting over parking.” It’s not “anything that faculty propose to study” or “inventing things with commercial value.”  For those sorts of things, one has to have a different kind of policy. The “business” of the invention management is presented, not claimed. That is, try as policy drafters might, they cannot get at a scope of employment that captures the duty to invent unless that duty is express in each individual employment agreement.

There is a similar analysis for use of facilities and resources. Does inventing require the use of “facilities and resources”? Sure, if one “reduces to practice” by building a prototype, and that prototype is made of stuff purchased by the university, it would appear to be within the definition of using university resources. But nothing stops a faculty member from buying the parts personally and building the prototype without the use of university resources, in a garage, say, so as not to use university facilities either. This would be unlike a corporate setting in which one would expect a trade secret claim and a restriction from removing, disclosing, or using trade secret information other than for the benefit of the company. But universities don’t have much ability to establish a trade secret claim in what faculty do. Faculty do it, but generally are not assigned it, and so if there’s a trade secret, it is what goes on in a faculty member’s head that the university and everyone else isn’t aware of.

It’s even worse with “conception” tied to “course of employment” (not hired to invent) or “use of facilities or resources” (it’s in my head, not in a building). So how is a realization, an epiphany, a spark of insight combined with a way to use it something that requires the use of facilities and resources? More to the point, how is the activity that precedes the conception related to the conception?

37 CFR 401.1 has some observations on the matter (my bold).

To the extent that a non-government sponsor established a project which, although closely related, falls outside the planned and committed activities of a government-funded project and does not diminish or distract from the performance of such activities, inventions made in performance of the non-government sponsored project would not be subject to the conditions of these regulations. An example of such related but separate projects would be a government sponsored project having research objectives to expand scientific understanding in a field and a closely related industry sponsored project having as its objectives the application of such new knowledge to develop usable new technology.

Here, the scope guidance for Bayh-Dole is “planned and committed activities.” For these, one looks to the research proposal (award) or the procurement announcement (contracts).  Such a document establishes scope of interest. If one proposes to generate new knowledge and then apply it to commercially valuable things no one has previously imagined, then you are very much in scope when you invent using that new knowledge.

Circle back then to those preambles to patent policies. The one we are working with says this about the mission of the university:

Rice University is dedicated to teaching, research, and dissemination of all new knowledge generated within the University community. Thus, the basic goal of our policies that govern the disposition of intellectual property generated at Rice is to promote the progress of science and technology and to ensure that discoveries, inventions, and creations generated by our faculty, staff and students are utilized in ways most likely to benefit the public.

The mission of the university, at its closest to invention is the “dissemination of new knowledge.” Nothing there about creating inventions. Inventions is a later thing. If it’s not in the general restatement of mission, it’s not in a particular statement of work for sponsored research, it’s not assigned by the university, and it’s not in the regulatory guidance for federal funding agreements, then how does that conception come to be within the claims of university “scope of employment”?

One can get the actual point of the policy–someone intends, whenever an invention is made by a university employee–to claim it, and put up a fight if anyone disagrees. Now aside from the goodwill of the employees, or their timidity in the face of threats, is this a good foundation for a policy? It’s not in the stated objectives–there’s no “the administration is authorized to bully and threaten employees who happen to invent, so that 1) the technology transfer office gets business and 2) the university secures a fat portion of any money to be made.” But is that what is implied by the text of the policy as it works through the unknowns? It seems so. That’s the underlying gesture. The policies get so much wrong, it can’t be that they are rational objects.

It is worth noting the limitations inherent in words. But this is not simply a matter of words, nor even of indifferent or inept drafting. Lots has been left out of the situation. The situation is not merely complex. It is unknown. It is not understood. It is baffling. The folks doing the drafting clearly expect to own inventions. Their effort is to find words to accomplish this. The challenge is determining:

  • what inventions they have by policy;
  • what ones they have by goodwill;
  • and what ones that are not properly theirs at all; and
  • what ones, though they could claim them, they choose not to claim.

If you are hot on the idea of adding “present assignment” language to a university patent policy or patent agreement, you might hesitate here and ask, if the policy is uncertain as to scope, how can a present assignment come to operate until that scope is established?Again, in the corporate world, this is much easier to do, since the scope of the business can be reasonably well defined a lot of the time, but even there, there is interplay that goes on above the contract. (For a good read about the play on top of a contract, see Confessions of a Record Producer). That interplay is a matter of convention, legality, side deals, informal commitments, good will, leverage, risk assessment, available resources, ego, and benefit. It’s anything but the “four corners of the agreement.” Here, of course, we have four corners of a policy that’s imposed on all employees, something they don’t have much chance to negotiate.

The problem is deep: the policy does not know where invention might come from, and it struggles to associate employment and use of facilities with a claim. But the association with employment, drawn from corporate practice perhaps, does not get at what faculty do, especially in research, and furthermore does not get at how inventions are conceived, which does not have so much to do with location as it does with the scope of the application or use of the invention. For this, almost everything invented at the university might be expected to fall, technically and actually, outside the stated claims of the policy.

One response to this sort of analysis is to dismiss it–the policy “works” thank you, and everyone knows what is meant by it based on their actions. Another response is to “fix” the policy, trying to “tighten up” the language–and there is room for that–make “facilities and resources” parallel with “facilities”, drop “scholarly” from research, and perhaps drop “research” in favor of “university activities.” But this is sort of like ironing shoelaces, and broken ones, perhaps.

A contract is an agreement with mutually enforceable promises–a meeting of minds. It’s not a piece of paper that one side gets to interpret as it will, make up whatever it wants when it sees what it wants. It takes two parties, intending to be bound. A patent policy sets up as a contract of sorts, though it’s not clear what the offer, acceptance, and consideration is for the deal. Yes, it can be that the offer is employment and payment in exchange for services and inventions. Or it could be inventions in exchange for invention management services and a share of the loot, independent of employment. While this policy can be enforceable “on top of the contract”–with threats and demands and discipline, it’s not at all clear that it does what it makes a gesture towards, or what perhaps administrators want it to do.

But why might this policy appear to “work” despite all these problems with it? I suggest it is because of good will. That university personnel disclose inventions and work with the technology transfer office because they choose to, not because a policy forces them to as a condition of employment, not because they agreed to whatever scope that an administrator might want to claim later, whatever the particular wording of whatever mighty-sounding but defective policy. University patent policies fail because scope of employment and location don’t have much to do with what faculty do, and even less to how an invention is conceived, and more less than that about how sponsored research statements of work for basic research are drafted. Who decides if some invention is conceived “in the conduct of University research”?  This isn’t the same as “conceived by someone who is also conducting University research” and it isn’t the same as “conceived by someone who has had access to University research” and it isn’t the same as “conceived outside the particular statement of work but having commercial value.” It could be those things if “conduct of University research” means whatever someone wants it to mean, but not necessarily what’s on paper, what’s formally the mission of the university, what’s formally the statement of work of the research, or what’s actually how the invention comes about. If “conduct of University research” means “anything invented by an employee until we decide otherwise, except as prevented by law” then we’d have a nice Unknown (anything) less a specific (until we decide) and less another unknown (as per law).

What I’m getting at here, having looked at a passel of IP policies–and they are nearly all like this–same preamble about public good linked oddly to the same claims to scope of employment and use of resources, with the same defects as to what it all means, not only logically in terms of someone reading the text carefully, but in terms of what happens outside the text, in the big wide world.

There, and this is the amazing thing, people cooperate because they choose to. The patent policy has next to nothing to do with it. Push the patent policy, and it falls over like a house of cards. Nearly every one of them. Inconsistent, illogical, contrary to law, ignorant of the law, proposing impossible practices (like disclosing every work of authorship you make), and deep down, naive with regard to the unknown. These policies don’t comprehend how invention happens, how IP works, how innovation happens. It’s not that I do. It’s that it just isn’t generally available information.

They propose, instead, a high rhetoric for four or five sentences about public mission, a demand for ownership, and from that a lot of apparatus to deal with the consequences of having made the demand. But this stuff isn’t demand-side. It’s goodwill-side. That’s something that most of these policies give no evidence of recognizing, that inventors work with their universities because they would choose to, not because policy demands it to hold their greed and ineptitude in check.

A decent university IP policy might be as simple as:

We don’t as an organization have a good idea about where inventions and innovation come from. When faculty make commitments with regard to inventions, we work to help them honor those commitments. That may mean requiring assignment of inventions, but that’s only because that’s what folks have agreed to do. As for us, we would just as soon stay out of the invention management business.

However if university personnel do want to work with an organization strongly aligned with the university, we have got some people standing by in a tech transfer office, or at a research foundation, or in various brokerages and companies to have a look at what’s been done and offer their services.

If folks feel their work at the university, and these arrangements, have helped to create worthwhile opportunities, then there are some good ways to support the university, our students, and our faculty.

If we ever get involved with patent work, it will be on a case-by-case arrangement with our inventors, because they request our assistance and we decide to try to help. We don’t expect to help a lot in most cases–this stuff has so much random luck and timing about it that it’s hard to predict–but we may be able to raise the visibility, do some basic things to get patent work done, and build some collaborative arrangements with the companies that are willing to work with us.

I know, not the high style and not much on the formal register of policies, but perhaps it’s closer to being comfortable with the unknown, where innovation comes from, much to the consternation of the drafters of IP policy, who want to require something, be confident about it, and be done with it, in the hope that doing so will make the Unknown go away.

[Note: basically, the folks drafting university patent policies have no clue but think they do, and draft to make clear what they imagine they know, using various drafting techniques to compensate for what they don’t know–which then gets put in a legal style to make it sound authoritative. They end up drafting a demand that they get to interpret their own document later. Essentially, all the nonsense, contradictions, ambiguous statements, lists, inclusions, and exclusions amount to a demand that administrators decide later and everyone else must stand down. Basically, the style is that of an adhesion contract with a core demand of an agreement to agree. It should be unenforceable, or at the very least interpreted against the drafting party, but to prove it requires going to court (“may you go to court and believe you are right”), and most academic inventors don’t have the $100K or more and the waste time to go that route.]



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