Present Assignment ADD at UC

The University of California has present assignment language in its “Patent Acknowledgment“:

I acknowledge my obligation to assign, and do hereby assign, inventions and patents that I conceive or develop within the course and scope of my University employment while employed by University or during the course of my utilization of any University research facilities or through any connection with my use of gift, grant, or contract research funds received through the University.

I don’t see that the present assignment was in the PA as late as 2007, when I was still working for UC.  It appears to be a recent insertion.  In the baseline policy, the idea was that employees would disclose their inventions and the university would review them to determine its interest:

Such inventions shall be examined by University to determine rights and equities therein in accordance with the Policy.

Based on that examination, the university could request or waive assignment.  Assignment could be waived either because the university “elects not to file a patent application and the inventor is prepared to do so”; or “the equity of the situation clearly indicates such release should be given.”   While choosing not to file could take place after an assignment is requested, the policy sets up the premise that there is no point in taking ownership if one isn’t going to file, or the “equity of the situation” clearly indicates one should release the rights.

Once the university has made a determination that it desires ownership, then the PA sets out the employee’s obligations:

In the event any such invention shall be deemed by University to be patentable or protectable by an analogous property right, and University desires, pursuant to determination by University as to its rights and equities therein, to seek patent or analogous protection thereon, I shall execute any documents and do all things necessary, at University’s expense, to assign to University all rights, title, and interest therein and to assist University in securing patent or analogous protection
thereon.

The chronology contemplated clearly is disclosure, determination, assignment (DDA).  But with the insertion of the present assignment language, all this is on its head.  Now it’s assignment, disclosure, and determination (ADD).   The reversal makes nonsense of this latter statement, since if inventions are assigned with present assignment language, and the Supreme Court thinks that’s one way to do it, then what’s the point of agreeing to assign *again* to the university?  The point is, the addition of the present assignment is not merely “tightening up” a claim.  Certainly it does nothing for “approved consulting” issues, as these are still excluded by policy (though not referenced in the PA):

An agreement to assign inventions and patents to the University, except those resulting from permissible consulting activities without use of University facilities, shall be mandatory for all employees, for persons not employed by the University but who use University research facilities, and for those who receive gift, grant, or contract funds through the University. Such an agreement may be in the form of an acknowledgment of obligation to assign.

This is from the UC Patent Policy, II.A.  The policy statement contemplates an “agreement to assign” and provides that the agreement “may be in the form of an acknowledgment of obligation to assign”.  All this is consistent with disclosure, determination, assignment, not with ADD.  I suppose an agreement to assign can take the form of a present assignment, and I suppose “may be in the form” can mean that the agreement could be in some other form not worth mentioning, like a present assignment, but overall, it would appear that the insertion of the present assignment language in a “Patent Acknowledgement” turns the document into something more than an “acknowledgement”.  It’s a patent assignment document. It ought to be labeled as such.

This is a huge change in policy rendered by a simple-seeming insertion.  It turns the labeling, the authorization, the process contemplated all on their heads.  Now UC has a policy in which what’s laid out isn’t what is happening–or can happen–and what’s not stated is indeed the policy, supported by the idea that UC can change its patent policy:

I also understand and acknowledge that the University has the right to change the Policy from time to time….

Apparently this means, “change the policy without actually changing the wording of the policy that would lead one to believe one practice is in place when in fact another has been instituted that changes things rather substantially.”  I suppose one can manage policy this way, though it strikes me–whether botched, indifferent, or deceptive–as not good.

In the context of public universities, it is worth pointing out that a release of a claim to an asset is rather different from the assignment of a state asset to a private party, even one from which the asset was claimed.   In the one case, ownership never changes; in the other, the state is asked to cede ownership of an asset–is it doing that fairly?  is there a conflict of interest if the private party is also an employee of the state?  should the state receive compensation for the transfer (after all, the university asserts that it did pay for the transfer of the invention to it–the PA makes it clear that the acknowledgement is made “in part consideration of my employment, and of wages and/or salary to be paid”)?

Again, the policy change to present assignment also changes how a release is to be made.  In the past practice, that release could be administrative–we could claim this, but we choose not to.  Now the practice must be, you assigned it to us in return for consideration, and now we will assign it back to you, perhaps also for consideration.   One is a notice, the other is a legal transfer of title.

(Note, if the university never had a basis for a claim to the invention, then how on earth does it get the right to require assignment, and then as a condition of release, require that it be granted a “shop right” in the invention?  [“and provided further that a shop right is granted to the University”].  One could imagine a shop right would arise if the invention was made with university facilities or within one’s scope of employment (however one wants to worry those to issues for a university situation), but what about work that’s clearly not UC’s but comes within the operations of the Patent Acknowledgement?  That is, something for which UC could claim ownership (zap!, done), but the equity of the situation clearly indicates that it should not be claimed (such as, made in approved consulting but still “through any connection with my use of gift, grant, or contract research funds received through the University.”  For that, one might wonder how broad “through any connection” is intended to be, and who gets to decide.)   In any case, these would be inventions that UC would file on (otherwise it’s the other prong–not filing), but clearly should not be the owner of (equity of the situation and all), but having got ownership by present assignment, now asserts a shop right in the invention.)

My impression is that university patent people don’t care.  They’ve been told to add a present assignment, and off they go to do it, assuming it doesn’t change anything, really.  And in their heads perhaps it doesn’t.  They assume that the university should own everything, the sooner and more expediently the better, and adding language that does that is merely a highly recommended technical improvement, nothing any different than before.  And that old DDA language–that is just fluff and can stay the way it is because, well, what does it matter?

Here’s how it goes, then, that the policy is important enough to change to add a present assignment, but not important enough to read through to see how a present assignment disrupts and defeats significant parts of the rest of the policy.  Furthermore, there is this little speck, this tick in the neck of the patent officers, that says “it’s fine to simply take stuff, if lawyers show us how, just take it–even from faculty, at a university, where it is a product of their scholarship, even where policy provides for a determination step first.”  It’s this indifference that’s disconcerting–to the standing faculty have in a university, to the governance of policy, to the role of the university administration, and to the conduct and priorities of technology transfer in that administration.   The stewards would be kings.  It sounds grand and Tolkienish, and it’s only a tick in the neck, but what’s happening is more than a simple technical variation on an administrative theme–it’s a kind of ADD over getting rights rather than considering the equity of the situation.   Is that what is being recommended with the move to “present assignments”?   I think so, and it’s a sea-change, just not one that’s obvious, unless one pays attention to what happens in the sea.

 

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