CU’s a-Mazing IP Policy

In the University of Colorado’s IP policy we have a simple gesture that turns into a definitional and drafting maze.  The simple gesture is, “In an effort to make money licensing patent rights, the university requires the assignment of patentable inventions made by faculty, staff, and students working within the scope of their employment or otherwise making significant use of university resources, and in return the university will share a portion of licensing income, after costs, with inventors.”  Of course, there is more than this, but one has to work at it to figure out just what is going on.

Colorado policy has two parts, a Regents Policy and an Administrative Statement that implements the Regents Policy.   The policy uses a definition of “included persons” to establish its scope.  In Regents Policy 5.J, there’s this definition:

“The term “included persons” shall refer to all faculty members and other employees (including students on appointment as University employees).”

Not bad, other than the lingering question why a specialized term has to be introduced at all.  If the policy applies to everyone that any Regents Policy statement applies to, then there’s no point in restating the scope with a special definition.  If the intent is to apply it to somewhat less than the full scope of the Regents Policy generally, then the definition leaves out a marker for that point.   As we’ll see, the effort is in fact to do just the opposite–to attempt to assert policy control over *more* people than the Regents Policy statements could otherwise control.

The Administrative Policy Statement 1013, rather than simply reciting the Regents Policy definition, opts to take it a bit further:

“included persons” means all faculty members and other employees (including students on appointment as University employees) employees [sic] of the University including those receiving salaries, scholarships, fellowships or other remuneration from the University, part-time employees, student employees, University employees on sabbatical who receive remuneration from the University, and employees on a leave of absence who partake in substantial use of University resources.

Now they’ve thrown in students “on appointments” (but presumably only to the extent of their “appointments”), but also scholarships and fellowships, as if this is “remuneration” for services to the university, when it’s support to pay for education and training.  The definition also is extended from employees who receive “remuneration” to folks not being paid who “partake in substantial use of University resources.”  The narrow focus on employees on a leave of absence but still on campus using facilities is odd.   Why not a general statement regarding *anyone* “partaking” in “significant use” of university resources?  Just how many employees on leave of absence are hanging around CU?

The policy, however, doesn’t stop with this.  Back to the Regents Policy:

The term “collaborator” or “collaborators” shall refer to any person or persons who participate with an included person on a discovery.

The term “substantial use of University resources” means use of University funds, programs, equipment, space or other physical assets that goes above and beyond those customarily and currently provided to included persons.

We won’t go into detail on the problems with the boldfaced text, as there are bigger fish to fry.   We will come back to “collaborators” soon.

“Discovery” is the CU policy conflation of invention with, apparently, whatever happens to come to mind with regard to the subject matter of patents, with a twist at the end:

The term “discovery” or “discoveries,” as used in this policy, shall mean any inventive idea and/or its reduction to practice which relates to: new processes or methods of producing a new and useful industrial result; any composition of matter, including chemical and biological compounds; any new devices; any new plant; any new design in connection with the production or manufacture of an article, any new computer hardware and/or software programs; any knowledge supporting these inventive ideas, systems, devices, compositions, programs or processes; and any new use or improvement of existing systems, devices, compositions, programs or processes.

“Any knowledge supporting these inventive ideas” is quite a reach.  What is meant by “supporting”?   Keep in mind that the Colorado policy is going to claim ownership of all these things.  But wait, there’s more in the Administrative Policy.

“discovery” or “discoveries” means any inventive idea and/or its reduction to practice which relates to, but is not limited to: new processes or methods of producing a new and useful industrial result; any composition of matter, including chemical and biological compounds; any new devices; any new plant; any new design in connection with the production or manufacture of an article; any new computer hardware and/or software programs; any know-how supporting these inventive ideas, systems, devices, compositions, programs or processes; and any new use or improvement of existing systems, devices, compositions, programs or processes.

Maybe the substitution of “know-how” for “knowledge” is just sloppy drafting.  But “know-how” is considered an intangible asset and can figure in technology transfer transactions as licenseable right (though for universities, it is a huge problem unless the university really does have a master-servant relationship with faculty as employees).   “Know-how” is practical knowledge to achieve some end, while “knowledge” is “an awareness or understanding of a fact or condition” according to my Black’s Legal Dictionary.  So what?   Knowledge would be the thing that documents a “discovery”.  Know-how involves making the “discovery” work for a given purpose.   The switch in terms moves well beyond the expectation of “knowledge” in the Regents Policy.  And we still don’t know what “supporting” means.

The odder thing still is the insertion of “but is not limited to” to the list.  The Regents Policy was doing its best to say “patentable inventions” and “knowledge about them” and then provide a list of stuff that was patentable subject matter.  The Regents Policy list is restrictive.  It sets out a set of things that the Regents have established an interest in, and by doing so, also defines the limit of the Regents interest–the stuff in the list–that subject matter.  But the Administrative Policy changes this to form a merely illustrative list.  Who knows what other things might be added?  Essentially, the Administrative Policy expands claims beyond the authority provided by the Regents Policy, while trying to fix what must have been perceived as a problem–that the Regents Policy didn’t state all the possible subject matter for patents.  May as well have gone with the Warren Berger quip about “anything under the sun that is made by man”.  Perhaps it doesn’t matter.  Maybe it’s all just playing with words and everyone should know that Colorado intends to claim everything it can that it could possibly try to make money on–or prevent its faculty, staff, and students (and others) from making money on (or not making money on) their own “discoveries”.   Even so, the Administrative Policy Statement moves are beyond the Regents text.

But wait, there’s more. Regents Policy:

Scope of Policy

· This policy shall apply to all included persons of the University.

· This policy shall apply to any other persons using University facilities.

· This policy shall apply to any person not in an above-mentioned category who collaborates with included persons in a discovery.

The policy purports to apply to people who collaborate with university personnel, even if they are not employees, even if they make no use of university resources, even if they are not affiliated in any way with the university.  How can this be?  How can this policy have any effect on the personal property or obligations (or company property and obligations) of “collaborators”?  It cannot.   There’s no contract formed.  There’s no trespass into university facilities.  There’s no basis for such a claim.  Colorado makes a similar stipulation with regards to work done under consulting–which is on one’s own time and with one’s own resources, but no matter:

Consulting activities have the potential to result in the loss or diminishment of University’s intellectual property rights.

This could mean:  one could somehow convey university IP to a company without authorization.  But it also could suggest that the university expects to own everything that anyone could conceivably come up with, in any given direction, and therefore “included persons” cannot be allowed to invent anything in any context other than for the university.   Clearly in states that have laws protecting employees from this sort of behavior, like Washington and California, this kind of policy would be simply illegal.  More:

University intellectual property rights and the obligations of included persons to the University shall not be diminished by the terms of included persons’ consulting or business activity agreements with third parties, except as the Principal Technology Transfer Officer may specifically authorize in writing. As a general rule, consulting work that is evaluative or advisory, such as when expert opinion and scientific review are offered, is unlikely to constitute discoveries in which the University has an interest. Conversely, consulting work that is related to an included person’s activities or field of expertise at the University, as articulated in a faculty member’s professional plan or an employee’s position description, and that has the potential for the creation of discoveries in which the University has an interest requires that procedures related to discovery disclosure in this policy be followed. Requests for authorization to remove or limit the University’s rights or included persons’ obligations in consulting or business activity agreements are to be submitted to the Principal Technology Transfer Officer who, upon a request by the included person, will consult with the individual’s unit supervisor, University Vice President, and other relevant University officers.

The area of one’s expertise is perhaps standing in for the “business or foreseeable business” of a company.  But here, it’s coarsely reduced to “the business of the company is anything that you do with your expertise”.  That seems anti-competitive, and turns employment into a kind of intellectual servitude, all in the name of making sure no inventions escape the grasp of the technology transfer office.  To top it off, the policy gives authority to the technology transfer officer to make the determination.  Talk about an unmanageable institutional conflict of interest.  It’s an autocrat’s dream, no doubt, but it takes one breath away that this is a policy that, among other things, sets out

To encourage the faculty and staff employees of the University to make all discoveries available for public use and benefit as efficiently and quickly as possible…

Actually, the thrust of the policy is to route all claimable assets to the technology transfer office, vest that office with authority to claim even the work of unaffiliated persons who happen to “collaborate”, and then assert ownership over these assets with the mind to make money on them through licensing.

There are two more elements, “discoveries in which the University has an interest” and the ownership claim itself.  First “in which the University has an interest.”  Recall that “discoveries” are basically patentable inventions and knowledge about them (or is it know-how?).  The issue is, what ones of these patentable inventions does the university care about?  Here’s the Regents Policy statement:

The term “discoveries in which the University has an interest” shall include discoveries made while performing duties required by a university grant or contract, and/or made with the substantial use of University resources, and/or made as a result of the use of sponsored program funds supplied or administered by the University, and/or made in fulfillment of an included person’s work responsibilities.

Is it just too hard to get “performing duties” and “made as the result of use” to have actual agents doing these things? are these done by “included persons”?  Or “included persons and collaborators?  This bit basically says, “made in the course of employment, or contracted for, or with substantial use of university resources.”  Then we’re back to whether employment should mean, in a university research setting, what it means in a corporate, business setting and how to construct a claim based on use of resources when those resources are provided for purposes other than to benefit the “employer”.  But that’s for another time.

Now we get down to business.  First, the Regents Policy:

Every included person, as a condition of employment, or of his/her education, and every user of University facilities shall comply with this policy and hereby agrees as follows:

To assign to the University, its designee, or a sponsoring agency if required under agreements governing research, any and all rights in and to discoveries in which the University has an interest, as determined by the terms of this policy;

….

Colorado claims ownership not merely on the basis of employment or significant use of facilities, but as a “condition of education”, and if it’s use of resources, then it’s not on any condition at all, though perhaps it ought to be “any user of University facilities, when made a condition of using University facilities.”   The Regent’s Policy states an obligation to assign.  However, if we go to the Administrative Policy Statement, we find this:

As required by Regent Policy, the University shall take assignment of and shall own all discoveries in which University has an interest. Every included person(s), as a condition of employment, and every collaborator participating with an included person on a discovery, will assign and hereby does assign any legal rights that may exist in such intellectual property.

What can one make of this?  First, it is clearly beyond the bounds of the Regents Policy statement, as it includes a present assignment.   The present assignment makes silliness out of II.B.1, which requires “discoverers” to “execute assignments and other documents necessary for the protection of a discovery or other documents conveying rights to University intellectual property.”  Why assign what is already assigned?  No matter, the passage is silly on its ownsome.  Assignments are not part of the class of documents necessary for the protection of a discovery–but that’s what “other” implies.  And beyond assignments, what “other documents” might convey rights to “University intellectual property”?   Well, here’s the strange definition of “University intellectual property” (not in the Regents Policy):

“University intellectual property” means a discovery in which the University has an interest and/or any legal means which the University may employ to claim ownership of intellectual property according to this policy.

It is helpful to know the policy restricts its claims to “legal” ones.  In the Colorado policy world, intellectual property does not mean patents, copyrights, and trademarks.  Nor can we just have that a patent is the means by which one owns an invention.  Instead, the Administrative Policy Statement has its own distinctive definition:

“intellectual property” means any discovery for which legal protection is sought. For example, a patent, copyright, know-how, mask work, tangible research property, trademark, trade secret, proprietary and confidential information, tangible materials, and other forms of intellectual property legally recognized now or in the future.

Remember, a “discovery” is in plain language a patentable invention or knowledge about it.  So by the definition above, “intellectual property” is not actually “intellectual property” until someone is seeking “legal protection”.  (Note that for copyright, one does not “seek” protection.  Copyright vests when a work meets the standard of the copyright law.)  The definition goes on to give examples that expand on the idea this is not merely about statutory rights in patents and copyrights.  The examples here include stuff that isn’t anything like “intellectual property”.   Information, tangible materials.  We have “know-how” (an intangible asset), and “trade secret” (for which one does not seek legal protection–one establishes a trade secret by meeting the standard of the law–generally, by undertaking efforts reasonable under the circumstances to prevent disclosure).   Then the zinger, drafting for the unknown, even though this is merely a confused list of examples:

and other forms of intellectual property legally recognized now or in the future

Given that this is an open list of examples, the drafters cannot bear to leave out anything, so the list must include the unknown.  One might surmise we are in the presence of an inexpert drafter or committee, so hopelessly daunted by IP and trying to sound official and legal that they fear they may be leaving something out of already muddled list of examples that will cost the university hugely.

Back to the definition of “University intellectual property”.  One might think this would be simply a shorthand for “intellectual property–that is–intangible or tangible assets of any form one can think of–in which the university can make an ownership claim.”  But no, “University intellectual property” is limited to *discoveries* in which the university has an interest, and discoveries are patentable inventions and knowledge about them (or know-how about them).  So all that humdrum in the example part of the definition of “intellectual property” just doesn’t operate.  But there’s more, “University intellectual property” isn’t just patentable inventions and knowledge about them but also “and/or any legal means…to claim ownership.”

Perhaps what was intended here was “and any patents that issue on such inventions”.  But that’s not what is written.   A legal means to claim ownership of an invention is not a patent, but an assignment contract.  I suppose that one could pack that into a definition of intellectual property, but why?   A legal means to claim knowledge might be a trade secret agreement.  But that would seem to run against the idea of freedom to publish.  Perhaps because software can be both patented and protected by copyright the drafters of the policy decided they had to get all sophisticated.  But the logic fails to get at anything more than patentable inventions.  It’s doubtful to what extent a university can both commit to academic freedom and in the next breath say that a tech transfer officer gets to declare your knowledge of an invention to be a university trade secret for which protection is being sought.

Finally, back to this assignment requirement, which we are now prepared to read with all the definitions in place–“discoveries in which University has an interest” (patentable inventions and knowledge about them made on the job, under a contract, or with significant use of university resources), and “intellectual property” (a discovery for which protection is sought):

As required by Regent Policy, the University shall take assignment of and shall own all discoveries in which University has an interest. Every included person(s), as a condition of employment, and every collaborator participating with an included person on a discovery, will assign and hereby does assign any legal rights that may exist in such intellectual property.

The Administrative Statement provides not only that “included persons” will assign but also has a present assignment of expectant interest, as if this were a patent agreement with employees, students, and collaborators.  But it’s not.  It’s merely a statement of policy.  It is not a contractual instrument with regard to assignments–no one is signing the policy, and certainly no “collaborators” are signing this document.  One may agree with the policy, and by employment be bound by the policy as an agent of the employer.  But the policy is not the instrument by which ownership in inventions passes from inventor to university.  While there is clearly some premise of an expectant interest in inventions–that is what an invention policy is all about–the way to get at it is for the policy to require an invention agreement with each individual that’s within the scope of the policy.  That’s how one would implement the Regents Policy requirement.  For that, one has to go out and get that agreement, properly, with each potential inventor, according to whatever terms are needed to reach a binding agreement.  Close the campus to visitors.  Preclude informal chats at conferences.  Restrict consulting to areas one is not an expert in, or advising folks how to find stuff already published, and even then, only when folks aren’t doing anything inventive.

More so, what “legal rights” exist in “discoveries” that are “hereby assigned”?  Is the policy talking title to inventions in order to own patents that may issue on them?  Or is it trying to depict an invention as a bunch of things–prototypes with parts, firmware, diagrams, manuscripts, thoughts in one’s head–so that it can claim “ownership” of all of these things in potentially lots of different ways of owning (who can think of them all?), all in one fell swoop, not being content with mere title to each invention, in order to obtain a patent, under a policy on patentable inventions and patents?

For all the convolution and ineptitude in this policy, it comes down to a demand to own inventions, reaching to non-employees and even to non-users of university resources.  It buries this demand in a string of badly conceived and executed definitions, and aims to implement it all through a present assignment demand in the policy statement, as if policy assertions could actually transfer title to inventions.  In all, it’s not a pretty sight.

This entry was posted in IP, Policy, Technology Transfer. Bookmark the permalink.

1 Response to CU’s a-Mazing IP Policy

  1. Pingback: Compulsory IP Taking and Public Universities | Research Enterprise

Comments are closed.