A compulsory policy so messed up, it must be voluntary!

11.  The present assignment is so incompetently constructed it boggles the mind.

In a prior post, I included the above in a list of problems with UW’s implementation of present assignments. I added this one because, well, UW’s “goes to 11“.

The post is a longish one, and not for the weak of heart.

It’s here not for fun reading but to document just how defective the UW present assignment implementation is, and how defective the UW policy statements are behind it. At least things are consistent. If it’s going to be a turkey of a movie, it should have turkey acting in every scene. I didn’t enjoy writing this, and I’m rather pissed that I had to spend so much time documenting how bad things are. And this is just the tip of this big, cold thing.

The short of it is, the present assignment text in the outside work approval form is fatally flawed and inappropriate to the policy requirements for consulting. 

The present assignment language is not authorized by policy and in fact violates policy. Since the University claims it can change its IP policy at will, and since the IP policy in its present state appears to claim everything from ideas to expertise, without regard for whether the work is done “outside” or not, it would appear that there is no way to determine what has actually been assigned under this agreement. One wonders if it is even enforceable under Washington state law. If not, then any assignments taking place are, in essence, made voluntarily.  Why does a world class university have such rotten policy? Is trying to work against your public mission just too difficult?

The Text

Here is the present assignment text from the UW request for outside work form.

The Statements above are truthful to the best of my knowledge. With this request for outside work, I acknowledge that I am bound by and I agree to comply with the University Patent, Invention, and Copyright Policy (Executive Order 36) (“Policy”), as it may be amended from time to time. In accordance with this Policy, I will disclose all inventions and discoveries I create to the UW Center for Commercialization, including any that I create in connection with any outside work. I agree to assign and I hereby assign to the University all my rights in any intellectual property  to  which the University has a right of assignment  under the Policy, provided I created such intellectual property in the course of my University activities or responsibilities or with more than incidental use of University resources.

The Oath

Let’s consider this form. First we have an oath. Why? The form itself is a request to consult, not a deposition. If the information is not truthful, then there would be consequences anyway. So why this bit about “truthfulness” and why is it qualified by “to the best of my knowledge.” Does this mean that having less knowledge is, well, a better thing? Ah, ignorance is bliss, and you are off the hook if you don’t think very hard about what you might be doing. No, makes no sense. At best it is a jab at folks, suggesting that the University receives untruthful information on forms and wants to put a stop to that.

Next up is an acknowledgement *and* agreement. The scope and application of the university’s policies for faculty is a matter of employment and governance. The oath here is entirely unnecessary to invoke policy, unless of course the form intends for new policy to be made. There are many policies that might apply, so it is odd that the IP policy is called out, and not, say, the use of facilities policy or conflict of commitment policy.

Agreement to Agree

We see with “as it may be amended from time to time” some of what is going on.  A signature here means that the requester has agreed to the amendments up front–an agreement to agree in the future to whatever the University changes the policy to. Not enforceable as contract. More of a threat. But more than that, this phrase introduces huge uncertainty. How can one enter into an outside arrangement if the University can change its policy next month? May as well say, “don’t bother. ” The agreement here would appear to give the University special power over those faculty who request to do outside work. Other faculty, who do not sign this form, would appear to not be under such control.

Essentially, the text here asks the requester to accept a misstated, overreaching, confused interpretation of policy as policy. A little private hell of “as may be amended from time to time” right here in the next sentence. Who would have thought the amendment would comes so soon, and be so bungled?

Policy Acknowledgment or Change?

Consider “In accordance with this Policy, I will disclose all inventions and discoveries….” Consider a different construction: “I will disclose all inventions and discoveries in accordance with this Policy.” These are fundamentally different gestures. The first is an interpretation that rambles on, adding things that don’t belong. The second restates the policy as a reminder. Too bad the policy itself is so terrible.

If we turn to the actual policy, it’s Executive Order 36. Here we have work to do, because EO 36 was thrown together when administrators got the idea that the Faculty Handbook should be replaced by something more dominating, and a set of policies and procedures pertaining to inventions and copyrights and research and equity in startups and hand wringing got plopped together here without even the comfort of an editor who knew what to do with text, let alone understood practice.

When is an Invention?

In EO 36, we encounter a definition of “invention” but not of “discovery.” Both terms get used in the patent law. I guess that means somewhere someone actually read the patent law. But that was long ago. In 35 USC 101 “invention” is defined as “invention or discovery.” The Constitution (Article I, Section 8 ) reserves rights of “inventors” to their “discoveries.” I guess UW folks were unclear whether they were dealing with inventions and discoveries, or with the patent law definition of invention. Bayh-Dole makes the same move, defining invention as “any invention or discovery which is or may be patentable or otherwise protectable under this title….” (meaning 35 USC–the patent laws).

An invention is “made” when there is “a conception and a reduction to practice.”  See MPEP 2138.02 for more. Conception requires a “definite and permanent idea” of the “complete and operative invention” in the mind of the inventor MPEP 2138.04. Reduction to practice may be actual or constructive MPEP 2138.05.  Either one builds the thing with every element and it operates for its intended purpose (actual), or one files a patent application (constructive).

What this means is that an invention is not an invention until there is both conception and reduction to practice. Since conception (here) takes place in the mind, until an inventor decides something has been so conceived, it hasn’t. The inventor has the choice about it all. There isn’t an invention until an inventor conceives it in all its parts and recognizes that conception as inventive AND the thing gets reduced to practice–either actually or constructively (by written description). Then the invention is *made* as of the earliest documented date of conception. All this will blow away with first to file, but it’s worth the discussion.

Scope of Invention and Claims

This is all important to the UW policy statement. In 1.A. the policy asserts it “covers both patented and nonpatented innovations….” This contrasts with “is or may be patentable.” Clearly we are well outside if “patent” policy in the first sentence alone. The policy adds, “including computer software with commercial value.” This removes any thought “nonpatented” is just a clumsy way of avoiding using “is or may be patentable” but isn’t yet. Nonpatented also appears to mean stuff in the public domain with regard to patent law, outside its scope, but clearly within the scope of the University’s idea of “innovations.”

The problem with scope has to do with a fundamental misunderstanding of the policy as it has been revised. In a review + request policy, the scope is broad–it applies to all, and all sorts of things. But that is only for review. The requests for assignment are narrowly drawn–to what is required in an extramural contract or expressly commissioned or required by law. But if one wants to move to a compulsory policy, and one is conveniently lazy, then one merely changes the statement of scope of application for review into a statement of the scope of ownership claim.  Whatever may be reviewed may be owned. This is a huge change, but it is clever (or bumbling) because it is not marked with words actually changing.  It is how software code becomes riddled with bugs. The architecture of the program is compromised, and from there no amount of patching will save it.

The issue is not patenting at all, but money, if we take “commercial value” to mean “money from companies” rather than “hey, this stuff really works, thanks!” kind of value.  Earlier versions of the policy didn’t use “innovation.”  An “innovation” is something that is adopted and considered new. Here, it means more along the lines of “anything we see our employees or students doing that looks new or valuable to us.” It’s not really the opening one would have to a patent and invention policy, or to an innovation policy. It’s more like a greedo policy.

Paragraph B specifies “commercially valuable inventions” as the subject of interest. This meshes with the theme of money, without resolving whether the inventions are intended to be of value because they can be used, because they can be licensed for money, or because the public benefits through their use by companies.

Frankendefinitions

Inventions are to be “promptly reported” to the “Office of Intellectual Property and Technology Transfer.” Note, not the “Center for Commercialization.” The policy does not assume all inventions are to be deployed for “commercialization.”  “Commercial value” may arise in any number of ways, and technology transfer may be transacted in any number of ways. “Commercialization” is a narrowing of all of this. Even this might work if what was meant was the “making of commercial product from new technology.” But at the University of Washington, I think, the working definition is more along the lines of “anything we can make money on or take credit for involving companies.”

We now come to a definition of “invention.” It’s not quite the definition in patent law.  It wouldn’t be too much to simply use the patent law definition, but no. “Invention” means “any invention or discovery which is or may be patentable or otherwise protectable as to ownership.” “As to ownership” is not the same as “under this title” (i.e., patent law). “As to ownership” is a broad claim, potentially taking in any theory of ownership. An invention may be owned as a trade secret. Some elements may be subject to copyright. Just what is meant by “as to ownership” other than as provided by patent law?

This is a problem with drafting policy. One can use the definitions of the law, or one can make new definitions just for the policy. Sloppy drafting means one does neither, and bumbles along with what amounts to an implied definition. The problem is, who gets to do the implying? The University? Then it’s a wild adhesion contract. The employee? Then it might be different for each according to his or her implier. Seems like a mess to create accidental definitions.

It gets worse. In the patent law, as we have seen, an invention is “made” when it is conceived *and* reduced to practice. Here, in EO 36, however, we find “An invention is deemed to be ‘made’ when it is conceived or first actually reduced to practice.”  Who does the “deeming”? It’s like who does the “implying” problem. The problem either way is that the definition is simply not the patent law definition, though like Frankenstein’s monster, it is made from available parts. Let’s call it an “abynormal” definition.

EO 36 uses language glopped together from the definition of “subject invention” in Bayh-Dole. That definition is concerned with the *scope* of inventions in which an agency can have an interest in a funding agreement. For this, it is important to recognize that first of all, a subject invention has to be an invention–that is a discovery or invention that is or may be patentable. For an invention to be this way, it has to be conceived AND reduced to practice. Once there are both, then we have “made” an invention. Then we can look at whether either the conception or the actual reduction to practice took place with federal funds. If either did, then the invention is a subject invention.

One can see how EO 36 gets this all wrong, as it *defines* an invention as, essentially something that is not an invention–conception without reduction to practice, OR actual reduction to practice without conception. Anything you make, any thought you take… is “deemed” to be an invention. If the policy really intends this, then it is claiming ideas and anything constructed or practiced, regardless of whether it is or may be patentable. Yet, if it is doing that, it is making a demand far outside of what patent law addresses. It has created its own frankendefinition of “invention.”

The frankendefinitions are not restricted to the Patent and Invention Policy. In the Outside Work policy, Section 6, on “Deeper Invovlement” we get this:

Where an employee…desires to utilize the expertise and/or technology he or she has developed and to assist a business venture…in the commercialization of an idea, the employee and his or her supervisor should first seek the early assistance and counsel of UW TechTransfer to aid the employee in distinguishing those things which may be freely shared (e.g., “general expertise”) from those the sharing of which may be restricted (e.g., “technology” or other “intellectual property”).

This is shocking. Although this is buried in a policy on “deeper involvement” with commercial enterprise, this paragraph does not make that distinction. What it does is to imply that one’s expertise, and ideas, are potentially restricted by the University. There is no authority to do so. One can also see frankendefinitions for “technology” and “intellectual property”–which in quotes as they are must mean something special–could it be that these frankenwords mean whatever the University wants them to mean?

We can now return to our present assignment form, with a much clearer idea of how murky it all is. The form requires disclosure of all “inventions and discoveries” “according to the Policy.” I guess this would mean every idea and every lab prototype whether inventive (patent law style) or not. No one does this. They ignore this. The University apparently doesn’t care. The Policy isn’t enforced. It’s a bungle. Everyone gets that.  So the actual practice is something else. Yet this outside work request form makes it appear that everything is pretty darned authoritative.

Note that the Center for Commercialization is interposed, instead of the Policy’s requirement of Office of Intellectual Property and Technology Transfer. Is it just a name change that no one has bothered to update in the Policy, or is it a demand that reports go to a marketing arm of the OIPTT?  In any case, the request form does not recite the policy. The point is, no one seems to care that things are skew. The same thing is true of the verbs. In the policy, a great deal is made out of the term “made”–this is what defines an invention. In the form, it is “create.” (Interior dialogue:  What does it mean to create an invention?  To create a discovery? [implied assertions] No, I don’t know what you mean. I suspect you don’t even care what you mean. [implied denial]  Clearly you don’t care how the Policy is constructed, or you are simply incapable of tracking it.)

Disclosure or Reporting Requirements

The next phrase is: “including any I create in connection with any outside work.” The phrase is not in the Patent and Invention Policy. This is an interpretation, and may well be outside a reasonable reading of the Patent and Invention Policy. If we look at Paragraph C of EO 36 we find simply:

University employees shall report all inventions and discoveries to the University’s Office of Intellectual Property and Technology Transfer.

We skip over the EO 36 claim that students who are not employees must assign inventions to the University if they have used any “resources (other than for lecture-based coursework)” as one of those unethical “flavoring particles” that folks like to throw in, just because they can.

If we move to Paragraph J of EO 36, we find guidance on consulting. There, the discussion is restricted to consulting with “commercial enterprises.” The guidance reads, “Invention clauses in consulting agreements must be consistent with the policy of the University and with University commitments under sponsored research agreements.” Well, now, we know how impossible it will be to get anyone in the commercial world to try to be *consistent* with the University’s mess of a policy, but let’s say that the intent here is that the invention clauses must not be in conflict with the requirements of University policy. Still tough, but maybe doable.

The State Law on Invention Claims and Disclosure

In the Patent and Invention Policy, at least, the concern is restricted to commercial enterprises, and to invention clauses in agreements. Despite the claims of UW Patent and Invention Policy and the outside work request form, Washington state actually has a law about all this.  It’s at RCW 49.44.150. There we find two things. 1) employees must disclose “all inventions being developed by the employee, for the purpose of determining employer or employee rights.” 2) The employee may disclose to the department of employment security. The University, in requiring disclosure of inventions made by an employee in outside work, would appear to be making a demand that is not entirely consistent with state law.

We may note as well that the University’s Patent and Invention Policy attempts the disclaimer required by RCW 49.44.140. In Paragraph C we get a restatement of it, but not this is not the employment agreement, nor is it, as far as I know, provided when the employment agreement is made. It is also a disturbing restatement, as it takes what is a limitation on the scope of what an employer can require, and it interprets that limitation as what the University will require, without given any evidence that it comprehends the concept of employment with regard to intellectual property. In other words, the Patent and Invention Policy asserts a reading of RCW 49.44.140 that does not appear to be appropriate to the purpose of the law. It’s clever, but the law should be amended to prevent this sort of exploitation.

There is no mandate for a public university to claim to this outer bound, and indeed there are many things that would argue the university cannot and should not. Employment is not payment for everything, but rather payment for what the employer directs. The agreement for employment concerns that. If the employer provides facilities and other resources and directs employees to use those facilities and resources for the benefit of the employer, then we are within the bounds of RCW 49.44.140.

Public Service or Employment?

But if the employer is also providing a “public service” and makes facilities available for extramural research (paid for by sponsors) and for instruction (including laboratory instruction), then those activities are not employment, even if individuals engaged in the activities are also “employed.” In copyright, this was made clear in Reid v CCNV, with a multi-point test for agency. Here, all that is ignored. The analysis would be, since the law is restricted to what an employer can demand of employees, it must not extend to what an employer can demand of non-employees (like students), or employees not working as employees (like faculty doing research in the library, or graduate students working on their dissertation in a lab). The University makes a sham of the law designed to protect employees from exactly this behavior.

But enough of that. The University’s “business” is to make money from everything, and therefore all inventions made by employees are within the scope of its claims, even if the work does not use those “resources.”

Reporting Inventions That Are Inventions

The idea for reporting outside inventions made sense when patent applications were not published, so an employer would not know what might be pending at the Patent Office. Now, however, patent applications are published after 18 months, so an employer can get a disclosure via the USPTO (assuming the application is filed in the US) prior to a patent issuing. A second matter to note is that there is no guidance on timing of any report. The UW policy says only that employees (and students) have to report inventions “promptly” to the OIPTT.  The outside work form says only that they are to be “disclosed” (again showing a capacity to throw words around).  The state law says the report is to the employer or to the department of employment security.

If we follow federal patent law on inventions, then an invention is not made until it is conceived and reduced to practice. Thus, from this perspective, the earliest an invention could be reported is after it is “made.” And for that, it is up to the inventor to decide if the invention has been conceived. Not the idea of the thing, but the complete and permanent thing. There is no obligation to reduce this thing to practice.  There is no obligation to report ideas or insights or lines of development that could become inventions, or are almost inventions, or would be valuable when they are inventions.   Thus, the earliest one might consider an invention to be reportable is at the filing of a patent application. Note, further, that state law requires only the disclosure of inventions that the employee is “developing.” I take this to mean, inventions that have been made and are being “developed” for use, not that ideas that one is trying to “develop” into an invention.

The timing of the obligation to disclose inventions may be distinguished from the Bayh-Dole requirement for reporting subject inventions, where there are standards not only for what is to be reported, but also anticipating disclosure before publication or other creation of a patenting bar. The UW Policy does not provide any such obligation or specificity. Yes, the University does have a form for reporting inventions, but that form is not part of the cited policy. We can then look at these terms–“report” and “disclose”–and ask what exactly is meant. The University Patent and Invention Policy uses “report.” That may be a simple as informing the University that a patent application has been filed, and perhaps the general area of art that the invention pertains to. When I’ve had to deal with this stuff, I’ve advised university inventors with outside inventions to disclose only as much as necessary to establish that the invention is outside the claims of policy, and no more. Certainly no inventor should provide any information about possible markets, applications, or areas for further development. For all that, a statement that the invention was made without use of university resources should be sufficient. The rest will become evident in 18 months when the application publishes, and if there are issues, they can be managed then. The motivation to disclose more earlier is entirely with the inventor who desires for an early resolution, if there are going to be problems.

The difference between “report” and “disclose” is important. The Policy says “report.” “Disclosure,” as used in the state law, has a stronger sense of revealing the invention rather than revealing that an invention exists. The same is true of “disclose” in Bayh-Dole usage. When the University outside work form uses “disclose” in the context of following the patent policy, it oversteps the bounds of that policy. If one feels the temptation to argue that by “report” University means “disclose” too, then how is it that this meaning comes about? Is it the employer’s prerogative to decide what it means, regardless of the words? Or do the words of the policy matter, however incoherent they are formed?

The Present Assignment

We then come at last to the present assignment. It is independent of the previous sentence, and indeed it has nothing to do with the request for outside work. It is a present assignment to whatever it is that is the subject of the present assignment. I put it that way because there is no way to give the assignment any scope. It is not merely a present assignment of future inventions–it is a present assignment of everything the University at any later date decides should be the University’s.

I agree to assign and I hereby assign to the University all my rights in any intellectual property  to  which the University has a right of assignment  under the Policy, provided I created such intellectual property in the course of my University activities or responsibilities or with more than incidental use of University resources.

The “Policy Overview” attached to the request form identifies “intellectual property interest” to mean “invention, patent, copyright, trademark, trade secret, know-how, or other intellectual property right.” This is an expansive definition, not the sign of someone who knows a lot of about intellectual property, but rather one who does not.  The list provided contains both intellectual property (invention, patent, copyright, trademark) and non-intellectual property (trade secret, know-how). Thus, there is no way to tell what “other intellectual property right” might mean, as the list of non-intellectual property assets treated here as intellectual property could be extended indefinitely–domain names and email addresses, leases, avatars in RPGs.

Perhaps the limitation to “right of assignment under the Policy” helps to reduce angst.  Actually, as I’ve shown, the policy is such a jumble that it is impossible to know what “right of assignment” might exist. Paragraph C of EO 36 says “all inventions in which the University has an interest.”It then goes on to state what the University will not claim an ownership interest in–a restatement with distortions in context of RCW 49.44.140.  Again–scope of possible interest = new ownership claim.

The “provided” clause does nothing to limit the scope of the claim. What are “university activities and responsibilities”?  The Patent policy has no such limitation. If anything, it makes an expansive claim that does not depend on duties of employment or use of resources–it can be simply in the University’s “actual or demonstrably anticipated research or development.” Here, “activities” are distinguished from “responsibilities.” It would appear “responsibilities” means something like “employment” or in the ethics law “official duties.” What then are “activities”? That would appear to be things like outside work, would it not? So we are back to expecting the University to claim pretty much anything, regardless of the attempt to place a limitation on the scope of the assignment.

It’s So Unenforceable, It’s Voluntary!

Things here are a tangled mess. The problem for the consultant or inventor or adviser is that it is not possible to know what is claimed and assigned. The references to policy are suspect. The policies themselves are a mess. The assignment stipulates that the policy can be changed.  Thus, it’s not clear that the policies are enforceable. That’s a big problem for the University. If people are assigning IP to the University of Washington, it is because they choose to, not because the policy requires it, or an employment agreement requires it. In essence, in practice, the University does have a voluntary policy on IP assignment.  People who choose to interpret the policy in other reasonable ways simply have nothing to report, disclose, or assign. Those who don’t care or have made commitments to sponsors report and assign anyway, when they choose to.

What To Do?

For dealing with the UW present assignment, it may be best to line out what is not relevant, and don’t answer the questions that are not required by policy and are in any event invasions of privacy. The ethics law (RCW 42.52) and the strange opt-out for universities and “research employees” (see RCW 42.52.220) pertain to one’s official duties and compensation by means of contracts and grants. The opt-out for universities, one would have expected, would have made the rules more liberal, recognizing that sometimes a faculty or staff employee might start a company and want to take a license to what he or she invented. But no, UW has allowed its “technology transfer” unit, the Center for Commercialization, apparently, to make the rules *more restrictive* to force more “know how” to become grist for money-making activities. Thus they force all consulting into a bin that was made for the special case of faculty startups with licenses or research agreements with the University. How ethical is that?

I note that under the Outside Professional Work Policy, the form is required only for common consulting (Section 3) and not for “deeper involvement” consulting (Section 6).   Odd. Skip the form by getting into a deeper position than simply one where you help out.  Then there’s no form required.

Here’s what I would do, if I were a UW employee and felt the need to use the form. I would line out the stuff that doesn’t apply, and insert the stuff that does, as it reads in the applicable policies, and I would acknowledge its existence. Whether and how it applies is a matter of those policies, not the request to consult form.

Line out the oath. If the statements are not truthful, then it will out.

Line out the agreement to be bound by policy. If you are, then you are without this. And if you are not, then there is no reason for you to be by making a request for outside work.

Line out the bit about amendment of policy. Agreements to agree aren’t enforceable.

Line the restatement of disclosure obligations. The disclosure obligations are in the policy statements, not here.

Line out the inclusion of inventions in outside work. The state law is inventions you are developing, not invented, and disclosure can be to employment security, not the university.

Line out the present assignment. It is not authorized under policy. So by lining it out you are complying with policy. Further, it lacks definition because of problems in policy resulting from overlaying a compulsory set of claims on a review + request architecture.  Thus, title under the present assignment will be hopelessly uncertain.

Line out the provided clause seeking to restrict the scope of the present assignment. It does not because activities are outside of responsibilities and therefore the term lacks definition.

Add three statements quoted from the Patent and Invention policy and the Outside Professional Work for Compensation Policy. These are what you acknowledge to show that you are aware of them.

The Statements above are truthful to the best of my knowledge. With this request for outside work, I acknowledge that I am bound by and I agree to comply with the University Patent, Invention, and Copyright Policy (Executive Order 36) and Outside Professional Work Policy (Executive Order 57). (“Policy”), as it may be amended from time to time. In accordance with this Policy, I will disclose to report all inventions and discoveries I create to the UW Center for Commercialization, including any that I create in connection with any outside work. to the University’s Office of Intellectual Property and Technology Transfer. I agree to assign and I hereby assign to the University all my rights in any intellectual property  to  which the University has a right of assignment  under the Policy, provided I created such intellectual property in the course of my University activities or responsibilities or with more than incidental use of University resources. Invention clauses in my consulting agreements must be consistent with the policy of the University and with University commitments under sponsored research agreements. University employees shall report all inventions and discoveries to the University’s Office of Intellectual Property and Technology Transfer. Consulting agreements should contain the company’s acknowledgement that to the extent the consulting agreement is inconsistent with any of the University’s employee’s obligations to the University, the employee’s obligations to the University shall prevail.

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