Is the UC present assignment even legal?

The move by the University of California to present assignments of future inventions plays havoc to existing policy and creates rather than limits “title uncertainty”.   Among the bits of havoc is the elimination of the review step prior to assignment as set out in University policy.   In Stanford v Roche, UC joined an amicus brief that argued that present assignments might not hold up in state court.

Here’s one reason why, in this case, UC folks were spot on.  Under California Labor Code 2871, an employer may require disclosure of all of an employee’s inventions, but only on the condition that (among other things) there is “a review process by the employer to determine such issues as may arise….”  A present assignment scheme that eliminates the review process, such as UC is imposing, but still requires disclosure of all employee inventions, not just those that are within scope of a permissible employer claim, would appear to be illegal and unenforceable.  That alone should add wonderfully to “title uncertainty”, as it throws UC’s entire patent policy into doubt, not merely the once in 30 years episodes where UC loses the chance to double-cross a collaborating company.

The purpose of the present assignment is to get an early assignment against a subsequent attempt to assign by an inventor.  This is the essence of the Stanford double-cross:  allow consulting, but when the invention is made in the consulting, have title vest with the institution automatically, so the institution has a position from which to demand a license and payment from the unfortunate company.   If the present assignment operated only after review, then this strategy wouldn’t work.  Clearly, UC intends for the present assignment to operate when an invention is made, and the review is only there to sniff what one has already trapped.

It’s odd.  If UC violated NCAA football recruiting rules, coaches would be fired.  But here, violating state law, ignoring the substance of a Supreme Court decision, refusing to comply with federal funding agreement obligations–it’s business as usual.  Really, if folks are that clearly staked to administrative misbehavior, all to get an advantage over industry in the license and litigate game, isn’t it time for a conversion experience or to clean house?

It may be that present UC administration in charge of technology transfer simply is not capable of changing direction.  Having argued to the courts that vesting is both necessary and desirable, perhaps they simply are incapable of accepting instruction contrary to their position.  Perhaps they are incapable of undoing what they have tried to build, wrong as it is.  Perhaps they lack the skills necessary to build out a new approach, not anchored on vesting.  Perhaps they are afraid that if they give up their claims, they will lose their jobs because no one will work with them without compulsion.  And if this latter bit is true, what does that say about the nature of the present compulsory system?

For what it’s worth, university technology transfer thrives in voluntary, agent-based systems.  It did in the past, and that’s what created the technology transfer model that has been taken over by the vesting folks and reduced to institutional self-interest, compulsion, and a huge suppression of initiative, collaboration, and opportunity.  It has done in the present, with examples such as the University of Waterloo, with collaboratives such as the Apache and Mozilla foundations for software, and the work we did with innovative agent strategies such as the Rosetta Commons.

How does one find “empirical evidence” for what is not happening, and what is not even being considered any more, and if it were, it would be in violation of policy?  This is not stuff to be decided by “empirical evidence” nor by the confirmation bias of “success stories” lacking the context of everything else that’s claimed but not licensed, or worse, licensed and never developed or broadly used.  Before, there were mosaics on the floor and fireplaces to heat the chilly rooms, and now, the new inhabitants, having driven out the faculty entrepreneurs who built the approach, are punching holes in the roofs to be able to light their fires on the tiles.  One would think, on socio-archeological grounds alone, that they should be asked to stop!


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