Why not just say, "We own your inventions to try to make money"?

I have been out collecting stuff in the wild.  By the “wild” I mean at university technology transfer office web sites.  Bluck.  What a slog!  It’s a dirty, nasty bit of work, that is, in the mud and detrius of policy statements gone off and pictures with circles and arrows showing how a greed culture can be created from the broken will of academic work.

Here’s another policy statement to consider.

Auburn University at Montgomery is a public institution devoted to teaching, research, and outreach.

What the heck is “outreach”?  The third mission conventionally is public service.  But deeper in all this is the issue of whether “University” means some corporate thing, and this is a statement of officials on its behalf, or “University” means the people who work at the University.  One version of the statement announces a claim.  The other makes a descriptive statement about what people do at a university.

In pursuit of the research mission, faculty, students, and staff discover materials, processes, devices and methods which improve the lives and promote the welfare of the citizens of Alabama, the Nation and the World.

Here is our answer.  The people at the university do what they do to serve the corporate statement of the “research mission”.  They don’t, apparently, discover stuff as part of teaching or “outreach”.  Whatever “outreach” is–it sounds sort of creepy.   Notice how students are thrown in to this policy statement, which is fine to the extent that a university has a field full of folk doing stuff.  But it’s difficult to believe that these folk all do what they do in discovering stuff “in pursuit of the research mission.”  No, it’s simpler than that:  folks at universities conduct research.  The mission bit is administrative wishing.  Also here we get a strange list:  “materials, processes, devices and methods.”   This sounds like it is something like a list of patentable subject matter, but no, it really isn’t.  That list would be “process, machine, manufacture, composition of matter” which rearranged to match policy-speak, would be “materials, processes, devices, and, er, made stuff.”  Apparently folks don’t discover anything much else, like concepts, or realizations about history, or orchestral scores lost in museum attics.  No, this policy is about patent-like stuff, but not exactly.

The appended restrictive clause (no comma before “which”) expresses an aspiration for these discoveries in the form of a flat declaratory statement that draws in the state, the country, and the whole world.  It’s a nice aspiration, of course.  The bitter reality of discovery, however, is that not all discoveries are happy, nor does innovation necessarily benefit all.  For every new thing, there’s bound to be someone out of work.  Hence, Marx and Engels rail at innovation as a means to displace workers and with them social relationships:

The bourgeoisie cannot exist without constantly revolutionizing the instruments of production, and thereby the relations of production, and with them the whole relations of society. Conservation of the old modes of production in unaltered form, was, on the contrary, the first condition of existence for all earlier industrial classes. Constant revolutionizing of production, uninterrupted disturbance of all social conditions, everlasting uncertainty and agitation distinguish the bourgeois epoch from all earlier ones. All fixed, fast frozen relations, with their train of ancient and venerable prejudices and opinions, are swept away, all new-formed ones become antiquated before they can ossify. All that is solid melts into air, all that is holy is profaned, and man is at last compelled to face with sober senses his real condition of life and his relations with his kind.

Not that Marx and Engels are right about everything, but it’s worth pointing out how little the policy statement at hand acknowledges the problems of discovery.  Perhaps it would be better to quote a poem or a proverb.   As Benoît Godin has shown in a remarkable series of studies, for most of its existence, “innovation” has been a term of disparagement.  As an introduced change to an established order, there always seem to be a whole lot of people who just don’t want it.

It is in the public interest to translate such discoveries to practical applications which solve problems of daily life.

This is a difficult construction.  First, it is an impersonal construction, so there’s no agent identified to do the translating, nor a voice to tell us who it is that has decided discoveries shall be translated.  It floats freely in the policy, like a loose tooth.  Discoveries are to be translated to “practical applications.”  This too raises questions.  It is one thing to apply what is learned to do practical things, among other things one might do.  It is quite another to translate discoveries into “practical applications.”  In the first, one does things and teaches things–stuff that faculty, staff, and students might do, say, in a university.  In the second, something metaphysical goes on in which discoveries become something else.  Oh, and we have another restrictive clause that restricts these translated practical application to those that “solve problems of daily life.”  That, too, is hard to parse.  Why the problems of daily life would be singled out–what do I write in my diary?  should I go to the store?  does my boss hate me?–I don’t know.  Why not the problems pressing on the nations of the world?  Or, why have the restrictive clause at all, as it makes a meaningless restriction–not only is it silly in context, but it has no role in the policy statement.  Perhaps what is meant is that the problems of daily life are not ones that academics should concern themselves with, opening up a portal by which speculative investors might mine academic discoveries with the assistance of caring administrators for stuff they can profit from.  If that’s the case, why not just out and write that?  Why does a policy have to operate by indirection?

Although University research is not conducted primarily for commercialization, when discoveries are made which have commercial value, it is in the best interest of the public and the university that this intellectual property (IP) be protected.

Here we have a figure of thought worth considering.  Once, one might have encountered an expression to the effect that university research is not conducted for commercial interests, but at times things of value are discovered.  But here we find it implied that university research is conducted for commercialization, just not “primarily”.  That’s quite a leap.  “Commercialization” ought to mean something like “the creation of new products and services offered for sale” but in this usage, it must mean something more like “university licensing to make money from IP,” which is more along the line of “profiteering” or “speculating” or “arbitrage.”  Again, why hide one’s intention behind abstractions?

We can also pause to consider how a discovery has “commercial value” and how this differs from “commercialization.”  Commercialization, as its ugly tail of suffixes indicates, is a process by which stuff that isn’t a product or service to be sold becomes one.  Commercialization can take place where there is no IP at all, and while discoveries might have “commercial value” it does not mean that these discoveries themselves are worth paying for, or that they must be owned.  But in the world of introductory paragraphs in five paragraph themes, this one is headed for a thesis statement for which all these assertions are but rationales.

Finally, it is worth mentioning “protection”.  Just what is it that has to be protected about a discovery made in university research?  The idea of protection might have some merit, but generally the idea of university work is to publish and teach, not conceal and protect.  Discoveries don’t need protection–they need promotion, or if they are really good, they just need publication.

Generally, commercial interest in such discoveries is dependent upon protection of the IP.

This is questionable, especially the “Generally”, but then what is “commercial interest”?  If it is the interest in companies in working with discoveries, it’s hard to see that they need IP protection.  If it is speculators looking to reduce the risk of their investments, then perhaps.  There is an argument that inventions won’t get developed if they are available to everyone, and with it the free rider problem, and of course that’s all there.  But if we want to be clear about it, it is not the IP that matters, or its “protection” but in these cases it is the exclusive position of the IP owner that attracts the speculator or investor.  If, by contrast, a discovery might serve as a standard, or a shared tool, or a common resource, then even if there is an IP position, “protection” is not a meaningful concept, even for “commercial interest”.  In such cased, IP acts as a barrier, a complication, a frustrating overhead, a cone of silence that must be used but never really works.   There is nothing, really, that requires that discoveries must have IP “protection” to be “translated into practical applications.” Some, maybe, but not generally.

With the enactment of the Bayh-Dole Amendments (Public Law 96-517) entitled “The Patent and Trademark Amendments Act of 1980”, the federal government facilitated University ownership of IP created under federal sponsorship. This act gives universities the right to hold title to inventions that are made during the performance of government grants and contracts, with the intention that the patent system will serve as a vehicle for the transfer of government funded inventions to public use and benefit.

We will bite this one off all at once.  Why the full citation and title are given isn’t clear.  It appears to be a show of officialdom, to give what follows some authority.   It may be quite true that Bayh-Dole “facilitated” university ownership of inventions (and even ownership by the University, as if the Act was all about this one University), it did not do so for “IP”.  That’s simply not true.  It makes the use of “invention” in the next sentence appear to be a subset of Bayh-Dole’s IP provisions, not the only subject of Bayh-Dole.   In a policy statement that aims to have some authority, it is sloppy and misleading.  What is unsaid is that Bayh-Dole also facilitated the ownership of inventions by pretty much anyone that a faculty inventor might want to work with.  That a university might think the Act was all about its own interests is understandable, but a bit narrow.

We have with this restatement a play on the ambiguity of words: especially “facilitate” ownership and “right to hold title.”   What ought to be here is a statement that Bayh-Dole restricted the claims that could be made by federal agencies to ownership of inventions made with federal support.  That opened up possibilities for all sorts of inventor disposition of title–to hold onto title, to assign to the university that hosted the work, or assign to another invention management agent.  The policy statement, though, leaves one with the impression that Bayh-Dole in some way handed ownership of inventions, if not all IP, to universities, as if the federal government could do that, even though the Constitution says that inventors and authors hold rights to their discoveries and writings, and that’s what federal power is authorized to do.  The “right to hold title” is not, therefore, relative to the inventor’s right, but relative to contract claims that might otherwise be made by a federal agency.  The point of it is, that the university is not the only entity that has the “right to hold title”–yet the policy makes it appear that this is the case.

While the Bayh-Dole Amendment is limited to IP created under federal support, it has provided additional encouragement for universities to seek ownership of IP created from the support of other sources as well.

Now for the zinger.  More sloppiness as IP is used instead of invention, as if these are equivalent terms, when they are not.  I don’t know what Amendment is being referred to, but perhaps “Amendment” is just more sloppiness for “Act”.  How can a policy make it through review like this?  But the zinger is the idea of the “additional encouragement” that universities should “seek ownership” of IP from all sponsored research.  Oh wow.  How does Bayh-Dole, in restricting federal agency claims on ownership of inventions as a deliverable, lead to encouraging universities to try to own other sponsored work?  It may well be that this is a spot-on statement:  administrators, having got the money bug from their success in taking ownership of subject inventions via a faux version of Bayh-Dole, used the apparent endorsement of federal policy and law to argue that they were the right place for all IP they could take.  Here, of course, the idea that is to be set up is that the university claims everything, because, in part, it has a federal mandate, or at least “encouragement” to do it.

Therefore, Auburn University Montgomery has enacted this Intellectual Property Policy to provide the incentives and protection necessary to encourage the discovery of new knowledge and expedite its transfer to the public benefit, while generating revenue to support the University and the public investment in its research endeavors.

And now the thesis statement, the “be it resolved” after the whereases, such as they are.  An IP policy, but with a twist.  Now the Policy is set up to “encourage the discovery of new knowledge.”  No, that’s not right.  Research is something folks do at universities anyway.  The Policy does not encourage discovery of new knowledge.  Not hardly.  Untrue.  Ah, but go on–“expedite its transfer to the public benefit.”  The construction with “and” makes “encourage” operate across both objectives–it is these, combined, that is to be Policy-encouraged.

Consider the choice of words–“expedite its transfer to the public benefit.”  The transfer of knowledge is done by instruction, publication, and the like.  That is a teaching mission, and technology transfer is a branch of teaching, not research.  That one teaches those other than students is a form of public service, or, here, “outreach”.  It has always been strange that the IP policy of a university gets conflated with its technology transfer activities.  If there is any teaching to do, a university policy ought to recognize the role of faculty as the ones to be doing it.  But here, it is all abstract, as the transfer is not to anyone in particular–not companies, say, if one wanted to take up the “commercialization” theme introduced previously–but rather “to the public benefit.”  What an odd construction.  Does it mean that the transfer is for the public?  Does that place the transfer in contrast to transfers for private benefit?   This is one of those places where a reader might say, “it doesn’t matter what the policy means here–it is just a statement that the transfer is supposed to be good, not bad, and that somehow the Policy sees a risk that transfers might be done that are bad, and this is the place to draw a line in the sand and say ‘no more!'”

We must linger on the last clause of this sentence:

while generating revenue to support the University and the public investment in its research endeavors.

The Policy not only aims to combine discovery and transfer and make it good, but stipulates a condition on all of this–to “generate revenue”.  That is, the purpose of the policy is to make people pay to gain access to discoveries, when the university can see a way to get them to pay.  IP sounds like as good a way as any, so the university will own whatever it can get. That’s the essence of the policy statement, everything else boiled off.   It is not at all clear what the “public investment” is–does this mean state support?  Federal grants?  How does the revenue generated “support” public investment?  It is not at all clear.  One might think “provide a return on public investment in the form of financial benefit to the university” or perhaps “offset costs that the public might otherwise have to pay to support the university” which in practical terms means “help justify state cuts to the university’s budget.”  After all, if the university can make filthy lucre from licensing IP, then the state can turn its attention to funding other things that aren’t able to take care of themselves.  Somewhere in this mess of aspirations there must be an intention that could be teased out, but everything I see suggests the Policy is up to no good, but doesn’t want to come out and say what it does intend.

Skipping past the 7 objectives of the Policy, we reach the fundamental statement, which now should come as no big surprise, though even fifty years ago it would have been eyebrow-raising:

It is the policy of Auburn University at Montgomery that all inventions and associated materials which are conceived or reduced to practice by inventors during their employment or related professional responsibilities at Auburn University at Montgomery or from work carried out at University expense or with use of University resources shall be the property of Auburn University at Montgomery.

I won’t belabor the obvious.  But here are some points to consider for this sort of claim.  First, this is just a policy statement.  It sets out a mandate for administrators.  They are to go get stuff and own it.  The policy statement does not in fact change the disposition of ownership–that happens by assignment–a written instrument signed by the inventor or author.  For that, further work has to be done, and has to be done carefully.  Second, what to make of “all inventions and associated materials”.  It is the inventions alone that are “conceived or reduced to practice” not the “associated materials”.  How expansive is this claim?  Does it embrace documents as well as “materials”?  Does it extend to copyrights?

Third, we have the old bugaboo of “conceived or reduced to practice.”  It’s that little “or” rather than “and” that makes a lot of mischief.  The “or” construction comes from Bayh-Dole’s definition of a subject invention.  There, the definition is “conceived or actually reduced to practice” and the point is to define the scope of interest in the federal contracting for inventions.  An invention is “made” when it is both conceived and reduced to practice.  Then there is an invention.

The MPEP is good to read here.  Conception is a term of art–an invention is held in the mind, of the complete and operative invention, and recognized as an invention by the inventor–that, sort of, is conception.  Reduction to practice means actually building or practicing the invention so that it functions across all its parts for its intended purpose–that’s actual reduction to practice; or, constructively, the invention is described in detail so that one with ordinary skill in the art might practice it without undue effort, as in a patent application.   Filing a patent application can serve, then, for both documenting conception and reduction to practice.

For Bayh-Dole, an invention becomes subject when it is made and at least one part of being made has come about within the “planned and committed” activities of a federal funding agreement.  It doesn’t mean that some ideas were had, without conception of an invention, and it doesn’t mean that someone funded by a grant to work in the same area also took time to construct something inventive, so long as the work wasn’t charged to the grant or distract from the grant. An invention is not a patentable invention until it is both conceived and reduced to practice–that is, “made”.   An invention is “subject” if either its head or its tail involves federal support, but as a subject invention, it is only then subject to the standard patent rights clause–that is subject to restrictions on the claims that the government can make on it!

In the Policy statement, “conceived or reduced to practice” reaches out to claim (perhaps this is “outreach”!) stuff that may have been made in part outside of university work.  That is, the Policy claims what Bayh-Dole intends to restrict claims to.  The Policy is working just the opposite of Bayh-Dole for government rights, just here the government is state, not federal.  Call it an Anti-Bayh-Dole policy that takes advantage of the “facilitation” of federal Bayh-Dole policy.

The claim is expansive in other ways.  Where Bayh-Dole restricts its interest to contract deliverables–the “planned and committed activities” as described in some detail at 37 CFR 401.1–here the Policy goes out of its way to include “during their employment” and “or related professional responsibilities.”  Wow!  “During” is simply a time word.  A better choice might be “in the course of”–meaning as a result of what they are employed to do for the employer.  But that isn’t what the Policy appears to be intending–it intends to claim stuff even if it is not a matter of employment, as becomes more clear with the “or related professional responsibilities”.  If these responsibilities are not during employment, just what are they, and what is the nature of the relationship, and what further restriction is represented by “professional” and just to whom are the “responsibilities” owed?  Surely not the university, or that would be employment.  Murk on murk.

There is more, of course, in the form of additional qualifications of the claim:  “work carried out at University expense or with the use of University resources.”  Just what are those university “resources”?  Does that include an invention made with books checked out from the library?  How about while sitting in one’s office after a hard day of lecturing?  How much “use” is enough to trigger a claim of ownership, rather than, say, reimbursement, or a shop right?  The Policy doesn’t say.  Thus, while it is clear that the purpose of the policy is to assert a claim of ownership to a bunch of stuff, there is little to indicate just what is intended.  What is meant by “employment”?  Is it what the university assigns and directs?  Or is it just anything a faculty member might do, so long as his or her university title is involved?  And if the latter, who gets to decide when a faculty member uses his or her university title or not?  That is, if the faculty member gets to decide, then the Policy amounts to one cautioning faculty not to use their titles for stuff they want to keep to themselves, or give to others, or dedicate to the pubic domain, because if they use their title, so that it appears the invention comes within those “other professional responsibilities,” why then the university intends to own the invention, and the faculty member is not a liberty to teach the invention to others, or even to practice the invention outside the university, but for an administrator’s permission, or better, paying for a commercialization license.

Now in a for-profit company setting, replete with competitive worries, trade secret and non-compete covenants, where the employer indeed does assign and control the work of the employees, who are working for the benefit of the company and know it, one might have a requirement to assign inventions to, with a wide scope relating to the employer’s business, business information, directions for new business, use of equipment, supplies, and facilities, and when done for the employer.  But for university faculty, all of this is out the door–it’s just not there.  Faculty don’t have non-competes for their expertise, nor do they agree that their scholarship is really, secretly, the university’s trade secrets.  All one has got is the problem of IP, and in particular, ownership of inventions, without any of the controls that a company would bring to bear on the situation.  Universities don’t control faculty creative work unless there’s an express agreement commissioning that work.  That’s not an oversight–it’s a feature.  It’s the whole point of independent faculty studying what they want to study, publishing what is worth announcing, and incorporating into their instruction what they judge to be relevant.   In such a context, it is difficult, if not impossible, to construct a policy statement requiring ownership of faculty work, though of course it has been done, and made to stick.   It’s easy to see a policy that requires assignment when the university has accepted funding that requires that assignment.  It is easy to see a policy that requires assignment when the university has commissioned work and bargained with additional consideration for assignment.   These make perfect sense.  It is even to see a claim of ownership where a university pours its own money into a project with an understanding that in doing so, it expects to own the result.  Fine.  But these are particular situations.

The Policy here states a general claim and ignores the particulars.  That’s administrative convenience, no doubt, to claim everything and release what can be clawed back, and in some law school course budding attorneys must learn that this is the prudent way of the world, to take advantage when you can get it, especially when you are clueless and the future is unknown, and make the other side sweat out your cleverness.  In the general case, the Policy says, “we take inventions of all sorts” and thereby administrators come to control creative work–scholarship–of the faculty, so that any instruction in new discoveries is undermined by the expectation that companies will have to pay to practice what has been discovered, and everyone else won’t get permission at all until the companies have been tested for some time for their willingness to pay.  I suppose if one felt that this was the only path to money in one’s academic life, and the university was willing to take it on, and it was more important that someone was trying to make money than that others were using what one had learned, then I suppose this Policy would look like a perk not a pest.  Otherwise, it sets up a clear claim with an ambiguous scope and challenges inventors to resist it, reserving (if one reads on) the decision on what to claim to the university administration, even though the policy, to the extent there’s a contract buried in it, ought to be interpreted against the drafting party.  There is nothing that requires the university to claim ownership generally.  Certainly nothing that holds up in the paragraph leading up to the statement of the claim.

All this leaves me with the feeling that here is a university IP policy based on nothing rational, sloppy in its execution but sloppier yet in its conception.  There is no obligation set forth why the university must own–not even a statement that it is equitable that the university own because it has bargained for ownership.   There is no public purpose laid out–just aspirations and vague notions of money-making from a “protection” racket.  It is just an impulse to power over others, to get their work, so as to try to make money.   I would be shocked if the faculty had rallied for this policy or had a chance to vote on it.  Typically, the claim that Bayh-Dole gives the university ownership is enough to knock out most of the dissent that might otherwise arise.

After Stanford v Roche, one might think that universities would revisit these sorts of statements–not to adjust the text a bit, but rather to reconsider the line of reasoning–or non-reasoning–that is left once the claim of a federal mandate is gone.  Back in the 1930s or so, there was a whole lot more discussion of this topic, with better reasoning, which looking back on it now, sounds more modern than what we have to deal with now.

It might be that folks want to cut the smaller schools some slack, that their policy statements can be a little loopy because they aren’t the big schools with lots of sophisticated folks to do their drafting.  But the big school policies are a mess, too.  And the smaller schools have a lot more prospects for writing an clear, direct, meaningful policy statement.  It doesn’t have to be sloppy, confused, and inapt.   But there it is.

As far as I can tell, the best, most decent IP policy in an American university is at CMU.  If you know of others, please let me know.

This entry was posted in Bayh-Dole, Policy. Bookmark the permalink.