The pernicious effect of expansive university claims on intellectual property

Here is a definition of “Intellectual Property” from a university tech transfer office web site:

“Intellectual property” encompasses all forms of creativity, such as, inventions, software, discoveries, creative or artistic works, know-how, processes and unique materials.

For example, intellectual property may be machines, devices, instruments, computer programs, circuits, biological materials, chemicals, books, videos, photographs, paintings, sculptures or songs.

Compare this with, say, the WIPO definition:

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.

Here is a definition from a web law site:

Intellectual property is a property right that can be protected under federal and state law, including copyrightable works, ideas, discoveries, and inventions. The term intellectual property relates to intangible property such as patents, trademarks, copyrights, and tradesecrets.

In the university definition we have a near random list of stuff that fails to comprehend the distinction between the forms of intellectual property–patent, copyright, trademark, and in some treatments, trade secrets–and what these forms of property may be applied to.  Instead, we get “all forms of creativity” with a list and then another list.  Of course, IP has next to nothing to do with creativity or its forms–inventions have to do with a conception and reduction to practice; works of authorship have to do with original authorship; trademarks have to do with an identifier that distinguishes goods and services in commerce; trade secrets are stuff that has economic value, is not generally known, and subject to reasonable efforts to prevent disclosure.   Now, one can say that by “all forms of creativity” one really just means statutory IP, but taken loosely for popular effect.  In saying that, however, one ends up arguing that the words on the page stand for a secret intent to mean something else, but the writer has chosen not to reveal that something else.

Not all creative work is original, or inventive, or has economic value.  Stuff that is novel may not be creative.  Stuff that is original may not be creative.  It may be work-a-day.   While there is a folk way about saying that intellectual property is just about anything we might do or make, for policy work, it is good to keep a focus on the notion of ownership–how is it that some work of creativity or whatever comes to be ownable, rather than merely possessed.  For that, one needs a theory of ownership–patent, copyright, trademark, trade secret, chattels.  An intellectual property policy at a university ought to provide guidance to the university community with regard to the delegations of authority for members of the university to act on its behalf with regard to intellectual property, and to authorize the use of university resources in those actions.  In such a policy, intellectual property needs to be restricted to what is subject to ownership claims–inventions, works of authorship, identifiers used in commerce, stuff with economic value kept secret.   Be done with the laundry lists.

Now to see how the university uses this definition of IP:

The University of Illinois owns all intellectual property (e.g. software, copyrightable works and inventions) created by any University employee in the performance of employee duties at the University, or created by anyone using any University facilities, equipment or funds, with the exception of copyrights in traditional academic works such as scholarly publications and course notes.

They just can’t help themselves and include yet another list, but notice how the use of “intellectual property” is colored by the definition.  “All intellectual property” means “all forms of creativity” including, apparently, one’s expertise, or know how.  To own know how is to assert the right to control the work of faculty in doing things.  The state, here, says that it controls faculty knowledge.  This is absurd.  Or it is totalitarian, intending that wholesome view of it as the beneficent state, seeking a holistic equity through domination.  Less dramatically, it is the typical clueless legal position of drafting to claim everything, and then releasing the bits of worthlessness that don’t matter, like “traditional academic works.”

Here is a guidance document for faculty that all but says, there are two classes of academic output–one is the worthless things faculty do in the form of publications, and the other is all forms of creativity, which the university wills to own and control and profit from.  The come-on message, apparently, is that “you should go along with this, because when (har-har) the university profits, so will you.” The claim furthermore is that all the non-traditional forms of academic output–and we are putting way to much pressure on tradition–are ones that faculty do not get to control.   It is as if some portion of the university gets frozen in time, and wrapped in an odd concept of “tradition”.   University faculty have been inventing for a hundred years or more, and debating the merits of patents for just as long.  How is that not “traditional”?   What is the use of “traditional” here other than as a label to prevent innovation in academic activity, so that when reports are conveyed by means of a deposit of data, that isn’t a publication (traditional) but’s rather a “non-traditional” form of creativity owned by the university, or so it’s claimed.  Same for software, another “new form” that apparently will never become “traditional” even after fifty years of university code-writing.  Same for “on-line” courses.  Nothing new will ever, apparently, be “traditional”.  We witness the death of academic life by bungling bureaucratic definitions that bully faculty and students alike.

The pernicious effect of defining intellectual property expansively and without regard to theories of ownership is that the claim to ownership undercuts the social standing of even the “traditional” academic forms.  The purpose of a publication is to allow others to learn and act on new knowledge.  By claiming that the faculty author may own the copyright in the expression of the publication, but the university and its administrators own the substance of what the publication teaches is to make the publication little more than an advertisement for the bureaucrat’s paywall, whether that’s patent, copyright, refusal to release, or just the threat of objecting until paid off or slapped silly.  (Note:  best way to slap ’em silly is to call up the dean, and if the dean doesn’t get it, call your legislative representatives).   If the university claims to own “know how” then it claims also to control whether faculty can teach what they know, even when there is no actual basis for a university ownership position–no patent, for instance.  Know how does not even have to be directed at something creative, or inventive, or patentable, or patented.   The claim of general university ownership of an expansive definition of “intellectual property” destroys the public purpose of academic publication. It is no wonder that companies advise their engineers and scientists not to read university publications in such an environment.  It just sets up liability flags for the company–willful infringement, for instance.

Returning to this most malicious statement of ownership, notice also

in the performance of employee duties at the University

Here is added restrictions:  what are “employee duties”? “does “at the University” really refer to location?  It would appear such duties are assigned, duties to the employer, not “things that an employee does while also doing duties”.  Thus, if an employee is not assigned to invent, to solve some problem, how is futzing around with stuff a “duty”?  Even if one is using grant funds to explore a phenomenon, making an inventive discovery may well lie outside the “duties” of the grant.  37 CFR 401.1 is clear about this kind of thing, in the context of federal grants:

To the extent that a non-government sponsor established a project which, although closely related, falls outside the planned and committed activities of a government-funded project and does not diminish or distract from the performance of such activities, inventions made in performance of the non-government sponsored project would not be subject to the conditions of these regulations. An example of such related but separate projects would be a government sponsored project having research objectives to expand scientific understanding in a field and a closely related industry sponsored project having as its objectives the application of such new knowledge to develop usable new technology. The time relationship in conducting the two projects and the use of new fundamental knowledge from one in the performance of the other are not important determinants since most inventions rest on a knowledge base built up by numerous independent research efforts extending over many years.

There is a clear distinction between the planned and committed activities, which might be thought of as “duties” under the grant, and inventive work that takes place during the grant, and is closely related to the grant, but was never a deliverable under the grant.  In a like manner, if one aims to restrict a claim of ownership in faculty work to “duties” then what are the stated deliverables for that work?  For most faculty creative work, in all its forms, there are no such stated deliverables.  The creative work is not “duties”.  Clear as day.  Yet the guidance reads as if policy claims everything and this is just so very normal.   There’s a problem here.

The further restriction to inventions made “at the University” suggests that inventions made (conceived and reduced to practice) off campus are not subject to the university’s claim, just as inventions made outside of “duties” with actual stated deliverables to the university are also not subject to a claim.   I would expect, channeling greed culture and bureaucratic ineptitude for a moment, that the intention of “at the University” is a poorly chosen proxy for “in the course and scope of one’s appointment at the University” but there’s nothing really to support this reading.  It appears, plain enough, to restrict ownership claims to stuff done on campus–that is, both conceived on campus and reduced to practice on campus.  Stuff in the shower at home, or while bicycling–not within scope.

Now we get to the really rich stuff:

created by anyone using any University facilities, equipment or funds

Yes, that’s right, the policy claims ownership of stuff even by non-employees if they were using facilities, equipment or funds (but apparently not other things, such as supplies, information, or expertise).  This is most odd.  Anyone could be a visitor, working in the library or a campus coffee shop.  Anyone could be a collaborator who visits a university lab and points out an advancey-like thing.  Anyone could be a student who uses a photocopy machine.  What facilities are meant?  What equipment?   What funds?  Used in what ways?  There is no way that the policy has a contractual claim for assignment on folks just because they fit this “anyone” definition.  It is, in its way, bombast.

This guidance for faculty mishandles ownership in other ways.  The assertion is made that the university “owns all intellectual property” but does not seem to get the idea that this may be a goal, but it is not the starting point.  Under federal law, authorized by the Constitution, inventors and authors own their inventions and writings.  That’s the starting point for ownership.  But the guidance ignores all this, and goes back to lazy generalizations, starting with a choice half-quote:

An invention is “anything under the sun” made by man, as long as it is new and useful.

As Christopher Beauchamp points out in “The Pure Thoughts of Judge Hand: A Historical Note on the Patenting of Nature,” the full quote is “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.” Or consider this:

Inventorship does not equal ownership. Almost always, organizations own the inventions developed by their employees.  University of Illinois patents are owned by the Board of Trustees of the University of Illinois.

What gets left out is that an invention, to be patentable, has to meet other conditions, and it is these other conditions (including, hey, “non-obviousness”) that give rise to ownership, and it is ownership that is the burden of the guidance document here.  The guidance, though, misses this important distinction, argues that inventions can be most anything, and they–the inventions–are owned by the employers like the university, quite apart from whether there is anything to own–that is, quite apart from whether the invention is patentable. The guidance claims ownership of both the ownable and the unownable. In this it is a brutish assertion of power draped in pastels of bureaucratic prose.

Compare with the Supreme Court in Stanford v Roche:

Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not….

Our precedents confirm the general rule that rights in an invention belong to the inventor.

Inventorship very much equals ownership. It is the cornerstone of federal law.  An invention is “owned” for the purpose of the right to patent the invention. That is how Inventors come to have, by federal power, the “exclusive right to their … Discoveries…”

The guidance is plain wrong, and it is deceptively wrong not just clumsily wrong. The aim of the guidance is to make it appear that the university owns a lot of stuff outright, but for a bit of stuff that isn’t worth anything and can be undermined with an expansive, unjustified, and bungling definition. The problem for the policy, in a very practical way, is how it comes about that a university dedicated to independent scholarship, academic freedom, and open instruction can come to claim ownership of pretty much everything that someone might wish to act upon, having received instruction, or read a report, or downloaded data. That problem is not solved by asserting that “almost always” organizations own employee inventions. The assertion is suspect from a lot of directions.  Certainly employment alone is no basis for a change in title. Supreme Court, again:

In accordance with these principles, we have recognized that unless there is an agreement to the contrary, an employer does not have rights in an invention “which is the original conception of the employee alone.”

We have rejected the idea that mere employment is sufficient to vest title to an employee’s invention in the employer.

That’s certainly the case for nearly all faculty and student inventions–they are not assigned work of the university administration. They are the outcomes of independent scholarship. A policy statement that claims ownership is not an agreement to the contrary, even if it demands that everyone agree with it. (And these policy statements have the feel of sacred text, full of lofty language, unchallengeable, to be interpreted only by administrative priests, but sadly so poorly written that the inspiring impetus could only be a minor, mischievous form of deity.) A policy statement does not enable a change in ownership, it only expresses a corporate intention and perhaps authorizes the means by which that intention is executed. For that, one has to have a process by which inventions are identified, and an instrument prepared by which the title to the invention is assigned, and for the agreement to stick, there has to be something by way of a valuable consideration for the assignment. That is, there has to be a negotiation, a meeting of the minds, offer-acceptance-consideration. That’s what a patent agreement is, and why it is distinct from an employment agreement.

Now in a company, continued employment can be made the consideration for assignment of inventions, but even here there are laws in some states, and good arguments in the rest, that an employer cannot demand all inventions as a condition of employment. See California and Washington, for instance. And oh, hey, Illinois, too:

(1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee’s rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.

The language here is general.  The practical, and important if not critical, role for a university patent policy is applying it with regard to what the scope of employment is for a faculty member, what is meant by an “employee’s own time,”  what the “business of the university” actually is, and whether the “employer’s actual or demonstrably anticipated research or development” can mean that the university claims as its own research what any faculty member thinks do in his or her own research.   Universities taking a grasping approach just claim everything, and then say that they only claim what they are allowed to claim, and then recite this sort of statute.  But that does not really get them to compliance, as they fail to state what it is that the university’s business is, what facilities, equipment, and supplies are the “employer’s” for the purpose of the policy, and just what “employment” means for university faculty in regard to intellectual property.

One can get “employment” in the general sense, that the university pays faculty members a salary, appoints them to a position, and requires them to teach courses and serve on committees.  But the “employment” for IP law is distinct.  It has to do with how the employer controls the work, the expectations of that work, and the equities involved in that work.  It is not enough for the employer to assert an intention to own everything, when the employer is a university, and the folks doing the creative stuff are faculty members.   The university clearly is *not* the employer for nearly all of what faculty do.  The university happens to employee faculty alongside these other activities, but the university does not control these other activities, and resources are provided for them without any claim on ownership of IP–but for policy stipulations that administrators are to go out and get ownership.  Again, the policy is no agreement–it is merely the stiff drink before things get ugly.

The creation of a technology licensing operation dedicated to money-making is a superficial way of defeating these laws aimed at protecting employee inventors from predatory employers.  One would think that universities would be the least place to find such predation, and yet they appear to have become the most brazen of all, claiming much more than any for-profit organization would dream of claiming.  How do they get around the law, or at least try to?  By arguing that the business of the university includes trying to make money off everything the faculty do, and that faculty don’t have any of their “own time” because their work is so intellectual it can be done in the shower, or in the car, and that all resources, because they are owned by the university are therefore “the employer’s” resources.  But universities routinely do not ask about the use of university resources in their invention disclosure forms.  This university sure doesn’t.  While they assert the claim involving resources, they don’t actually consider the facts, and simply assume things.

If one drills down and thinks about it, how does an invention actually get made?  It may be from a recognition that does not use any resources at all.  It may be reduced to practice by drafting a patent application rather than building anything.  An invention can be made without using any university resources.  Typically the use of resources will be for research antecedent to the invention, or for its later testing and development–but that’s not the same thing as resources that are used to *make* the invention.  Those resources may have set the stage for the invention–maybe, maybe not.  It may be that the problem worked on in the lab was going nowhere.  Later resources may be used to test the invention–but that happens all the time–faculty read stuff and build their own to test, even though it may be subject to a patent claim, at some point, by some organization.   There has to be some clarity about what is meant by an invention “for which no [resources] of the employer were used”.    Clearly, the university here intends to make “resources” as expansive as possible, ignoring the problems with libraries, coffee shops, email provided for general use, and the like.  There has to be a lot of limitation on resources, but the guidance document is not about to go there.  In some policies, one finds worrying about resources–excluding use of libraries, faculty offices or standard computers (in the old days, typewriters), but not mentioning electricity to charge laptops and chairs in cafeterias).

Of course, this is only a guidance document, the “Inventor’s Handbook”.  The actual policy statement is here and here–with a bunch of broken links at the tech transfer web site pointing to it.  The policy bears little resemblance to the guidance, but for expansive claims of ownership.  The primary policy claim is to the “results of research” while the guidance document starts with all forms of creativity and grabs from there.  The general rules also define intellectual property broadly–again, because legal types who are daunted by uncertainty like expansive definitions, so as not to leave anything out that they are ignorant of–so not only is “know how” included but just for fun so also is “show how”–I suppose this is intended to cover demonstration of technology, or instruction in technology.   The faculty, apparently, have to ask permission of state bureaucrats in order to teach.  How strange, to be claiming control of such things at a university!

I won’t spend time working through the painfulness of the policy statements themselves in all their splendor.  There is much to reward, and to consternate, the attentive reader.   I am sure I will have to see this all again.  However, contemplate if you will, this one requirement of the policy:

Exploitation by the University may not involve statutory protection of the intellectual property rights, such as filing for patent protection, registering the copyright, or securing plant variety certification.

I don’t really think the folks drafting this stuff are up to it.  They have learned to brandish, for good effect, but not safety, nor respect, nor control.  It is not that the stuff is too difficult, done properly, though it may well be that what the drafting folk are trying to do is indeed difficult–for it is hard to figure out how to take stuff that ought not be taken, and to make it appear that the taking is by “right” rather than by “agreement”.  That part, I agree, is difficult. It should be made impossible.  A simple policy, one that follows the 10 points for freedom to innovation, is much simpler to create, and one that even university administrators could take on, though they may be fumblers with regard to definitions, mostly ignorant of intellectual property, and can’t write consistent documents between policies and guides to save their bumbling souls.

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