Archie Palmer has a helpful discussion on the treatment of invention ownership in the 147 universities with formalized patent policies, as of 1962. Palmer’s work is important, because for thirty years, Palmer was Archie Appleseed of university patent policies. He collected policies, summarized their properties, reprinted them in compendia, and universities then considered his advice, picked through published policies, and made their own in the image of those that seemed best suited to their purposes. The patent policies we have at universities today owe a great deal to Palmer’s efforts to bring good sense and a mirror of practice to the discussion of how inventions made at universities might be managed.
Here I pull some text from his introductory remarks. His observations are worth quoting in blocks, because he does a great job getting at the key elements. There’s nothing like having seen a lot of patent policies to guide one’s descriptions. It becomes more an exercise in natural history than theorizing or schematizing the unknown from the first principles that might pop into one’s head.
First, Palmer’s account of invention policies makes a general statement that recognizes that folks at universities do work on their own time and initiative, even while using institutional resources, and any inventions are theirs to deal with:
In order to provide incentive and encouragement to their faculty members and other employees in pursuing their personal research interests, most educational institutions place little or no restriction on the disposition of discoveries and inventions resulting from research conducted on an individual’s own time and at his own expense, even though institutional facilities and equipment may have been used in their development. Such discoveries and inventions are considered to be the exclusive property of the inventor and he retains the full patent rights and complete freedom to make whatever disposition of them he deems proper.
The policies address consulting services offered by faculty in with personal work–clearly such work is not within official duties:
Certain policies also include provision for consulting services by faculty members, especially when such services involve the use of the facilities of the institution. Ordinarily, reasonable use of institutional facilities by faculty members is permitted both for personal research and for outside consulting services for industry. Certain institutions require compensation or repayment of unusual expenses incurred in the performance of the research.
There is no great gulf between personal work and that work on behalf of industry, so long as “unusual expenses” are dealt with and one attends to one’s “official duties.” Repayment of expenses or compensation for use is an appropriate way to deal with use of resources that are out of the ordinary. There’s no need to demand ownership of all inventions. There is not any reason to “immoralize” faculty service to industry via such consulting. Doing that is to construe agricultural extension in the public land grant institutions–helping farmers with their farming–as some sort of pact with the devil.
No, faculty use of resources in consulting is like use of resources to write books, for which it is also reasonable to expect faculty to receive compensation. If folks want to enhance a public service innovation environment, then faculty consulting with incidental or ordinary use of resources, and with arrangements for unusual expenses, ought to be simple and carry no institutional threats of ownership of resulting inventions. The current rage for present assignments is, in essence, a immoralizing attack on faculty public service.
Then, Palmer’s account of typical invention policy turns to “official” duties–stuff that is assigned, stuff that is part of regular work, where there are stated objectives and reasons to review progress. This is a narrow bit of what faculty work on, and is the stuff the institution is paying them to do for the institution:
Institutions having formalized research and patent policies usually recognize, by explicit reference or by implication in their formal policy statements, that the entire right, title and interest in and to a patentable discovery or invention which is not related to the individual’s official teaching, research or administrative responsibilities belongs to the inventor and accordingly waive all claim to or equity in the discovery or invention and in any patents that may issue thereon. Similarly, at institutions which, in the absence of formalized policies, observe generally accepted practice, the ownership of a discovery or invention resulting from personal or individual research rests exclusively with the inventor.
For the stuff that the institution pays to support–the official or regular duties stuff, stuff with deliverables to the institution–things are subject to a review step to ascertain the circumstances and arrangements. This step often was handled by a patent committee, which it would appear would include faculty. In essence, this formed a kind of peer review for ownership determinations. That makes a lot of sense, because then it is an action by representatives of the faculty with regard to the disposition of faculty-led work done on behalf of the institution, including then on behalf of other faculty.
Products of academic or institutionally sponsored research conducted by faculty members and other employees as a regular part of their teaching and research responsibilities, especially when patentable, require specific policy determination. When the discovery or invention is directly related to the official duties and responsibilities of the inventor, it is usually the practice to require assignment of title to the institution or its designated agent, with appropriate recognition of the equities of the inventor.
The “equities of the inventor” have to do with the nature of the institutional support relative to the creativity of the inventor, as well as the nature of the duties of the inventor relative to the expectations the institution reasonably might have of an invention being made. This bears some resemblance to the discussion in German employee inventor law regarding a determination of the royalty that should be shared with an inventive employee, based on the position of that employee in the company hierarchy–the higher the standing, the lower the expectation for shared royalties.
For inventions that the institution claims from official duties there is an obligation to file a patent application or waive the rights. In some policies, the point at which assignment is required is when a patent application has been prepared. That is indeed a good point, since it is at that point that the invention is clearly delineated and the inventorship of each potential contributor can be ascertained from an examination of the claims. If the university is not going to pay for the preparation of a patent application, there is no point in demanding the inventors execute assignment documents. Makes a lot of sense and keeps the administrative overhead down:
In such cases, the institution bears the costs of obtaining the patent and assumes responsibility for its exploitation and protection, either directly or through an outside organization or patent management agent. Provision is also ordinarily made for the patent rights to revert to the inventor if the institution or its designated agent does not file an application for patent within a reasonable time.
After some bits about the importance of sponsored research and its growth, Palmer turns to how university patent policies deal with inventions made in sponsored projects. These inventions are handled separately from “official duties” for the university. The contract controls invention disposition. The purpose of policy is to establish protocols so that university obligations reach to the folks who might do the inventing. This, by the way, is just what the (f)(2) written agreement in the standard patent rights clause authorized by Bayh-Dole is all about. There, rather than requiring that the university get assignment of all subject inventions, the standard patent rights clause instead requires the university to have potential inventors establish a relationship mediated by the funding agreement with the government for their special performance of inventor-specific actions.
When such externally sponsored research is conducted under contract, any patentable discovery or invention growing out of the research is subject to the terms of the contract. As the sponsor of the research project usually executes the contract with the institution, rather than the individual research worker, arrangements must be made by the institution for compliance with the terms of the contract in order that it may fulfill its contractual obligations. These arrangements may be, and ordinarily are, included in the institution’s research policy or may be covered by a collateral patent waiver agreement or employment contract with the research workers engaged on the project.
This is good stuff. The research contract controls. The institution has to pass obligations along to workers involved. One can flow these obligations down by policy, by a “collateral patent waiver agreement” or an employment contract. Faculty, unless they are being hired expressly for work under the sponsored project, would not sign a new employment agreement. Their involvement in a sponsored project would also not then be part of their “official duties” and if the sponsor is paying the full cost (direct and indirect) of the work, the university is not commissioning the work. In this account, sponsored research is generally not regular or official duties for faculty, and also is not personal work. The contract controls and the burden of policy is to find ways to translate that control from institutional obligation to worker obligation. Different pathways for different workers. Again, it makes a lot of sense.
The policies make distinctions, then, between “official duties” and personal research; between inventions that the institution claims after review and those it waives though it could claim; and further distinguish work done under contract, and use protocols to confirm worker obligations consistent with conditions under which a worker joins the project. A simple, practical division of the theme.
Patent policies in today’s modern world of progress and enlightenment, by contrast, tend to conflate “scope of employment” with “anything you do while employed.” The conflation creates a host of problems by claiming too much, without sufficient review, and without respect for the differing conditions under which people participate in a given activity within the university. The actual situation remains largely as it was in 1962, but the policies are murkier, sloppier, more grasping, less respectful. All that makes for administrative muddle, which of course creates more work for administrators and puts in greater demand their expertise in seeing through the complexity of their own handiwork.
Palmer considers, then, the protocols of review for the bit of university claim that follows “official duties” that entail some sort of direct institutional support:
The appropriate authority, whether a designated individual, committee, board or affiliated organization, responsible for the administration of the policy should be so selected that he or it will function judicially and impartially in the determination of equities. Provision should also be made for appeal from the decision of this administrative authority in the event of disagreement. In some instances this may involve recourse to outside arbitration.
This is an important point. The administration of policy, and especially ownership determinations, should be impartial. That means, outside the control of the organization that seeks to commercialize inventions. Too often, those organizations, as they are delegated the power to make decisions, cannot help themselves and fear that any invention they do not claim will become the “big hit”. That’s probably a fear that is close to the mark, to the extent that a patent administration office that seeks to accumulate inventions is where opportunity goes to die, so by a kind of unnatural selection, the inventions that do become successful are more likely *not* to be the ones claimed by self-interested administrators.
One might then distinguish multiple parts of a university invention policy. For this, one divides the work into three sections: personal work, including consulting, which may use resources, and if there’s extra use or expense, then special arrangements for payment. Second, official duties, which are those assigned tasks undertaken at institutional expense and for its benefit. For staff hired to support research, these duties may be all they have. For faculty, most all of their inventive work may well fall outside official duties. A determination here involves a review of circumstances and an impartial decision with right of appeal. If the university isn’t going to file a patent application, then it waives its interest. Third, in sponsored work, the contract controls, and the burden of policy is to frame protocols to inform workers of their obligations, and to secure agreement from them according to the nature of their involvement in the work. This may be different for faculty and collaborators than it is for workers hired expressly for the work contemplated by the contract.
From there, one can get into how to go about managing inventions, such as what and when to report inventions, how to set up an impartial process for determination of university interest in inventions made within “official duties” and when inventions are claimed by the university, whether to use management agents. There are also reasons to address licensing practices, such as when to dedicate inventions to the public, or create standards or commons, and when to deal with commercialization, and if commercialization how to manage those relationships to evidence broad university interests rather than purely financial or defensive ones.
A key outcome of this pattern of analysis is that consulting inventions are entirely out of the reach of institutional ownership claims, and inventions made in sponsored research come within those claims only when the university is required to do so by the contract it has signed–generally with the concurrence of the faculty principal investigator(s). As is well known to most readers of Research Enterprise, federal funding agreements do not require university ownership, and thus inventions made with federal support follow the requirements of section (f) with regard to the university’s ownership claims: namely, that it makes none, but if an inventor desires the university to own, then the university can make a determination of whether it will do so consistent with the determination it would make for an invention offered for management as a personal invention, or following a determination of ownership interest in an invention made under official duties, whether the university will indeed file a patent application.
Does it not seem rather possible to write a simple policy that gets at the main elements without a lot of fuss? Palmer recommends the attempt:
The procedures should be simple and definitive, yet comprehensive and subject to easy and effective administration. Otherwise it is inevitable that misunderstanding, confusion and dissatisfaction will arise.
Are we there yet?