Restoring voluntary assignment for university inventors is the first step in reconditioning university invention management–and putting that management on a road of development consistent with university mores and roles. Voluntary assignment can be accomplished a number of ways. I will outline a few here.
- correct interpretation of policy–often policies are drafted with a narrow scope on claims but that scope has been expanded by administrative interpretation
- change policy–often the change does not have to involve dramatic redrafting
- change acceptance practice in the IP office
- implement (f)(2) properly for subject inventions
- change state law (for public universities)
We have looked at making correct interpretations of policy, using the University of Iowa’s patent policy as an example. Just read the policy carefully and–hey–it’s actually a voluntary assignment policy, cloaked in administrative junk verbiage. While reading carefully to cut through the bombast and goofiness does work, it requires administrators capable and willing to do the same. Much better is to revise the policy to make clear the voluntary nature of assignment of inventions.
Consider how such revisions work with the University of Iowa policy. Here are the operative sentences again:
Through its designee, the University of Iowa Research Foundation (UIRF), the University will assume ownership of patents on qualifying inventions made by its employees and appointees. In a limited number of situations, the University, through its designee, will assume ownership of patents on qualifying inventions made by students and institutional visitors.
There are number of ways to go about revising this statement to make clear the voluntary foundation of the policy.
Change the Verbs
One direction changes the verbs. And doing so requires other changes in the apparatus. Here’s the start:
Through its designee, the University of Iowa Research Foundation (UIRF), the University
will assumeis authorized to accept ownership of patents on qualifying inventions made by its employees and appointees. In a limited number of situations, the University, through its designee, will assumeis authorized to accept ownership of patents on qualifying inventions made by students and institutional visitors.
The change here alters the function of “qualifying invention.” Previously, a qualifying invention was one that the inventor was obligated to assign to the university. Despite all the wording and apparatus, that turned out to be inventions that inventors expressly agreed to assign–commissioned work, in regard to special conditions on use of certain designated resources, or voluntarily. With the changes, “qualifying invention” means an invention that policy permits the university to accept. Now the policy reads, if the invention does not have some connection to the university, then university officials are not authorized to accept ownership of it.
Other changes, then, need to be made throughout the policy. Illustration:
On behalf of the University, the UIRF
shall assume ownership ofwill manage patents accepted by the University for management. to qualifying inventions.In order for the UIRF to assume ownership, inventors who have agreed to assign qualifying inventions to the University or desire the University to manage their inventions subject to this policyshall assign to the UIRF their entire right in the invention and shall provide reasonable assistance to the UIRF in obtaining patent protection and in licensing the patent rights to others. In the case of qualifying inventions arising from federal research support, this assertion of ownership rights follows from federal law,inventors may petition the federal agency that funded the research to retain personal ownership of their subject inventions, may assign ownership of their subject inventions as requested to the federal government, or may choose to assign their subject inventions to UIRF. In other contexts, the University’s right to require assignment from its employees or appointees will be understood as a condition of employment or appointmentestablished in a written agreement. If the requirement to assign inventions is a condition of employment, the requirement will be made clear in the job description. No employee not expressly hired to invent will be required to assign inventions to the University as a condition of employment. Similarly, the limited right of the University to claim ownership of patents in inventions made with the significant use of University resources will be made clear in a written agreement that establishes the conditions under which such resources are made available by the University. Such conditions will be imposed on the use of University resources only when doing so recognizes the University’s equitable interest in the results of the activities that make use of the University’s resources. by students will be understood as a condition of enrollment, whereas the limited right of the University to claim ownership of patents to inventions made by institutional visitors will be understood as a condition of their access to institutional resources. Institutional visitors must acknowledge in writing their awareness of this policy before making use of institutional resources.
Now we have taken care of the obligation to assign, and limited the power of administrators to require assignment of inventions as a requirement of employment generally or by declaring the use of any resource “significant.”
We then have to delete a few statements, such as this one:
No inventor of a qualifying invention has the authority to assign, license, or otherwise dispose of a qualifying invention except to the University or its designee pursuant to this policy.
The statement was aimed at claiming the university could prevent individuals from acting in a private capacity to dispose of their personal property. The problem here is that it is nonsense. The policy covers personnel in their capacity to act on behalf of the university. It cannot reach to their personal lives and property, as if it were a law of the state–and if it did try to make that reach, it would trigger eminent domain issues. Either the policy manages the affairs of the university–delegation of authority, establishment of procedure, statement of purpose–or it forms a contract with individuals, or perhaps both. But it doesn’t have the power to tell people what they can or can’t do with their own property. For all that, there’s federal patent law–35 USC 261–that deals with the problems of multiple, conflicting assignments.
Wizened university folks now don’t bother with promises. They would find a way to insert a “hereby assigns” in whatever document or policy statement that deals with assignments, expecting that such a “future assignment” will execute automatically when an invention meets the stated conditions. Perhaps. But then there’s 35 USC 261 and also the problem of making the stated conditions sufficiently clear that any reasonable person can see that they have been met.
Also, we need to delete the examples at the end of the policy. Bad stuff there. Much better to focus on managing the scope of work for which invention ownership is promised to the university or to another entity. The best way to do that is to have clear written agreements. It’s not that difficult. A patent policy might then reasonably authorize such written agreements, set the limits on which university administrators can require such agreements, and set forth when university administrators may accept a voluntary offer to assign inventions.
What university administrators appear to want is to dispense with written agreements, with contracting, and with negotiating the terms and conditions that go with contracting. They want autocratic control, statement of rules, and when they find that it’s not easy to state the rules, they draft to “err on the side of the university” and “to put the burden of proof on the inventor” and such bureaucratic rationalizations. The result is policy statements that read as antagonistic to inventors (“inventor loathing”), assuming inventors are selfish, greedy, unreasonable, insensitive to matters of equity, and the like. No doubt some inventors are any or all of these things, but most in my experience are not, and a policy that assumes bad behavior is one based on fear, not confidence. When a university projects in policy its assumptions, it tends to induce the world that answers to those assumptions.
Change the Scope
Another approach to changing policy focuses on the the scoping involved in “qualifying invention.” Keep all the apparatus requiring assignment, but make clear how the scoping statement works.
For convenience, inventions meeting either of these criteria will be designated as “qualifying inventions.”
1. Inventions made by University employees or postdoctoral appointees in work commissioned by the University and promised in writing by such employees and appointees to be assigned to the University
in the course of their employment or appointment or in a field or discipline reasonably related to the inventor(s)’ field(s) of employment or appointment.
2. Inventions enabled by significant use of University resources when made by University employees, postdoctoral appointees, students whose inventive contribution did not arise from employment by the University, or institutional visitors not employed by the University, when promised in writing by such employees, appointees, students, or visitors as a condition of their use of such University resources. In both paragraph (a) above and paragraph (b), “employees” includes faculty members, staff members, part-time employees, and student employees.
Those revisions make clear that “may” in the list of significant uses of resources means “when there is a written arrangement with those making significant use of resources.” That is “may” authorizes university officials to set a condition of invention assignment–but it does not require officials to do so, and does not specify when such conditions arise, and does not even indicate how the conditions are communicated to the those using resources in a fashion that creates a binding promise to assign.
Redraft for Clarity
One could, of course, cut through all of the –it and replace much of the policy text with a simple statement (and shifting the focus from patents to patentable inventions) such as:
Assignment of inventions that are or may be patentable to the University or its designee, the University of Iowa Research Foundation, is voluntary unless the inventor has previously agreed in writing to assign such inventions as a special condition of employment or appointment, or subject to an agreement in writing in exchange for consideration additional to that of employment or appointment, or significant use of resources. No requirement to assign inventions will be made by the University as a generic condition of employment, appointment, or use of resources.
Tack in a royalty-sharing schedule and most of the rest of the apparatus can be placed in the agreements under which an inventor. One has a two sentence patent policy. Most of the apparatus of the present policy withers away or finds its proper place in written agreements authorized by policy. Policy serves a role of delegating authority, placing limits on the exercise of authority, and establishing procedures to memorialize the actions taken on behalf of the university by those exercising institutional authority. Nice.
The problem with changing policy is two-fold. First, it often takes five years to get anything done. As one of my favorite IP attorneys once quipped, “universities move at the speed of darkness.” Second, whenever a policy gets opened up for changes, it seems some evil beetle of opportunity sweeps in the open door to set up its own agenda for changes. Finally, faculty suffer policy change burn out and some, if not many, come to prefer their present version of administrative hell to what they imagine will be the even deeper circle to which everyone will fall if the policy is changed yet again. Insufferable is better than intolerable.
So, what to do? One can exploit the discretion available under most university patent policies to circumvent the compulsory features of the policy. Most policies do not require the university to take ownership of inventions, file patent applications, and seek to commercialize every invention. Instead, the make a general declaration of the university’s claim, and leave it to administrators whether to follow through on that claim or release it. Let’s see how that works, next.