Is There Any Public Interest Out There? Not at Wake Forest, Clearly

Here’s some bits from the Wake Forest University patent policy. The upshot is that the Wake Forest patent policy mandates making the most money possible from the sale of whatever administrators decide to treat as “property.”

First, the statement of purpose:

The Inventions and Patent Policy of Wake Forest University is intended to:

1.1 Encourage research and the development of ideas and inventions by rewarding the developers of inventions, assisting them in implementing their ideas, and by providing a system for the encouragement of research;

This bit is silly. Faculty at universities don’t appear to need any incentives from patenting to conduct research or have ideas or invent. (Note again how policy drafters cannot include a simple plain statement–things come in dyads and triads.) The US patent system’s stated objective is “to promote the progress of the useful arts”–where “progress” means the diffusion or spread of knowledge about how to do something useful. It might make sense for a university to confirm in policy that its inventors may participate in this federal system. But the patent policy itself is puffing someone’s ego to think that university faculty need the encouragement of patents in order to do research or invent.

1.2 Serve the public interest by providing means through which inventions and discoveries which arise in the course of the University’s research may be made available to the public through established channels of commerce; and

Here we get a statement referencing the public interest, but oddly limited to a specific means of service. The public interest is served, so the policy reads, when inventions (and now discoveries, not “ideas”) are routed to the public not through publication but “through established channels of commerce”–i.e., sold. This is an arguable proposition, at the very least. The claim is that university inventions (and/or) discoveries serve the public when the university routes those inventions and discoveries to companies so that the public has access to them via sale rather than, say, through instruction or publication. And it is not true that the public has access via publication to a discovery that the university has patented and flipped to a company. The publication becomes an advertisement, and no one can use the discovery until there’s a product for sale that uses the discovery–if that ever happens, and it is rare that it ever happens. (Only 1 in 200 inventions at the University of California, for instance). For an organization in which nothing gets out, opening a route to commercial sale might be seen as an advance. But for an organization accustomed to publishing openly and teaching openly, a policy that makes a virtue out of withholding discoveries in favor of finding ways to sell them is clearly taking a big step back from publication. To argue that doing so is in the public interest is somewhere between a deeply subtle point, a cynical laugh, and a slap in the face.

1.3 Protect the interests of the University and its employees and students with regard to inventions developed at the University.

Here we have the arguable idea that the interests of the university must be “protected” by a policy, and that the means to “protect” the interests of employees (faculty members are buried in the abstraction of “employee”) and students is to take from them all their inventions (and non-inventions) and hand these to administrators for bureaucratization, er, “commercialization.” The patent policy does nothing to “protect” the interests of faculty and students in their inventions–it is about asserting the interests of administrators, using the university as their front.

Now, the definition of “invention.” Here is the bulk of it:

“Inventions” are tangible or intangible inventions, discoveries or other innovations, whether or not patentable or reduced to practice. Inventions include “device-like” software or other “device-like” copyrightable material, that like a device, is intended and likely to result in the accomplishment of a task or in allowing the user to produce, manage, analyze, or manipulate a product, such as data text, a physical object, or more software. Device-like software or material acts as a tool or building block in the accomplishment of such a task or in the creation or management of such a product or result.

We start by defining “invention” with “invention” and then add words that are more general than the term to be defined itself–discovery, innovation. Inventions are inventions or other innovations. That is, inventions are innovations. Clear as mud. Next, inventions may be patentable or not. So true, but this is a patent policy, and patents depend on the idea of a property right, and the whole point of a university patent policy is to establish how the university will deal with a personal property right established by federal law via the Constitution in the context of a university’s value system of open publication and the international collaboration of scholars. Non-patentable inventions have no patent ownership profile. The inventions that matter for a patent policy are ones that are or may be patentable.

An invention that’s not reduced to practice is also not a patentable invention. To be patentable, an invention must evidence conception, reduction to practice, and recognition by the inventors that it entails something inventive (the new, useful, and non-obvious and proper statutory subject matter requirements). But the definition ignores such niceties.

The definition then falls into an extended account of “device-likedness” to make it clear that even expression of various forms (the copyright references; note the archaic use of “copyrightable”–these folks are pretending to know what they are writing about). If an administrator decides some discovery is “like a device” then it comes within the policy definition of “invention” even if it is not new. Software, after all, can implement well established algorithms and perform utterly obvious functions and still be “device-like” and not be inventive, innovative, or discoverish. But no matter–invention is defined to include non-invention, so why not added stuff that is “device-like” rather than stick with stuff that is or may be patentable. The definition goes on to fuss about distinguishing “device-like” from “informational,” but we are sufficiently far into the adminstrative navel at this point that there’s little value in going deeper.

Here, the policy confuses the definition of invention with the scope of policy and requirements for disclosure of inventions. This is a common mistake, a sign of inept drafting and inept understanding of patents–but a evidencing a clear desire to control everything. The control bit comes through, of course, as intended.

Now, the claim:

Inventions developed:

4.1.1 in the course of an individual’s employment or, in case of a student, in the course of his/her academic program;

The phrase “course of employment” comes from liability law. A servant is tasked with work by a master. The activities the servant undertakes to perform the work is the “course” of that work. The phrase is actually very, very narrow when applied to faculty members, for whom the university rarely assigns their research interests or activities. The most amazing thing is the parallelism of this construction applied to students–“course of academic program” has an entirely different meaning and scope, as students might perform work under the supervision of faculty, but never–or almost never–under the supervision of administrators. To claim student work (inventions, discoveries, ideas, other innovations, device-like software, tangible or intangible things) as the property of the university is a huge bit of adverse possession.

4.1.2 within or useful within the individual’s normal field of employment; or

Notice the weasel words–“field,” “normal,” “or useful within.” The scope of inventions made within one’s field of employment is utterly unlike those made in the course of employment. In the latter, one looks at the task and asks whether a given employee action that gives rise to an invention was a step chosen to accomplish the task. If so, it’s within the course of employment. Otherwise, it’s not. If inventions were liabilities, university administrators would be working to construe “course of employment” narrowly. As it is, when a university gets sued for liability arising from the actions of a university “employee,” the plaintiffs will do themselves well to look at university patent policy, where the university may well push an expansive view of “course of employment.” Can’t have it both ways–can’t claim to own a wide swath of property and also argue that someone wasn’t acting in the “course of employment” when they had a car accident on their way to get coffee for the research meeting.

The use of “field of employment” here is quite amazing. What is one’s “field of employment” as a faculty member? Is it “higher education”–one would think. Is it “physics” (if one is a physicist)? Is it “research” (if one conducts research)? In any case, you see the problem–there’s no guidance as to how to assign employment to a “field,” to a category. It might be a folkway or it might be an administrative decision. In any case, it would appear that there are multiple possible fields, and further that the fields have to do with employment, not appointment, not areas of interest.

Add a further bit of weasel–“normal.” This weasel word suggests that people can be employed “normally” and “abynormally” and it’s all employment, but the university doesn’t claim abynormal employment fields, though it does claim anything arising the “course” of abynormal employment. What makes some field of employment normal? Does this mean what someone does most of the time? What one is expected to do if they are, say, a physicist? What they are usually asked to do, when they are asked to do anything? Who can say–other than administrators asked to unlock the secrets hiding behind the words. It is always easy to write a policy that leaves interpretation for later. That’s the same as making the assertion that administrators will tell everyone what to do when they get around to deciding what they want. Nice, if you can get it. But such policies can’t form contracts because they are basically demands for future agreement–power plays, not mutually enforceable promises. It’s not a contract if one party stipulates that the other must promise to obey. That’s called slavery or apprenticeship or childhood or administrative abuse.

Finally, the kicker–the scope is not merely the “normal field” of “employment” but also anything “useful within” such field. If the invention is useful within your normal field of employment–even though the invention is outside that field–then the university claims to own it. This clause functions as a non-compete clause, with the remedy for attempts to compete (with the university’s patent program) being the confiscation of any property created. The clause here is well beyond any scope of invention that even a company might claim. Perhaps Wake Forest administrators think they have a moral right to claim more, to provide more things to interest the public by moving them from open publication to sale by companies. But moralizing doesn’t make it right, or defensible, or even legal. But here the clause sits, simple, clear, and anti-competitive.

4.1.3 with the use of University funds or University facilities,

Patent law does not recognize an employer’s ownership claim to inventions arising from an employee’s use of the employer’s resources. The employer gets a “shop right”–an implied license to make, use, and sell. A few states have laws that, under the guise of protecting the rights of employee-inventors, appear to expand the common law basis on which an employer can claim employee inventions in an employment agreement. But a policy is not necessarily part of an employment agreement.

A policy is first an administrative document that for an otherwise inarticulate corporate being states purpose, delegates authority, and establishes procedure. Workers in the organization might be expected to follow policy, but that expectation does not create an employment contract. The freedom to contract is a separate thing. Even incorporating a policy by reference into an employment contract has consequences. When the policy changes, is there new consideration for the change? Can the change be enforced on the employee without the employee’s consent? Can a university undermine its own promises regarding tenure simply by changing a policy and threatening to fire anyone who does not agree, contractually, to the change? One would think the answer is “no way.” But that’s not how it works in the special world of university patent administrators.

But all this aside, this last provision lacks any reference to employees. It is a general claim on any invention “developed” with university money or in university buildings, regardless of who invents. That’s simply not a credible position. Again, it is a claim of adverse possession, not equitable interest.

We should pause, as well, to consider “developed”–inventions get “made”–that’s the conception and reduction to practice. An invention may then get “developed”–that is, beyond the first mode by which the invention is conceived and practiced (or described, in constructive reduction to practice), the inventors (or others) may improve their design, find alternatives suited to various applications, and the like. But “develop” might also be a stand-in for “made.”

Or, it might be that “developed” takes in all the work that is undertaken that later might be attributed to the path leading to the invention–one develops, then, the expertise and environment in which the spark of invention then comes about. There is something that appears reasonable about such an idea, until one looks at all the various ways that the spark of invention shows up. Someone tasked with a laborious, inefficient, expensive procedure might realize one day a better way to do it–but the management-imposed, dull work environment hardly can be said to have “developed” the invention. The invention here is an escape.

The same situation may pertain in research settings, where a new tool or method is created to replace an old one. If the research specifies the old one, then it can hardly have “developed” the new one that makes the old obsolete. Inventive moments, other than when someone is put up to solving a problem and does, are often outside employment (what the master has tasked) and outside whatever it is one is doing at the moment–inventions may be lateral jumps or realizations unrelated to the work at hand. An invention therefore may not be “made” with anyone’s funds or facilities. Where funds are used, without a statement of work there’s no way to know whether the funds “developed” the invention, especially in the “leading up to” or “made” versions of “developed.” Where facilities are used, again, if the invention is not within the stated or expected use the facility is being put to, the invention is not “developed” with the use of the facility. It is “developed” without such use, even if one happens to be in a facility when the invention is conceived.

The claim to “developed” works primarily in the sense of “actual reduction to practice” or “further work to improve the invention or add variations or develop a new best mode of practicing the invention.” In this form, the claim reduces to: yes, you own your personal rights in the inventions you make, but if you bring them into the university and use the university’s money (pay people, buy things) or buildings (labs and shops, especially) to develop the invention, then the university strips you of your property in compensation for your exploitation of the university.

There is, then, a great deal packed into these simple statements, so clear on the surface and yet so muddy, overreaching, and contrary to public policy when one reads carefully.

are the property of the University.

Having dealt with scope, we arrive at the claim. All inventions–taken broadly to mean innovations, non-inventions, and device-like stuff–that come within any of the three enumerated areas simply “are” the “property” of the University. More unicorns and dancing hippos here. For patentable inventions title transfers only with a written instrument. Patents “have the attributes of personal property.” Ownership of patentable inventions vests with the inventors. Such inventions are not the property of the University, and no statement of policy can change that. It might be the policy is meant to establish the University’s expectation that it will own such inventions, but the policy doesn’t do that–it cuts past the formalities and makes its own law and sets out its claim.

The idea of “property” also bears attention. The policy here is not merely indicating that the property of others becomes the property of the university. Rather, the policy is claiming that whatever something might otherwise be–including non-property, public domain (those device-like things), and “ideas”–this university policy declares them to be “property.” Whatever might be property for law, the policy here charters a new class of property, existing only to serve the university’s interest. People are required to treat non-property as if it were property, just as they are required to treat non-inventions as if they are inventions, and inventions as if they are patentable inventions. That is, the policy claims that regardless of whether there’s an actual ownership position available, people must treat all these varied things as if they could be owned, and the university is the owner. In companies, this is the territory of trade secrets and non-compete covenants, covering information and ways of doing things, and the promise is not to disclose and not to use but for the company’s benefit and with its authorization.

But here, all that is buried by implication in an expansive claim of ownership of that which cannot be owned. I wonder that these folks know what they are doing. But if they found out, I expect they would be pleased at so clever a scheme of avoiding all the details that companies spend time taking care of. Clearly, a university invoking trade secret would run against academic freedom and a culture of publication; invoking non-compete would deny faculty and students the ability to practice what they have trained for, merely to give the university some advantage in what? competition for research dollars? selling off stuff treated as if it is an invention to speculative investors? It hardly smells of public spirit.

While it is totally clear that the university makes a property claim, given that the areas of claim that the policy sets out are themselves a garbled mess, it’s difficult to understand just what the university’s property claim is. Again, it appears that the policy sets out a situation for university administrators to pick whatever it is they want, point to a garbled mess of policy, and declare that whatever it is, the university has owned it all along. Resist and be disciplined, smeared, sued, fired. What we find with many of these university patent policy claims is that they can afford to be a garbled mess of incompetent drafting because they expect to be used as a basis for the assertion of university legal resources against anyone who differs in the interpretation of policy.

A number of patent policies anticipate disagreements and therefore require an arbitration procedure that controlled by university administrators. Thus, the only issue is whether other university administrators will side with the administrators who have stated a claim for the university. It’s hardly a reasonable or fair dispute resolution process. Here’s the Wake Forest version:

In cases where there is a difference of opinion on ownership of inventions, division of proceeds, or other provisions of this policy, the Committee will recommend to the President a final disposition. The President’s decision is binding on all parties.

The Committee has six faculty members (appointed by the President for “staggered” three-year terms) and seven administrators, all “ex officio” (so the administrators are there for as long as they hold their positions). Even if the faculty appointed their faculty representatives, they would still be the minority, and would serve together only for short periods. A stacked deck, designed to give the appearance of review, but still under the control of administrators, all the way to the top.

I wonder what the outcomes would be if any dispute went to a panel of knowledgeable folk independent of the university–ones who could vacate the policy itself as a garbled mess, say, or decide an interpretation based on a careful reading of the policy, quite apart from the special pleadings of administrators as to what was intended but not expressed. Most of these university patent policies would get tossed as ambiguous, overreaching, contrary to law, anti-competitive, and unconscionable. But for now that’s just one of my dreams.

Back to the policy, for the final bit. We’ve covered purpose, definition, scope, and claim. Now let’s look at what all this apparatus leads up to. The policy designates a “Patent Administrator” and sets out a series of functions for this person, including to “evaluate,” “patent,” and “market” inventions.

Inventions within the scope of this policy will be evaluated in order to determine whether they have sufficient promise to justify marketing and/or patenting.

Inventions must have “sufficient promise” to be managed. Presumably, there ought to be some cost/benefit analysis that comes along with such evaluation. But the policy makes no mention of such a thing. Evaluation could be whim. Further, note that “marketing” comes before “patenting” here, with an “and/or”–the point is, ownership may proceed directly to “marketing” without establishing any patent position, even though this is a patent policy. The patent policy is also a non-patent policy. One might think that the policy at this point exceeds its own authority. But no. Apparently its authority is as broad as any bespoke ownership of a non-patent might make it. Patent in a patent policy can be an afterthought, an option to enhance a marketing position. But wait, we filed a patent application, too!

Patent protection will be sought for inventions determined to be sufficiently promising to justify the effort and expense.

“We will patent it if we feel like it.” There’s that “promising” again. The policy doesn’t use something like “best positioned to benefit the public by the use of the patent system” and doesn’t even make a financial claim–that the promise is a financial return from the exploitation of a patent right. It’s just that the “promise” must be commensurate with the “effort and expense.” If one can’t be bothered, that’s sufficient not to file a patent–but whether a patent gets filed doesn’t have much to do with this patent policy or with the university’s claim to property, even where there isn’t any property and even when there might be a patentable invention property, but the university doesn’t care to secure that property right.

Here’s the clincher:

The Program for the sale or licensing of inventions and/or discoveries will be implemented so as to provide maximum return for the University and the inventors.

Let’s leave aside the strange introduction of “and/or discoveries” at this point–just another contribution to the garbled mess. Admittedly, “return” leaves open, as does “promise,” just what is expected as the outcome of the marketing program. It is clear, however, that the “return” comes to the university and inventors, and the implication then is that the return is shared, and “return” means royalties, money. It is also expressly clear that there is no mandate for any “return” to the public, to companies, or to industry. The university formally establishes its patent program to sell whatever it can treat as property for “maximum” financial “return.”

What “maximum” means in this context is also completely opaque. A “return” better than expenses is understandable. A 3 to 1 return would be industry standard for best practices. “Maximum” return is meaningless. What is the potential return? Would not the “maximum” return be the best potential return? But who can say if the potential is all that impressive–though by policy the “promise” must “justify” the “effort and expense.” But that would hardly be the “maximum” return.

There is another point here, even more dismaying. The policy stipulation on “maximum return” is not directed at each “invention” that is marketed. The stipulation has to do with the return “for the University and the inventors” as a group. Thus, the program could meet its mandate, apparently, by focusing all its efforts and expenses to score one big license deal and leave the rest of what’s claimed to rot. There’s no mandate to “maximize” the “promise” of each invention claimed. If the program makes money for the university, that’s good enough. If administrators don’t think the program is making enough money, not the “maximum,” then it can find a new Patent Administrator who will drive better financial bargains.

It would be hard, but for the bowdlerization, to make a clearer expression of the purpose at Wake Forest University to appropriate and sell whatever it can lay its administrative hands on, with the premise of the selling being the most it can make rather than the best outcome for the public. If there’s a “virtue of selfishness” appropriate to public institutions, then Wake Forest is among the leaders. Somehow, I expect even Ayn Rand would consider Wake Forest to be a sell out, like Peter Keating, not one to stick to self-inspired principles, such as Howard Roark.

A while back I singled out Yale for having a money-before-public interest patent policy, but Wake Forest’s is much the stronger statement of this idea. There is no provision in policy for the waiver or reassignment of inventions claimed by the university. “We are programmed to receive.” It’s an engine set up to make money from the sale of whatever is developed by faculty, students, staff, or others that university administrators decide to treat like property and price. The question then is, is this what every university patent administrator aspires to? Is there anybody out there who aspires to something different, and is willing to put it in patent policy?


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