Florida State’s garbled mess of patent guidance

[Updated with new accounts of garbledness and bad juju. This policy just keeps giving.]

Florida State University’s “Office of Commercialization” starts a guidance web site off with an enumeration of points about intellectual property. Here’s the first point:

Employee Guideline: US laws state that inventors (relevant to patent protection) or authors (relevant to copyright protection) own what they invent or create, except when they are employees, where employment policies come into play. Most universities like FSU request disclosure and can waive ownership back to the individual in certain circumstances, otherwise will ask to have it assigned to FSU in return for an active commercialization program. If successful, royalties on sales are split with the inventors or authors.

Some general observations regarding the bolded parts.

  • Federal patent law does not state that inventors own their inventions.
  • There is nothing in federal patent or copyright law about exceptions based on employment.
  • Employment policies don’t matter anyway. Written agreements with employees do.
  • Universities don’t now request disclosure of inventions; they require it. Most universities do not require comprehensive disclosure of copyright works.
  • Universities don’t “ask” for assignment; they require it and often now demand it upfront, before any review for “waiver.”
  • An “active commercialization program” is not the basis for a demand to assign, nor is it consideration for such assignment–at most universities the demand is based on employment or use of resources, not on the existence of a technology transfer program.
  • Royalties are any consideration for a patent license, not merely a share of sales; most university sharing of royalties is not based on sales, as most licensed inventions do not result in a commercial product. Universities demand “license issue” fees, milestone payments, and equity as ways to receive revenue without the sale of any product.

If you are game, let’s work through these points. Our working premise is that words matter in policy statements, that meanings–shared, common meanings–matter. When a university administration creates official documents representing the basis for intellectual property management practices, the statements it makes also should matter. Such statements are part of the institutional “offer” to inventors regarding their work. These statements should not be cleverly written to deceive, to hide, to spin, or to confuse.

By examining such policy writing, we glimpse the projected mindset of administrators toward intellectual property and their work. We can find rationalizations for what administrators have chosen to do and their vision of how things should operate. These statements also indicate the degree of care and competence that backs the intellectual property program management. Smart and sound, or lazy and loose? Let’s see.

Laws and ownership by inventors and authors

US laws state that inventors (relevant to patent protection) or authors (relevant to copyright protection) own what they invent or create . . . .

First, look at the construction. This clause tries to handle two different matters in a single statement. The grammar (without getting into substance) should be: US laws state that inventors own what they invent and authors own what they create. But instead we find an “or” between “inventors” and “authors” when it should be “and” (we are dealing with both inventors and authors, not one group or the other) and a conflation of “invent” and “create” (inventors invent and authors author–there isn’t any question whether inventors invent or create–especially when we restrict their activity to that which is “relevant to patent protection”).  The result is ambiguity. Do inventors own what they invent or create? The construction can be read only by someone who already knows what the sentence is about and can guess the meaning. Otherwise, it’s garble. But it’s garble on substance anyway, if the intended sense of the clause is that law says inventors own what they invent, because law doesn’t say that.

The start of this first sentence asserts that inventors and authors “own what they invent or create.” Indeed, the US Constitution (Article I, Section 8, Clause 8) gives Congress the authority

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Federal copyright law and patent law follow from this authority, but deploy their securing of exclusive rights in different ways. Copyright vests when a work meets the requirements of the law. A patent, however, must be applied for and the application reviewed to determine not only whether the requirements of the law have been met but also the scope of claims that properly define the extent of the patent right.

Copyright law states that the author of an original work of authorship owns copyright in that work (17 USC 201):

Copyright in a work protected under this title vests initially in the author or authors of the work.

The law speaks to title to copyright, not to the work created. Similarly, patent law doesn’t stipulate ownership of inventions, but instead identifies who may obtain a patent (35 USC 101):

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

“Obtaining a patent” is not necessarily the same thing as owning a patent and is not at all the same thing as owning an invention. One owns an invention either by trade secret–keeping the invention secret (the opposite of a patent, which publishes the invention)–or by owning the tangible embodiment of the invention (a prototype, say). Otherwise, one’s use of “ownership” is merely a shorthand for an assertion of power, as in “if you cross me I will destroy you.”

Patent law does not set out who owns an invention, and unlike copyright law, patent law does not say where “title” in a patent “vests.” One has to apply for a patent; one does not apply for a copyright. Until the patent application process is complete and a patent has issued, there is no patent to own, no invention to own. All the inventor of a patentable invention has got is the right to apply for a patent. That’s what is owned, and at FSU, anyway, that’s what university patent policy is focused on taking away.

If nothing disturbs an inventor’s right to obtain a patent, the patent will issue to the inventor. But patent law does not state that an inventor owns his (or her) invention. It’s a matter of common law, except where states have passed laws that preclude common law. Of course, we might say that the policy at this point is being “informal” and making a general point–something along the lines that the university does not own outright the inventions made by employees and so must introduce an apparatus in policy by which the university takes ownership whenever it wants ownership.

We might then revise the first bit of the FSU statement as follows:

US laws state that inventors may obtain a patent on their patentable inventions and that authors own copyright in their original works of authorship….

The general idea that appears to be carried by this first part of the sentence is that inventors and authors have rights in their inventive and authorial work until the university takes those rights away. We could then revise this first part of the sentence further:

Although federal laws reserve to inventors and authors, respectively, exclusive rights in their inventions and writings, university policy seeks to disrupt this outcome by demanding ownership whenever administrators feel an urge to require assignment to the university…

This rewrite exposes a number of suppressed elements: university policy undoes the constitutional defaults; university policy places the decision with administrators rather than with faculty or with principal investigators or with inventors; the basis for an assignment demand by the university is buried in a claim of employment rather than in a determination directed at a favorable pathway to disseminate an invention or attract investment or preclude abuse of a patent position.

We might then ask the questions that are suppressed by the FSU drafting:

a) Why should a university undo the constitutional defaults on the ownership of patents and copyrights?

b) Why should administrators be such special employees that they should decide, rather than other employees, when to undo these defaults?

c) Why should the basis for any decision–regardless who makes it–be on something as obtuse as employment (which is poorly suited to what faculty and students do, especially in an environment that is based on state subvention of personal efforts) rather than on something specific to a pathway by which an invention comes into broader use (the progress, to use the constitutional term, of the useful arts is their dissemination for use).

A sound university patent policy answers these questions. The FSU patent policy suppresses them. In their place, we get simply and plainly: the university undoes the defaults because it can, administrators control because they will, and the reasons don’t matter.

Employment

Now for the second half of the first sentence:

except when they are employees, where employment policies come into play.

More garbledness. First, “US laws” don’t offer up exceptions of the sort described. Patent law does provide for assignment of patents (35 USC 261), and copyright law provides for a transfer of copyrights (17 USC 204), but these provisions have to do with the idea that these statutory rights are a form of property, not that somehow employment supersedes federal law.

Because patent rights are a form of property, they can be transferred. And federal patent law does not prohibit (except for certain subject inventions owned by nonprofits) the freedom to contract to assign a patent. So perhaps the sentence is supposed to mean, loosely, that inventors and authors own their IP except when they have agreed otherwise. But really the thrust of the policy is not this point but a related one: university inventors and authors would own their IP except that they have agreed otherwise by becoming employed by the university.

But that’s rather different–and not a matter of what US laws “state.” So the premise of the sentence is simply wrong, or the sentence is garbled. Or both. And both.

Written agreements

Perhaps the point struggling to get out (or struggling because it can’t get out) is that university inventors and authors would own their IP except that there’s a university policy that insists that they have agreed to let university administrators take their IP away. That is, the policy asserts there is already an agreement implicit in employment. The reasoning is this:

  • You agreed to be employed by the university.
  • A condition of employment is that you comply with university policy.
  • University patent policy states that you must assign inventions to the university.
  • So you necessarily have agreed to assign inventions when you agree to be employed.

This, too, is garbled reasoning, but it works on people’s minds and university lawyers find they can use it in court by analogy to commercial employment agreements. For faculty and students and visitors and collaborators and volunteers, this reasoning is not simply flawed, it is deceitful. For these folks, for professional work other than scheduled teaching, the situation looks rather more like this:

  • You agreed to allow the university to support some of your work.
  • A condition of that support is that the university follow its written policies.
  • University patent policy applies only where there is an express agreement to assign.
  • So you will never be tricked, cornered, or forced into agreeing to assign inventions.

Either there’s a definite scope of work that involves inventing or an express agreement regarding some area of work or access to resources or funding that does not depend on one’s appointment (or other status, even employment that does not expressly involve inventing) and carries its own consideration or there’s no written agreement regarding assignment of inventions. To be clear: being paid a stipend does not mean that one is “employed.” Even if one is “employed,” in a university setting that employment requires that the university have some basis to direct, control, and approve the work. That narrows considerably the scope of “employment.” One may be employed, but not for everything one does, because the university does not assert control and approval for everything one does. This is the case, even when a university patent policy asserts a broad definition of invention and states a broad claim to ownership based on employment (or on use of resources).

A university has more policies than a patent policy that pertain to the scope of employment. There is policy on faculty appointments, for instance. There is policy on academic freedom. There is policy on research. And beyond policy, there are practices that people come to rely upon that may or may not track policy statements. If administrators only selectively enforce a policy, when they feel like it, then it’s rather not a policy and certainly not part of any contract. For instance, a university patent policy might define invention to include copyrights, but university administrators never require the disclosure of all works of authorship–otherwise every email and every note and every manuscript would have to be sent to a bureaucrat for review of ownership, and that simply doesn’t happen, even when some dork allowed to draft patent policy pops off on some broad, random, garbled definition of “invention.”

Agreeing to be an employee is not the same thing as agreeing to transfer one’s patent or copyright to an employer. For copyright law, employment brings into play “work for hire” considerations. A “work made for hire” (17 USC 101) is

a work prepared by an employee within the scope of his or her employment;

There’s a second part to the definition of work made for hire, with three conditions: the work is “specially commissioned or ordered,” the work comes within a designated categories, and the “parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” As for employment, though, there is no “except” in the law. When a work is “made for hire,” the employer is the author (or so the legal fiction goes). In such cases, the person preparing the work is not the author; the employer is the author. The issue is not so much whether a person is “an employee” but whether the work comes within the scope of the employee’s employment and therefore that the employer exercises, or has the right to exercise, authorial control over the work–as evidenced by a multi-point test for agency. An employment agreement that fails to be clear on the scope of employment sets up trouble later in determining if a work has been made within that scope.

There is no comparable concept of “invent for hire” in patent law. Instead, an employer obtains a “shop right” in inventions made by employees–a nonexclusive right to practice the invention. The idea of a “shop right” is not in federal patent law, but was articulated by the Supreme Court in a line of decisions that as a general rule an employee could not enforce a patent right against his or her employer when the invention was developed or implemented using the employer’s resources.

The idea, then, is that written agreements, including employment agreements, can require that an inventor assign away rights in inventions–that is, the right to own any patent that an inventor might obtain that’s within the scope of the employer’s interest. It’s not employment policy that comes into play–it is the freedom to contract. A policy might authorize company officials to act on behalf of the company to secure written agreements to assign rights, and might state what the scope of those agreements should be, but it is the freedom to contract that governs the transfer of ownership of rights in patents.

For copyright, there’s a twist. Since the employer is the author of works made for hire–works made within the scope of an employee’s employment–if the employer insists on requiring employees to also to assign any copyright, those copyrights must be outside the scope of employment. Now that’s an odd thing, and a reach beyond what a company has hired a person to do. If the work of authorship is something related to the company, but not what the employee was hired to do, then perhaps the requirement to assign is understandable. But the requirement to assign could also be a matter of non-competition. Or it could be simply an overreaching demand, taking because the taking is good.

For FSU and other public universities in Florida, there’s a further requirement on ownership of intellectual property, embedded in state law (Florida Statutes 1004.23):

Universities; powers; patents, copyrights, and trademarks.Any other law to the contrary notwithstanding, each state university is authorized, in its own name, to:

(1) Perform all things necessary to secure letters of patent, copyrights, and trademarks on any work products and to enforce its rights therein. The university shall consider contributions by university personnel in the development of trademarks, copyrights, and patents and shall enter into written contracts with such personnel establishing the interests of the university and such personnel in each trademark, copyright, or patent.

This is one of four sections, and I’ve added the emphasis. Later, in section (6), the university is authorized to create regulations as necessary:

Do all other acts necessary and proper for the execution of powers and duties herein conferred upon the university, including adopting regulations, as necessary, in order to administer this section.

The law requires regulations to administer the law. The law itself requires written agreements to be entered into that consider the contributions of personnel in establishing the “interests” of the university. Clearly, the regulations authorized by state law are not the written agreements. They are the part of “the acts necessary and proper” for doing what the law “confers” on the university–but specifically restricted to what is necessary “to administer” the law. So the regulations, by law, cannot be the written agreements because these are two different sets of instruments, with different statutory purposes.

The sequence provided by Florida law is this: 1) consider contributions of personnel; 2) enter into written agreements; 3) establish the university’s interest by means of such agreements. Then Florida law provides: adopt regulations as necessary to do 1), 2), and 3).

There is no power granted to the university in Florida law to simply declare inventions to be the property of the university. The authorization specifies patents, not inventions. The authorization requires first that the university consider contributions to of personnel to the development of patents. The authorization stipulates that the consideration then is to be followed by a written agreement that establishes the mutual interests of the university and personnel. Again, the university has no authority to require the transfer of patent ownership but by following the protocol established in state law.

Here, the state law has got things right–the focus is on patents, not inventions; written agreements are the proper method of transferring ownership in patents; the university is required to base any transfer of ownership on a consideration of the contribution of personnel to the development of a patent; and the transfer of ownership must be based on a written agreement–that is, something mutually negotiated. There is nothing in state law that contemplates or authorizes the university to exercise unilateral power to take ownership of patents, or to take ownership of inventions, or even to define invention more broadly than that which could be controlled by a patent.

But here’s how those written agreements show up in university policy, under “Reporting Procedures”:

The division, between the university and the inventor, of proceeds generated by the licensing or assignment of patent rights or trade secrets, shall be reflected in a written contract between the university and the inventor which shall comply with the division of proceeds schedule contained in the policy on file in the office of the Vice President for Research.

State law authorizes a written agreement after a consideration of contribution that establishes the interests of the university and inventor–not just the financial interest but all interests, including ownership interests in any patent that might be secured on the invention. But the university has it bassackwards–first, the university asserts that all inventions are university property, and the university gives itself the authority to waive property that it has first outright claimed to own, and for those inventions that the university asserts ownership, there we find a “written contract.” But this is an empty, substance-less contract: by policy the contract can only recite the royalty sharing schedule already announced in university policy. There’s no point to such a contract, as the university is already bound to follow its policy. The university offers nothing new in making such a contract, unless the rest of the policy–including the university’s claim on inventions–is not contractual. You know, “more like guidelines,” not “code.”

You might see how things work, then. The university claims to own a vast swath of inventions outright. Then, when the university decides not to waive an invention, it insists on a written contract in which the inventor agrees to the royalty sharing schedule that the university has already stipulated that it will follow. The written contract that the university requires is not the written agreement it is authorized by state law to enter into with inventors. That written agreement would establish the mutual interests in a patentable invention, based on circumstances. This written contract comes after the university already has declared it has ownership, before any review of any circumstances, and without regard to whether the invention is patentable or a work product. That written agreement is the basis on which the university would provide consideration in exchange for the assignment of title. This written contract works to confirm that an inventor is bound to work in the interest of the university’s administrators. The wording is that of threat:

All such agreements shall comport with and satisfy any preexisting commitments to outside sponsoring agencies, but the inventor shall not commit any act which would tend to defeat the university’s interest in the matter, and the university shall take any necessary step to protect such interest.

The first clause limits what the university can agree to–the university owes a greater obligation to “outside sponsoring agencies” than it does to its own faculty. The second clause places a demand on the inventor–there is no negotiating the university’s “interest in the matter.” The inventor cannot “defeat” the university’s interest, “and the university shall take any necessary step to protect such interest.” What necessary steps might those be, but attacks on the inventor–lawsuit, firing, demotion, exclusion, defamation? Rather than establishing the respective interests of the inventor and university based on contributions, the university instead demands a written contract in which the university’s interests are absolute, the commitment to the inventor is empty, and the inventor is made to acknowledge that the university can “take any necessary step to protect that interest.” Perhaps such a contract works to waive any of the inventor’s other rights under university policy, such as academic freedom. Nothing about the university’s “written contract” comply with the authorization of state law. It looks authoritative. It is drafted with legal language. It uses some of the same gestures as are found in state law. FSU even references state law as if to indicate that it is compliant. Perhaps in some strange case of adverse possession, a state university can change the law merely by openly not complying with the law for a number of years.

There’s more to the state law:

Any action taken by the university in securing or exploiting such trademarks, copyrights, or patents shall, within 30 days, be reported in writing by the president to the Department of State.

Every patent claimed by the university, every copyright, every trademark, and every written agreement with personnel regarding such matters, and every patent application filed, must by state law be reported to the Department of State. I wonder if FSU complies with this requirement of law. I would bet not, since there’s no mention of it in FSU patent policy–no university regulation that ensures compliance with the very state law that confers the power to secure patents. Oh, the sad irony.

Now let’s look at the second sentence, to see if it is any better than the first:

Most universities like FSU request disclosure and can waive ownership back to the individual in certain circumstances, otherwise will ask to have it assigned to FSU in return for an active commercialization program.

The first phrase is ambiguous–does it mean that most universities “like” (similar to) FSU request disclosure, or does it mean that FSU, “like” (following the practice of) most universities, request disclosure? Again, we start with the assumption that words matter, and here a claim is being made in policy. It’s just that the drafters of the policy don’t appear to care what the claim is.

Exchange for active commercialization

In any event, what follows in the sentence makes the first part impossible to be true. No university I know of but for FSU stipulates that the basis for demanding ownership of patents is “an active commercialization program.” Most research universities base their demand for ownership of inventions on employment and use of resources. Some base their demand based as well on any connection to the university–the “auspices” argument, that somehow the “auspices” also are a form of resource used to make inventions.

But the exchange described–assignment of patent rights in exchange for an active licensing program–was something that happened in the long ago, when university inventors made choices regarding whether they would seek a patent and if so what assistance they would need. In those long ago days, a university might state its offer and an inventor might take it up, and in such situations the consideration for the assignment were the services, resources, and sharing of royalties that the invention management program had offered.

More to the point, the exchange described is not at all what FSU patent policy sets out. What we have is garble on garble. It’s as if FSU not only can’t read or comply with state law–it cannot even read its own policy and get things consistent. But it’s worse than that, as we shall see.

There is no consideration given in policy for the obligation to disclose or assign, though the premise in state law–of written agreements–implies voluntary arrangements and one would expect these to entail offer, acceptance, and consideration. Instead, university policy states that inventions are university property if they come within the field of one’s employment or have used university support. There is no exchange. There is no agreement. There is no stated consideration. Perhaps the consideration is continued employment, payment of salary–that would be a company argument, at least. But that doesn’t address the summer months, sabbaticals, or collaborations at other universities, all of which cause problems for those trying deal with comprehensive, compulsory invention policies. If continued employment is the consideration for the obligation to assign, then any “exchange” for an “active commercialization program” is misleading. The deal is “you assign or quit before you invent,” not “you assign because you have chosen our commercialization services.”

Request disclosure

Let’s deal with the verbs next: “request” disclosure and “can waive” ownership back. Universities do not request disclosure; they require it. Even FSU policy requires disclosure (FSU-6-009(3)(a)):

An employee shall disclose all inventions which the employee may develop or discover while an employee of the university.

And again at (4)(a):

The inventor shall report to the Vice President for Research the nature of the discovery or invention, together with an outline of the project and the conditions under which it was done.

There’s not a hint of requesting in this passage. Of course, the obligation is restricted to employees, is ambiguous as to whether “while” means “at the same time as” or “in the course of,” leaves out whether the invention is or may be patentable. And “invention” is defined in FSU policy, as it is at the University of Florida, to encompass much more than what may be patentable:

An “invention” includes any discovery, invention, process, composition of matter, article of manufacture, know-how, design, model, technological development, strain, variety, culture of any organism, or portion, modification, translation, or extension of these items, and any mark used in connection with these items.

Again, a garbled, random list of attributes for an invention, tossing in trademarks just for fun at the end.

So the sentence here is simply wrong about “request.” But it’s not a one-off mistake. Down the same page, at item 3, here is what the FSU guidance says:

For certainty and recognition, employees are encouraged to fill out the appropriate form on the disclosures page.

This is strange wording. Certainty and recognition have nothing to do in FSU patent policy with the requirement to disclose. Under state law, disclosure is part of the consideration that the university, by law, must give to the contributions to a patent by personnel before entering into a written agreement to establish the interests of both the university and the personnel involved. Certainty comes about by voluntary agreement, not from disclosure. “Encouraged” also has nothing to do with the requirement to disclose. If participation in FSU’s invention management program were voluntary, “encouraged” would be an appropriate verb. Here, however, it misrepresents the policy requirement.

However, there is another way to read this guidance–as an authoritative commentary on the policy. Read this way, the guidance modifies the requirement in policy and makes disclosure voluntary, FSU does only “request” and “encourage” disclosure, but it is up to the employee whether to do so. If this is the case, then the statement overall is false, as most universities don’t run with voluntary disclosure policies, though most of them once did, and all of them ought to. Even when we try to rescue the sentence from inconsistency with its own policy statements, we end up with a falsehood.

But the accounts of disclosure don’t end here. The “disclosures page” gives more reasons:

Why Do I Need To Disclose?  The disclosure form will serve as a complete and full description of the invention to the university. Its information will aid in searching patents and the open literature in an effort to determine novelty. The completed disclosure also provides key information concerning potential applications of the technology (its utility). The disclosure and any relevant prior art discovered during the search process will then be used to assess the technology and determine patentability. In some instances a patent attorney will be engaged on behalf of the university to provide a detailed opinion on the patentability question.

Nothing in this account about the state law-mandated consideration of contribution prior to a written agreement regarding mutual interests. Instead, the reason for a disclosure is to “aid … in an effort to determine novelty.” That is, disclosure triggers a review for patentability and utility rather than for mutual interest. We might ask why the university’s interest depends on patentability rather than, say, the social value of an invention, but that would be musing after practical considerations when we are dealing with ideology. The practical issue is not whether an invention is patentable, but rather if an invention is patentable, what is an appropriate deployment of rights in the patent? The state authorization is that the university may secure patents, and to do so it must consider contributions, enter into written agreements, and create regulations as necessary to administer the securing, considering, and entering into.

But if we follow the link that heads this new discussion of the reason to disclose, we get yet a third account, on a page with the FSU official seal and the letterhead of the Office of Intellectual Property Development and Commercialization:

FSUwhy

This is beyond goofy. First, there’s nothing that disclosure does to “protect the faculty.” What danger are the faculty in from undisclosed inventions, especially given that FSU patent policy defines invention so broadly that it includes “know-how” and “portions.” Perhaps “protect the faculty” is a veiled threat that the university might otherwise seek to damage the reputations or careers of faculty if inventors don’t disclose. That would be ugly, if true. Or perhaps the faculty in general fear the effect of undisclosed inventions among them, and have appealed to university administrators to root these inventions out into the open, to everyone’s relief.

Again, that seems odd, though I’ve seen instances in which humanities professors do want the university to own inventions because they believe that scientists, engineers, and doctors are getting a free ride with university resources and ought to share proceeds back with the humanities. They have a point, since humanities departments often float the finances for the sciences and professional schools through a happily complicated system of cost sharing (faculty in the sciences and professional schools for the most part reject this notion and think they generate net profits for the university from their research). People who have worked through the accounting at major research universities confirm that humanities and social sciences instruction floats the sciences; scientific research at most research universities runs a net loss–maybe 20%, even with sponsor payment of indirect costs; college writing programs, in particular, operating with graduate student and part-time instructors paid 1/3 or less what tenure-track faculty would receive, supply substantial sums to make up the shortfalls in the extramural research enterprise). But I have a hard time believing that FSU’s assertion about protecting the faculty is about protecting the non-inventing faculty’s communalism from the inventing faculty’s selfishness.

Perhaps it is just nice-sounding nonsense. Most folk like to be protected rather than put at risk. So it sounds nice to say that disclosure protects the faculty. The rest of the claim is just as unintelligible, though. While an invention disclosure might be the basis on which FSU claims ownership of an invention (and patent rights to the invention), disclosure to the university does nothing to protect an invention or to protect “intellectual property assets.” If anything, such disclosure puts “intellectual property assets” at risk–of confiscation by the university, of public disclosure, of delays, of bungling patent applications, of excessive expenditures, of distraction, of dispute, of bureaucratic demands.

And for all that, we are still dealing with patent rights to inventions, not to something mighty sounding such as “intellectual property assets.” One invents inventions; one does not invent “intellectual property assets.” If one wants to “protect” a patentable invention, one might do well to keep it secret rather than file a patent application, which will announce the invention to the world when the application is published. If one wants to “protect” an invention made in research, one must have some idea in mind other than simply that of personal property–a curatorial purpose, for instance, to ensure that the invention is made and used consistent with a public purpose and not merely to get as money as one can for the patent. If by “protect” the university means “make as much money as possible” we are far afield from any public purpose that would indicate that a university administrator ought to be involved in the management of the invention.

Most inventions developed at a university do not need “protection.” The goal for such inventions ought to be use, not non-use. For that, “infringement” means “success.” Creating a property right does not change such purposes. Even Bayh-Dole puts as its first objective the use of the patent system to promote use of inventions made with federal support. If an invention doesn’t need the patent system to promote use, then there’s no point in getting a patent, as far as Bayh-Dole is concerned. One has to find some reason other than to prevent infringement (to prevent use) as a basis for obtaining a patent on an invention made at a university. One has to “protect” something other than “the invention.” Some public interest–conformity to a standard, prevention of blocking patents by trolls, faster development of the invention for a given application, investment of development money that otherwise would not be available.

Further into the document, we get a glimpse of what “protect” might mean:

The invention disclosure is a way to document your invention with the Office so that the Florida State University can apply for a patent and protect the intellectual property rights.

Now inventors apply for patents. But FSU simply assumes that anything that’s disclosed will be controlled by FSU, and FSU will decide whether to apply for a patent. Applying for a patent is a means to obtain an intellectual property right–the patent. The patent does not have anything to do with other “intellectual property rights.” (And if the sentence is read to distinguish applying for a patent from protecting intellectual property rights, then it is garble another way).

The rest of the linked document is hopeless. To start with, it’s out of date (the US does have a first-to-file system, and has had it for over three years). It conflates disclosure that reports an invention to the university with disclosure that establishes a statutory bar to obtaining a patent. The document makes it appear that disclosure to the university has something to do with “more freely having open discussion” about an invention. That may be the case for foreign patent rights, but not for US rights, where there is a (now limited) grace period of one year before filing a patent application.

Given that most university inventions have been anticipated by open discussions–in grant applications, in professional communications, in press releases, in conference presentations, in web postings, and the like–keeping foreign rights is not all that often an option. Even when foreign rights are available, it is not at all clear that obtaining patents in foreign countries is meaningful to national innovation concerns. As one patent attorney who works extensively with universities once told me, he had never seen a university secure meaningful licensing deals for engineering- or physical science-based patents in foreign countries. Yes, some licensees want foreign rights and are willing to pay for them–to the tune of hundreds of thousands of dollars in expenses–but actually obtaining royalties from sales of licensed product in those jurisdictions is a rare thing, despite what the imagination might conjure up about opportunity, size of global markets, and 1% of a huge number.

The document makes it appear that disclosure to the university, combined with university patenting, is the portal to “commercial development”:

The invention disclosure is also the easiest and best way to transform your invention from a laboratory concept into commercial development so that it reaches its fullest potential and provide a benefit to society.

This claim is arguable, at best. Is disclosure to the university the easiest way? the best way? Is commercial development the way an invention “reaches its fullest potential”? Is a university-held patent better than, say, a company-held patent or an inventor-held patent? And why should anyone think that a private property right–whether held by the inventor, the university, or a company–is necessary for commercial development, especially of university-hosted inventions? This is an old claim–that patents encourage private development. It may be true for some inventions. But not for all, not for most. The patent plays a different role in most cases–to discourage use, to make people pay for use and thus drive up costs, to create a barrier to entry, to extract money from use. Where an invention would contribute to a standard, a patent might ensure compliance with the standard–and that would be a good thing. But in such cases, university ownership of the patent is the worst of possible ownership, as university licensing programs fixated on “commercialization” routinely demand exclusive licensing terms that preclude dedication of a patent to a standard–university patent management demands payment for use, not broadest most available use possible.

The actual premises that operate in university rhetoric about using the patent system don’t have to do with promoting use but with routing money to the university. Rather than a company developing an invention, the company must pay out to license the invention; rather than spending money on development, a company must pay the university to do more research; rather than making the invention broadly available, a company must charge for it, document the income, and send a share of the income to the university, under threat of audit, penalties, cancellation of the license, and claim of infringement. Still, there is something in the idea that a university inventor ought to have some chance to get funding to develop the invention.

This is then a potential role for university-held patents–to deal with competition at other universities to horn in on an area of research just as it starts to become productive. I have worked at a number of smaller research universities where faculty inventors are concerned that the moment they publish, research teams at the big monster universities will go out and get grants and swamp out the initial invention with improvements, applications, extensions, work-arounds, and whatnot and simply take over the development and any benefits that might come from a given invention. As one particularly opportunistic and candid research professor at a major research university told me (I paraphrase), “If I see an invention in another lab and those folks don’t publish it immediately, then I’m going to take it if I can do something with it. It’s a matter of survival.”

Thus, the idea of “protection” offered by a patent right may well have to do with dealing with predatory faculty at larger research universities and their well paid staff ready to prepare huge grant proposals. Perhaps FSU faculty feel that same pressure, even at a relatively large research university, perhaps because they are ready to take from others anything left “unprotected.” A matter of survival and all.

Request ownership

 Now for “can waive back.” The wording implies that the university owns inventions outright, but in the interests of being kind and generous, the university also can “waive back” ownership. State law is silent on how FSU may give up ownership of patent property. FSU does have a property policy, however, that does include patents. I won’t get into it, but it would appear that FSU’s patent management office ignores the requirements regarding inventory, capitalization accounting, and disposition of capital assets (and capital assets are defined to include intangible property, and the definition of intangible assets expressly includes patents).

The assumption of ownership of inventions comes from university patent policy (section (3)(c)):

An invention which is made in the field or discipline in which the employee is employed by the university, or by using university support, is the property of the university and the employee shall share in the proceeds therefrom.

Now there is plenty wrong with this policy claim (which I have discussed in detail with regard to the University of Florida’s patent policy), but we can focus on a couple of points. First, there is no authority for this policy claim in state law, which authorizes the university to secure patents, not inventions. It is a fine line, I know, but one that anyone dealing with professional competence is capable of following. Further, state law requires a consideration of the contributions followed by a written agreement. The policy ignores these statutory requirements and asserts that anything done in the field or discipline of an employee is already the property of the university. The law only matters when administrators decide it matters, apparently. And, of course, patent rights don’t become the property of the university by assertion, nor by being in the field of one’s employment, nor by the university providing support–what’s required is a written agreement, as state law provides, and as federal patent law requires.

Finally, the “sharing of proceeds” announced is not consideration for the claim on the employee’s property. The university merely asserts that it owns whatever it wants to own (since “invention” is defined to include non-patentable, generic stuff, such as “technological developments,” which could be anything). So whatever the policy statement is doing, it is not proposing a bargain, but rather “an offer the inventor can’t refuse.” It may be that the university expects the entire policy statement to be a form of adhesion contract–an offer that one has to take, or quit–but there’s nothing in this policy statement that suggests that the “proceeds” sharing is consideration for the assignment. The requirement that the university own is stated based on the field of employment and use of university support. The requirement to share proceeds is coordinate with the requirement that the university own. It is a policy of generosity, not of reciprocity, though it’s a warped sense of generosity, given that it starts with wholesale taking.

One might even consider the taking to be a form of eminent domain–the university as an instrument of the state, acting outside the state’s formal grant of powers and not following the due process set forth in state law, asserts that it owns the private property of individuals, claims that the individuals by being employed have agreed to the arrangement, and commits to “share proceeds” with these individuals, but as well stipulates that it can “withdraw” at any time from efforts to create proceeds so that it is clear that “sharing proceeds” cannot possibly be consideration for an assignment of inventions. For all that, there is no indication that an assignment of invention is necessary. The university policy stipulates plainly that inventions within scope of the university’s claim are the university’s property. The policy does not acknowledge that inventions were ever owned by their inventors, though this is what the US Constitution provides, and is reflected in the common law associated with federal patent law (as the US Supreme Court made clear in Stanford v Roche). There is no agreement, no contract, no due process, no consideration evident in the policy statement. It’s just a taking, with a whimsical reference to sharing proceeds.

If we look at the policy’s sharing provisions, we find that these provisions fail to conform to both state law and to the patent policy itself. The policy clearly states that the university will share “proceeds” with inventors. But state law has no such provision:

Any proceeds therefrom shall be deposited and expended in accordance with s. 1004.22.

Statute 1004.22 pertains to the establishment and operation of divisions of sponsored research. The only treatment of money that might be close is in section (5):

Moneys deposited in the permanent sponsored research development fund of a university shall be disbursed in accordance with the terms of the contract, grant, or donation under which they are received. Moneys received for overhead or indirect costs and other moneys not required for the payment of direct costs shall be applied to the cost of operating the division of sponsored research. Any surplus moneys shall be used to support other research or sponsored training programs in any area of the university.

There’s bits about per diem and travel expenses, but nothing about sharing patent proceeds. State law appears to require that such proceeds get deposited in the permanent sponsored research development fund as “other moneys not required for the payment of direct costs” and are to be used to support

  • operating the division of sponsored research
  • other research or sponsored training programs

There’s nothing about paying out a share of proceeds to inventors. One might twist the interpretation of what it means to “operate” a division of sponsored research, but doing so entails ignoring the delegation of powers in state law for such divisions. A better reading is that the authorization to pay inventors is a necessary part of the state’s requirement that the university enter into “written agreements” with its inventors after a review of the inventors’ contributions. The “interests” of the inventors might include payment for the assignment of rights beyond those rights that the university has through the equity it has created by its actions in support of the inventive work (such as commissioning that work, directing it, hiring for it, and/or providing extraordinary support). That’s what a written agreement entails–offer, acceptance, and consideration. There’s nothing that indicates that written agreements are to be of the form of forced confession or documented capitulation.

A reasonable interpretation is that these written agreements are voluntarily entered into–the state law does not decree that the university owns everything outright, but rather that the university has the power to “secure letters of patent.” It is authorized to do so by entering into written agreements with inventors having considered their contributions to the invention. If the inventors have been expressly hired to invent, for instance, then their contributions might be nil. If the inventors have not been hired to invent and have not used university resources, then the university might have no basis to claim an interest whatsoever in their inventions, regardless of the “field or discipline” to which the invention might be ascribed.

That is, the state law authorizes the university to hold patents as property but does not either mandate that the university take all patents or authorize the university to take patents (or inventions) unilaterally. Instead, the university is to consider the circumstances, establish the part of each invention that is properly the university’s, and enter into a written agreement with regard to how the rest of the invention will be managed. If the university and inventor agree that the university should own the inventor’s interest in patent rights in the invention, then the consideration for that assignment might well be a sharing of royalty income–but then also perhaps with the stipulation that the university seek to obtain proceeds and perhaps also establish how the university will manage the invention. One might also expect that the sharing of royalty will be calculated off the gross and not the net (otherwise, the university has incentives to run up costs against a royalty stream prior to paying out any share to inventors).

In such an agreement with inventors, the sharing of royalties may be a primary form of consideration for the assignment of title. That makes perfect sense, no twisting of words required. The state authorizes the university to negotiate with its inventors regarding patent rights, and to own and deploy any patents that it secures. A share of royalties or consideration other  from such management are shared with inventors per the written agreements the university has with them, and any proceeds–the amounts remaining after costs, including the cost of paying inventors–goes to the division of research to be used per Florida Statute 1004.22.

The idea that the university’s claim on inventions is that of direct commissioning is embedded in Florida Statute 1004.23’s authorization:

Perform all things necessary to secure letters of patent . . . on any work products

One could read “work products” expansively to mean “gosh anything at all that arises from any activity that anyone might do, since by acting, they are working, and what happens when they act, er, work, is therefore a product.” One could also read “work products” to indicate a loose generalization of inventions and works of authorship and names for things, a legislative effort at economy of prose. But one can also read “work products” to mean exactly that–the result of directed work, a deliverable, something stated, committed to, and expected. Here’s the Business Dictionary definition:

Deliverable or outcome (such as a training course or a building) that must be produced to complete a project and achieve its objectives.

Without making assumptions and jumps to expansive meanings and rationalizations of the drafters’ literary needs, we can establish a plain meaning for the authorization granted by the law: the university is authorized to secure patents on work that it commissions, that it hires for, that it enters into agreements in which a patentable invention is contemplated. This is a reasonable, delimited authorization to obtain property. It is not a general authorization to take all patentable inventions, nor to expand the definition of invention to most anything. FSU, however, ignores all this and runs beyond the authorization to claim not just patents on inventions it has commissioned (“work product”) but to all inventions regardless of whether there’s the prospect of a patent.

The policy on sharing is also inconsistent with the patent policy’s own requirements. The patent policy authorizes the university to share “proceeds” with inventors. As we have seen, state law treats sharing royalties with inventors as a matter of written agreement, as a cost against income, with the proceeds–the net surplus after costs–going to support the division of research. But the policy on sharing has this:

When a U.S. patent is issued on an invention assigned to the University, the inventor will receive a $500 payment.

That payment is not a sharing of proceeds. It is an outright payment based on a patent issuing. It is something of an award or perk. But that’s not what the university patent policy authorizes. Perhaps it is seen as a parallel to a corporate incentive for inventors to disclose their inventions. But it’s not compliant with the university’s own policy statement on sharing. The policy then runs through a complicated royalty sharing schedule and ends with the following:

The University will utilize its share of net royalties in accordance with 1004.22, Florida Statutes.

At least the university references the Florida Statutes section correctly. But the statute refers to proceeds, not the net royalties stated here. But you can see now, I’m sure, how FSU gets the state law wrong. The inventor’s share, in state law, is to come off as an expense before the net is determined, paid per agreement as consideration for the promises and acts of the inventor–as consideration. Here, the university deducts its expenses first, calculating a net income, and then declares that it will share a portion of that with inventors:

Once the $10,000 plateau has been reached, net income (gross royalties minus direct costs of patenting, licensing, legal, and other related expenses) will be divided as follows:

The payment is not consideration for anything. It is just an announced payment. For federally funded inventions, the standard patent rights clause authorized by Bayh-Dole requires universities to share royalties with inventors, but FSU doesn’t cite any of that here.

In state law, royalty sharing with inventors is one of those “other related expenses” that FSU refers to in its policy that should come off the gross, not off a net amount. (It appears that the university pays out a share of the first $10K from the gross). (And by adding “other related expenses” the university gives itself to run up whatever costs it wants, so long as it asserts the costs are “related”).

Inventors have no opportunity to negotiate their ownership interest or their financial interest or the management of their inventions. State law requires the university to provide these opportunities, but the university has ignored this requirement and displaced the written agreement from one that has substance to one that merely requires the inventor to concur with the university’s assertion of power. One might say that the university requires the inventor as a condition of employment and to avoid the general threat stated in policy to agree that it’s okay for the university to fail to comply with the law–to agree to ignore the law, to make a private, illegal deal. Street gangs must use a similar form of deal-making, but with greater efficiency, as they do not rely on bureaucrats.

FSU’s helpful summary account of patent policy goes even further (some formatting omitted):

Patent Policy Describes:

For all inventions, whether or not patentable:

The right of the University to claim title, and its obligation to pursue patent protection and public use of inventions made by faculty or staff within the scope of skill and activity implied by their duties as employees

State law grants authority for the university to secure patents, not to own all inventions, however which way administrators want to define them. A patent policy by its nature governs patentable inventions. To extend a patent policy to unpatentable inventions is nuts. What is an upatentable invention? Something that’s not new, or not useful, or is obvious? Well, that’s a broad claim. And what’s the “title” that a university has a right to claim in unpatentable inventions? A Cheshire cat’s smile of a title, no doubt. A made-up fantasy title created just for this policy, so there can be a title to claim.

The patent policy also contains no obligation on the part of the university to “pursue patent protection.” Just the opposite. The policy allows the university to stop at any time, without any reason:

At any stage of making the patent application, or in the commercial application of an invention, if it has not otherwise assigned to a third party the right to pursue its interests, the President or representative may withdraw.

The university writes a policy under which it has no obligation to obtain patents or license anything. It can take ownership, horse around, waste time and money, and then lose interest. The university may have an “active commercialization program,” but it doesn’t have to try to commercialize anything. The purported “exchange” then is not one of “in exchange for services relating to my invention” but rather “in exchange for being associated with a services that might help any university invention but not necessarily mine”–sort of like sending jokes to a comedian, in the slim hope that someday you’ll hear one of them at a show.

The summary also changes the conditions of assignment:

within the scope of skill and activity implied by their duties as employees

“Implied by their duties as employees” leaves hanging who gets to do implying–presumably the inventors imply, while administrators might infer. In any event, that’s not policy:

An invention which is made in the field or discipline in which the employee is employed by the university, or by using university support, is the property of the university

The summary leaves out use of university support and adds skills implied by duties rather than than a field or discipline of employment. In any event, that, too, is not state law:

Perform all things necessary to secure letters of patent, copyrights, and trademarks on any work products and to enforce its rights therein.

The state law pertains to patents on “work products.” Not stuff in one’s area of skill, or field, or discipline. A work product is not any invention one makes–not even inventions within one’s scope of skill or field or discipline. It’s one that is a work product, one that arises because one has commissioned the work, assigned the work, expects a result. Of course, even I can find lawyers who will argue differently if the money is right. If a discussion of policy is merely a matter of who can afford the better bamboozler, then there’s no point in continuing on a path of reason. I’d rather propose that university patent policy is not about out-bamboozling others, but rather using reason and experience to develop an effective, clear, followable policy statement. Is that asking too much?

FSU administrators don’t appear to care about the details of wording. They treat the ownership of inventions as a done deal–the university owns inventions because it has a policy that says it does. Disclosure is a matter of request–the university owns anyway– and the university can “waive back” ownership if it decides to. The patent policy has something to say about this, also in section (4)(a):

If the university wishes to assert its interest in the invention, the Vice President shall inform the inventor within 30 days.

First the policy assets that inventions within scope are the property of the university. Then the policy asserts that the university will decide in 30 days from disclosure whether the university will “assert its interest” in the invention, as if the policy provided for the university to have the right to require assignment, but left it to the judgment of an administrator whether the university would assert its right, on a case-by-case basis. This, too, is garble. But the next sentence tracks state law:

The Vice President shall conduct an investigation which shall assess the respective equities of the inventor and the university in the invention, and determine its importance and the extent to which the university should be involved in its protection, development and promotion.

This is the required consideration for the contribution by university personnel to the patent and set the basis for a written agreement concerning the mutual interests of the university and inventor. It’s just that the university has set up patent policy to ignore the idea of a written agreement and has replaced that idea with asserting or waiving ownership. Here’s how the FSU invention disclosure document ends:

FSUassertswaives

This wording, too, contains mines. The “as disclosed” aims to limit the determination to whatever is described in the document–so if there are related things, such as applications that aren’t documented in the disclosure, the university will argue that it has not waived any interest in such things. An invention thus becomes more than a static thing, defined by language–it is a string of activities and realizations, to be disclosed repeatedly, subject to university assertions of ownership that might reverse previous waivers of ownership. Even so, there’s nothing in policy, other than an overbroad claim to property in the field or discipline of an inventor or using any university support, that establishes just what the university’s interest ought to be in any given invention. Scope is a lousy justification for an interest, especially if the “equities of the inventor” has something to do with the common law rights an inventor enjoys in a patentable invention, the nature of the university’s subvention in support of its faculty and students, and the idea that a written agreement concerning mutual interests will be created once the review for equities is complete.

That the university doesn’t actually care about equities is clear from the invention disclosure form, which does not comply with university patent policy. Where the policy requires a disclosure that includes two elements:

  • the nature of the discovery or invention
  • an outline of the project and the conditions under which it was done

The disclosure form provides space only for the first element. For the second, the disclosure form has no space for an outline of the project or the conditions, other than a section to report grant numbers or check a box if no federal funding was involved. A review of the project and conditions under which an invention has been made is material to comply with state law. That’s how the university is in a position to consider the contributions of its personnel.

Even if the university had a sound foundation to asset ownership of inventions outright, a disclosure form still should have a description of the project and conditions to determine whether an invention is also within scope of a sponsored research agreement’s commitments to report and license to a research sponsor. For instance, under the standard patent rights clause authorized by Bayh-Dole, a university must determine whether a reported invention is within scope of the “planned and committed activities” of a federally funded project, or whether the invention “diminished or distracted” from the planned and committed work–in which case, if the invention is or may be patentable, and a party to the funding agreement owns it, then it is a subject invention and the rest of patent rights clause kicks in. But the FSU disclosure form ignores all this and apparently assumes that if an inventor lists a grant, then no review by the university is needed. Unprofessional juju. Bad juju.

But even the university’s patent policy treats the review as if it were for whether the invention is within scope of the patent policy’s definitions rather than the extent to which the inventor and university may have “equity” in a given invention. That is, an assertion of scope does not work as a proxy for a determination of what the university has actually done–either commissioned the inventive work or supplied significant additional resources on a condition of assignment of any invention. Instead, the policy assumes university review results in an ownership claim, followed by a decision whether to seek a patent:

The Vice President shall inform the inventor of the university’s decision to apply for the patent within a reasonable time, not to exceed 135 days from the date of the disclosure to the Vice President.

Why 135 days? Dunno. Mystery there. (75 + 60?) And why the 30 day notice about asserting or waiving, without also a decision with regard to filing a patent application? Can the university claim the invention as its property and then not seek a patent? Would such a situation be an assertion of a trade secret? Or require dedication of the invention to the public domain? Hard to say, other than it’s likely given the mess of this policy that no one has bothered to think it through.

We can see more of the administrative thought process, such as it is, by looking at yet another guidance page, what appears to be a commentary on the patent policy in the Faculty Handbook. In a section headed “Legal Authority” the Faculty Handbook makes two sets of assertions. Here’s the first, concerning Bayh-Dole:

Retention of intellectual property, or inventions, by universities has been facilitated by passage of uniform patent legislation, Public Law 96-517, “The Patent and Trademark Amendments Act of 1980.” In this act, the federal government has given nonprofit organizations and small businesses a right of first refusal to title in inventions made in the performance of government grants and contracts with some limited exceptions. This law clearly sets forth, as the objective of Congress, the utilization of the patent system as a vehicle to “effectuate the transfer of government-funded inventions to the public.”

This, of course, is not only untrue, but it is contempt to allow it to remain in a policy document as if it were a fact, given the Supreme Court decision in Stanford v Roche in 2011. The quote at the end does not appear in Bayh-Dole. Another Florida university, Florida Polytechnic, proposed in 2015 adopting this text into policy, but with modified wording:

With the passage of the Bayh-Dole Amendments, Public Law 96-517, entitled “The Patent and Trademark Amendments Act of 1980,” the federal government facilitated the retention of intellectual property, particularly inventions, by universities. In this act the federal government gives universities the right to retain title to inventions they have made in the performance of government grants and contracts. The act reflects Congress’ intent that these organizations use the patent system as a vehicle to “effectuate the transfer of government-funded inventions to the public.”

Even this is garble. Bayh-Dole did not “facilitate the retention of intellectual property, particularly inventions.” Bayh-Dole deals only with patentable inventions and plant variety protection. Not IP generally. Further, the law does not give universities any right–it requires federal agencies to use a standard patent rights clause that does not take patent rights away from contractors. Further, it is misleading to use “they”–as if the universities as corporate persons make inventions. Federal grants–the primary instrument by which universities receive federal funds–are subventions in support of individual proposals for research. The university receives money as a trustee, as it were, for the research. But any inventions that get made are made by individuals, not by the university. The shorthand masks the situation and gives the impression that a university owns inventions by right–if not by federal law, then by the very nature of employment. Both of these impressions are false, though alluring.

I have yet to find the origin of the quoted words. Congress included an express statement of objectives in Bayh-Dole, which operate to shape the scope of rights with the attributes of personal property available for subject inventions, the ones made with federal support. The quoted words aren’t there. Here’s the bit of the Act’s statement of “Policy and Objectives” (35 USC 200) that runs closest:

It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development…

There’s no mandate for universities to use the patent system. The objective is that the patent system is used. It could be by federal agencies, by inventors, by small businesses, by universities, by invention management firms, or by assignees (including some exclusive licensees). As well, the use of the patent system is not a mandate; it is, rather, restricted to use that promotes the utilization of inventions. No one is forced to use the patent system. The patent system is a tool on the shelf. Congress states that the tool should be used, in the matter of subject inventions, when it can promote the use of subject inventions.

There is also nothing in Bayh-Dole about transferring inventions “to the public.” That part is administrative fantasy, as if the law were about “technology transfer” and not about focusing the use of the patent system on promoting use of inventions (as distinct from excluding use, holding up users for money, speculating on the future value of excluding others, and any other things that owners of patents get away with doing). What the law does provide is a definition of “practical application”:

The term “practical application” means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms.

Practical application–“utilization” of the statement of policy and objectives–involves both use and benefits to the public on reasonable terms. That is, an invention has not been practically applied unless the conditions of the definition are met:

  • utilized
  • benefits available to the public
  • on reasonable terms

If these three elements can be “established,” then the invention has achieved “practical application.” There is no requirement or intent by Congress that inventions are transferred to anyone, much less “the public.” It’s easy to transfer an invention to the public: dedicate it to the public domain. No need for the patent system to do that. It’s much more difficult to use an invention so that the public enjoys the benefits of that use, and at a reasonable cost. University administrators might rationalize all this with the idea that if the university makes money, or sets it up so that investors throw money into a startup, then the public has benefited (because the university is a public thing, and if it gets money or enhances its reputation, then necessarily the public has benefited in having this better, shinier university)–and this of course is only true within the definition of practical application if one construes the use of the invention to be the exploitation of patent rights for profit and the public benefit to be warm thoughts about the university’s benefit. Hardly credible, don’t you think?

In any event, FSU appears to read Bayh-Dole to mean that universities as a matter of federal policy must have a bureaucratic finger in every invention that gets made within their sphere of influence, that the purpose of that finger is “commercialization,” and that the measure of success is how much money gets made. Those all can be goals–I won’t say they are decent goals for a university, but certainly there’s an argument for them–but they aren’t in federal law or the intent of Congress as expressed in the law. It’s blisteringly irresponsible to make it appear that decisions of university administrators are somehow compliance with federal law.

At least the Florida Polytechnic version removes the “right of first refusal” language and drops the “clearly sets forth” as if the quote to follow is from the law. But any of these statements has a ways to go to make a competent representation of the law. In the case of FSU, it simply bungles the “legal authority” under which it claims a right to own inventions made with federal support.

The FSU policy summary document gives yet another take on Bayh-Dole:

FSU, like all other research Universities, is governed by the Bayh-Dole Act [sic the broken link 2 Nov 16–here is the link], which provides that any inventions made with assistance from the U.S. Government shall be disclosed in a timely manner, and comply with other regulatory actions. The Act allows for FSU to elect to retain title to inventions conceived or reduced to practice. In addition, FSU must grant the U.S. government a royalty free license for governmental purposes, give preference to U.S. manufacturers; give preference to small businesses and share royalties with inventors. We must periodically report our licensing activity to the Government.

Again, lots of untrue garble. Bayh-Dole governs federal agencies, not universities. Bayh-Dole is specific to patentable inventions made under funding agreements for experimental, research, or development work. Not just any government “assistance.” And only when the invention is part of “planned and committed” activities. A grant might pay for a new piece of equipment, and when that equipment is not being used for the grant, someone might use it to do some other work that turns out to be inventive. One might say the invention was made with “assistance” of the federal government, but it is not a subject invention, and need not be disclosed, indeed should not be disclosed because the disclosure requirement (and all the apparatus that follows from disclosure) applies only to subject inventions–a definition in federal law, not subject to administrative whims or even “just in case” worries.

The idea that Bayh-Dole allows universities to “elect to retain title” is accurate but misleading, given that Bayh-Dole does not give universities any special means to obtain title in the first place. But university administrators routinely use “elect to retain title” to make it appear that federal law gives universities the right to take title, which is simply not true (although some federal agencies have gone ahead and introduced requirements or advice to induce universities to take title anyway–the agencies violating Bayh-Dole in the process, but at this point, nobody in government cares. I suppose that’s because nothing that universities do with inventions matters a speck to the government or to the economy, which is a huge condemnation of the federal expenditures for university research. It’s more a matter of pleasing an electorate, like farm subsidies, than accomplishing anything.).

The FSU Faculty Handbook then gives a second set of claims, based on Florida state law:

The Florida State University patent policy is based on 1004.22 and 1004.23, Florida Statutes.

Actually, as we have seen, FSU patent policy ignores key elements of the Florida Statutes, acts outside its authority, and abuses its position by taking property without the due process established by state law.

The University has implemented this authority through Rule/regulation 6C2-6.009, Florida State University Regulations, which requires that an employee shall disclose all patentable inventions and technological developments which the employee may develop or discover while an employee of the University.

Actually, the cited rule has been repealed, but FSU hasn’t got around to updating its references in policy. The statement, however, is incorrect. The regulation–repealed or new–is not restricted to patentable inventions. Invention is defined to be much broader than patentable, and “technological development” is just one of a random list of items that are included in the definition. Omitted are such wonders as “strains” and “portions” and “know-how.”

It further states that “a discovery or invention which is made in the field in which the investigator is employed by the University or by using University funds, facilities, materials, equipment, personnel or proprietary technological information is the property of the University and the inventor shall share in the proceeds therefrom.”

This much is true–the policy does state this–but it is unfounded, as there is no authority in Florida Statutes that the university can claim inventions outright, or with such a broad definition of invention. That statute is directed at securing patents, not owning inventions, and as we have shown, the statute requires a review step and a written agreement, not an autocratic upfront claim without review or written agreement followed by a whimsical release at any time but with claims to a royalty-free license.

Rule/regulation 6C2-6.009 tracks Article 18 of the UFF-BOR Agreement.

The zinger is why the faculty union is incapable of negotiating a patent agreement that is at least consistent with state law. Maybe next time around.

The FSU Faculty Handbook then makes a summary statement under the heading of “Florida State University Policy”:

The impact of the above is that all inventions by faculty members (although the term “faculty” will be used throughout this document, the policy herein described applies to all faculty, non-faculty employees and students) who are using university funds, facilities, materials, equipment, personnel or proprietary technological information, are the property of the University and proceeds from the commercialization of these inventions will be shared with the inventor.

Well, the policy on its face does not apply to students. Even the FSU “Commercialization” summary page that we started with has this:

1. Students: not employees and thus not covered by the preceding employment policies, except when they are employed as research assistants, or are on scholarships or awards administered by FSU.

The policy applies only to employees. It’s not even clear that faculty members are employees for the purpose of their professional development, or if they are, that the university has the legal authority under state law to claim inventions as university property. The policy furthermore is subject to the general statement in the FSU Constitution (Article VI, Section C)–presumably a fundamental document to which regulations are answerable–on academic freedom:

It is the policy of the University to maintain and encourage full freedom, within the law, of inquiry, discourse, teaching, research, and publication, and to protect any member of the academic staff against influences, from within or without the University, which would restrict him or her in the exercise of this freedom in his or her area of scholarly interest.

“Full freedom” of inquiry, discourse, teaching, research, and publication runs against the idea that faculty are “employed” and in becoming “employed” give up their freedom whenever university administrators assert that the university owns their scholarly work in the form of invention, know-how, technological development, portion, strain, or whatever. Ownership by the university of such stuff necessarily restricts a faculty member in the “exercise” of “full freedom”–one cannot authorize the publication of what one does not own; one cannot teach others if the university owns and controls what is to be taught. It’s not teaching if those receiving the teaching cannot practice what is taught. It might be informing, or marketing, but teaching requires the expectation of use of what is taught. Administrators might try to weasel around this, but honestly, it takes a deep mental distortion to even try.

Sadly but not unexpectedly, FSU does stack the deck on the discussion of academic freedom. Though the university commits to protect faculty from influences that would restrict their full freedom–including from “within the University” (such as a rogue patent administration)–we see that legal counsel is reserved for administrators:

The right to the protection of the University shall not, necessarily, include any right to the service of the University’s legal counsel in any proceedings in which the academic freedom of the faculty member may be an issue.

So the burden is on each faculty member to come up with the legal funds to fight administrators who have access to university attorneys. So administrators have a $200,000 edge in any discussion of what academic freedom policy actually means, once the lawyers have had their go at it. As Thrasymachus had it, justice is whatever those with power say it is. Socrates argued that Thraysmachus was wrong, logically, but it would appear that FSU has opted for Thrasymachus, not Socrates. For a university that prides itself as the university in the state system “most deeply rooted in the liberal arts tradition,” choosing Thrasymachus is sort of sucky.

In any event, whatever the Faculty Handbook might say regarding the use of resources, university patent policy gives a list of “University support” that differs a bit from the one in policy–things are in a different order and “proprietary” has been added in the Faculty Handbook list before “technological information.” The patent policy does not qualify the term and thus claims a much broader scope.

Re-emerging

Well, that’s been quite the trip down the rabbit hole. A simple, misleading couple of sentences sends us bouncing all over university policies, state law, federal law, policy summaries, restatements, and forms. What we find is a garbled mess, with the university acting outside its state-given authority; making up overbroad definitions; stating claims to personal property without due process, such as by-passing a requirement for written agreements based on a review of contributions; misstating its own policies, such as they are; offering conflicting policies; suggesting in guidance that it has waived its own policies; and creating forms that ignore what it ought to be paying attention to. Other than that, things are peachy keen for Florida State’s patent policy.

Perhaps the primary point of the FSU patent policy is that administrators decide what they want to own and how they want to manage it, and resistance is futile, or at least resistance will cost $200,000 and destroy your career. It’s still an open question whether FSU with such a patent policy creates a favorable environment for research enterprise or the promotion of inventions made with university or federal support (or otherwise). Whether one prefers an efficient totalitarianism over an effective openness, most ought to agree FSU inventors deserve a policy environment that’s competent, complies with state and federal law, fairly represents the law, and owns the administrative decision in favor of totalitarian ownership of inventions rather than making such ownership appear to be a federal or state mandate.

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