In working through some of the legislative background to the failed effort to make the IPA template government-wide, I came across a curious passage in testimony attributed to the Library of Congress Research Service. The Service was addressing the issue of “patentable material” provided to the federal government as a grant requirement and the effect of the Freedom of Information Act. But the passage raised a different question in my mind. Here’s the passage:
We might remark on the numbers–329 patent applications across 100,000 grant applications (how many funded?) over five years. We might think of that as “prudent selectivity” rather than “uninterested” or “a low rate.” But that’s not the part that caught me. It was this–“either generated or corroborated by HEW-funded grants and contracts.” For an invention to get caught up in federal reporting requirements, at least for subject inventions under an IPA, the invention had to be “made in the course of or under research supported by grants and awards” from HEW. “In the course of” means–what work got done to do the work contracted for. “Under” means–within the stated scope of expected work or using funds from the grant.
The IPA then defines “made”:
And there we have “conception” and “first actual reduction to practice”–which we might recognize from Bayh-Dole, which uses much the same language (see the definitions at 35 USC 201). The structure of this definition is the source of much woe in the university invention reporting world. University administrators interpret the definition to mean that anything that is either thought of (“conception”) or reduced to practice in any way ends up being a reportable subject invention. Thus, work that leads to a new idea, even if not within the scope of the funding agreement, is reportable as a subject invention, even though no invention has been “made” for patent purposes. For patent purposes, an invention is “made” when it is both conceived (with a specific meaning for “conceived”) and reduced to practice (constructively by filing a patent application, or actually by building a working instance that evidences all the essential functions of the invention).
The MPEP goes into some detail on what “actual reduction to practice” requires. It’s in the context of interferences, which are out with AIA, but the term is still in Bayh-Dole, and Bayh-Dole is a part of federal patent law, so we may as well look. The MPEP sets out a “two-prong test,” quoting a court decision:
“In an interference proceeding, a party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party constructed an embodiment or performed a process that met every element of the interference count, and (2) the embodiment or process operated for its intended purpose.”
Actual reduction to practice shows the invention “in a physical or tangible form that shows every element of the count.” Where the actual reduction to practice involves a method, then the method must produce a product, and the product has to be shown to be “satisfactory.” That means, testing the product. The MPEP makes clear that testing of a product is a necessary condition to establish actual reduction to practice. Quoting another decision:
“even where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention”
There is one further requirement for actual reduction to practice: “recognition and appreciation” of the invention. That is, if the inventor does not recognize the work as an invention, then it has not been reduced to practice. This was a big thing for Research Corporation and the patent mining folks in the more aggressive university-affiliated invention management organizations. If an inventor didn’t recognize his (or her) work as inventive, well then it wasn’t a patentable invention because it was not actually reduced to practice. Think of it–in federal patent law, an inventor decides when something is inventive and has met all the requirements for whatever idea is in her (or his) head. Not some technology transfer administrator.
But here’s the way in which one can increase the number of reportable inventions. The MPEP points out that the recognition of an invention by others can “inure to the benefit of the inventor.” That is, if patent mining folk get off their duffs and walk the halls, they might stumble upon research folks who have done (in their own minds) neat things that actually are inventions–if only these things are “recognized and appreciated.” In a way, this intrusion of the invention management folks into the lab is one of the most significant–and disruptive–things that the rise of predatory (oh, pick your adjective–aggressive, invasive, pro-active, engaged) technology transfer has done. Stuff that would have worked in the lab (and shop and hallway and shower) would have stayed in these places, been shared and published as research personnel decided, all without a thought about inventions and patents. And doing so would not have violated Bayh-Dole’s standard patent rights clause. Unless an invention is patentable (and owned by a contractor), it is not reportable. If an invention is not recognized, then it’s not actually reduced to practice, and hence is not patentable. Sure, it could be conceived, but if not recognized and appreciated, it’s not patentable and is not within the definition of subject invention.
In this way, the invention management organizations and the technology transfer offices and the technology licensing offices and the cheerful “industry alliance and economic development for the good of all and never ever a problem with anything” offices function as a serpent in a tree of knowledge of good and evil–or in this case, good and patentable. If research folk just eat the apple, then their eyes are opened and they might see evil, er, patentable stuff everywhere. Richard Feynman has a story about such an interview, in which he invents the nuclear-powered rocket (from Feynman’s Lost Lecture, 48):
Or, listen to Professor Feynman tell the story himself. Every person working in a lab might have dozens of ideas–on any given day. As universities ramped up invasive methods to identify inventions, they changed the filter by which someone with an idea also recognized and appreciated their work. As a result, universities (meaning, patent administrators) got more and more invention reports–even (now) patentable stuff–but they had not changed the productivity in the labs nor improved their own lot. Now, rather than having inventors motivated by their own recognition of an invention’s utility and worth coming forward, the university technology transfer officers were getting stuff disclosed “just in case” or “because I was told to.” Rotten stuff, random stuff, whatever. And the technology transfer offices had procedures set up to treat every disclosure the same–log it in, conduct interviews and market assessment, check the prior art, draft a “non-confidential summary.” And they often had to work against the interests and inclinations of inventors who did not want to be bothered, who thought the whole thing ludicrous. You know, the Feynmans of research, the ones who get things done.
Not only did the technology transfer offices get more and more lousy stuff (as far as meaningfulness to patent practice, at least) to have to work through, but many of the people they were now dealing with also didn’t want much at all to do with them. But the rise in statistics for inventions reported and patent applications filed continues to get trotted out as an indication of how universities changed to become entrepreneurial. What horse turds!
Universities have gotten themselves swamped with unfiltered ideas from labs, now with everyone thinking that getting a patent might be a nice feather in the C.V., but realistically, none of these patents has a chance at practical application–more so, with a patent, none of these ideas has a chance to get used. Instead of learning to be more selective–and using the multiple filters available to do so–the patent administrators became less selective, and billed their activity as new-found research productivity offering the prospect of amazing bits of economic development, new sources of money for the university, riches for inventors (the “Porsche” effect, now perhaps the “Tesla” effect–I’ll have to find a way to update my banner pix from Laguna Seca), and of course public benefit. Except it wasn’t potential at all, and still isn’t. It’s just a pile of work for patent bureaucrats–for which they get well paid so long as senior leadership continues to believe they are essential. That this goof-ball approach has become dominant and systematized and embedded in formal policy is as good as decreeing that coconuts make good headphones.
Now, armed with some ideas about “actual reduction to practice,” let’s get back to our testimony on patentable material and freedom of information:
The testimony uses “generated or corroborated.” These correspond to “made” and “tested.” That is, either the research produced the invention or tested the invention to determine if it was indeed “actually reduced to practice.” Building a prototype is not sufficient. The prototype must demonstrate all the elements of the claimed invention.
Now perhaps you can see how the IPA definition of “made” works–and how the similar Bayh-Dole definition also works. If an invention is to be made under a federal funding agreement, then it must be actually reduced to practice. For actual reduction to practice to happen, there must be an embodiment or a product produced by a method, and that embodiment or method must be recognized as inventive by the inventors, and the embodiment or product must be tested to show that it does indeed evidence every element of the invention and that, in the case of a method, the product is also satisfactory. For there to be actual reduction to practice “in the performance of work under a federal funding agreement,” the statement of work must include a requirement that an invention be tested, or “corroborated.” In the case of a clinical trial sponsored by a company, that corroboration would “inure to the benefit of the inventor” if the company sets things up correctly. No wonder most universities don’t try (anymore) to assert rights in inventions made in company-sponsored clinical trials.
The implementing regulations for Bayh-Dole go into some detail (37 CFR 401.1) on the scope of what constitutes a subject invention. The critical element is whether the invention has been made in the performance of a funding agreement. For that, the work has to be “planned and committed.” If there’s no testing of an embodiment or product in the statement of work, then there can’t be “actual reduction to practice” in performance of work under the federal funding agreement. And unless the patent miners are saved by a finding that any testing “diminished or distracted” from the planned and committed work, they don’t have a subject invention on their hands because the invention is outside the scope of Bayh-Dole’s definition. If an invention is “actually reduced to practice” under a federal funding agreement, then that funding agreement’s statement of work must expressly set out that this reduction to practice is a “planned and committed” element of the funded work. One has to consult the funding agreement to be in a position to determine whether the reduction to practice took place “under” the funding agreement.
We come back around, then, to “conceived” (or “generated”). For an invention to be “conceived,” it must be a “definite and permanent idea of the complete and operable invention” in the “mind of the inventor.” The inventor must also “recognize and appreciate” the invention as inventive. If there’s nothing in the funding agreement about applying discovered laws of nature (or phenomena, or whatever) to something useful, then again any conception involving application of discovered stuff does not take place in the performance of work under a funding agreement. It is outside the scope. It might be patentable, but it is not a subject invention. And it isn’t even patentable unless it is recognized.
[For an account of “first actual reduction to practice” meaning, “to gather test data to demonstrate that an invention functions for its intended purpose” in the context of the scope of a license to the federal government, see In re Eddie L. King, a decision of the patent commissioner. An invention is not considered “made” until it has been reduced to practice. If reduction to practice requires testing to demonstrate function, then we are dealing with actual reduction to practice not constructive reduction to practice. In In re Eddie L. King, the patent commissioner ruled that the federal government had a right to a license to an invention made by a federal employee because the government used its resources to test the invention for its purposes before a patent application which had been drafted was filed, even though the test data was not needed in the application and was not included in the application. It was enough that there was an appearance that the application was not filed until the federal government test data was positive.
In this sense, then, “first actual reduction to practice” is broad enough to include not only building prototypes but also any testing done in a project receiving government funding prior to a patent application being filed or which test data is subsequently required to be provided to the patent office in support of a patent application. The argument appears to be that an invention has not been “made” and therefore is not (yet) patentable if making the invention requires such testing and the testing has not been done. “Corroboration” may be broad enough to include the idea of “the necessary testing to demonstrate that the invention does indeed work for its intended purpose, and with this testing has been first actually reduced to practice because constructive reduction to practice is insufficient to support the claim that the invention has indeed been “made.” Next, we dance on pins.]