University of Misery’s IP Policy Scam, 1

From time to time I still use my old Garmin GPS. I downloaded the directions voice for Australia because I rather like the accent. I call the voice “Nigel.” But in WA meaning Washington State rather than Western Australia, so Nigel comes up with some odd announcements. Washington state highways were of course Western Australia highways. And some city names cause Nigel trouble. For instance, Bothell, a city in western Washington, pronounced “baa-thull” by locals, Nigel calls “bot-hell.” Down south, when I’m in the Bay Area, Nigel calls the San Jose International Airport–SJ International–“The Society of Jesus” International Airport. And as I was driving Interstate 70 across Missouri recently, Nigel informed me that I was actually in the state of “Misery.” Perhaps we should take notice.

Here is what the University of Missouri says about its policy on the ownership of inventions:

MU owns all intellectual property created utilizing University facilities by an employee or student of the University of Missouri.

The university’s policy on inventions is set forth in the Collected Rules and Regulations of the university, at 100.020. Here’s section D.1.a:

The University, as the employer and as the representative of the people of the state, shall have the ownership and control of any Invention or Plant Variety developed in the course of the Employee’s service to the University.

Pretty straightforward. The university claims ownership of inventions “developed in the course of” an employee’s “service to the University.” So it’s not any invention at all, but those inventions developed in the course of service to the university. Got it. More:

Each Employee of the University is required and shall upon request assign to The Curators of the University of Missouri all domestic and foreign rights to any Invention or Plant Variety made by the Employee within the general scope of her/his duties as Employee of the University, unless such requirement is waived in writing by the University. Remuneration to the Employee for such assignment is detailed in Section 100.020 E.2.c and E.2.d.

We get a restatement here of scope. Employees are required to assign–upon request–all rights to any invention “made by the Employee within the general scope of her/his duties as Employee of the University.” The “general scope of duties” must be something akin to “the course of service to the University.” The language here adds a twist–it’s not just “general scope of duties” but rather that scope of duties “as Employee of the University.” That is, the general scope of duties is broader than those of duties as an employee of the university. So far, things are consistent, at least. The university claims inventions made by employees “in the course of service to the university” or put another way “within the general scope of duties as employee of the university.” Again, not all inventions, and not even all inventions made in the general scope of duties, but only those inventions made in the general scope of duties “as an employee” or in “service to the university.”

To make all this clear, the policy statement adds a clarification:

An Invention or Plant Variety shall be considered as having been made within the general scope of the Employee’s duties for the University if either of the following conditions are met:

That is, the policy gives an explanation of the conditions under which an invention is made within the general scope of the Employee’s duties “for the University.” Again, for the third time, the policy restricts the university’s interest in inventions to those invention made in “duties for the University”–not duties generally, and not inventions generally. But duties “for the university.” What are these conditions. Here’s the first condition:

(1) Whenever the Employee’s duties include research or investigation, and the Invention or Plant Variety arose in the course of such research or investigation and is relevant to the general field of an inquiry to which the Employee was assigned; or

Let’s parse this condition (1). An employee is assigned to “an inquiry” and the employee’s duties include research. The employee invents, and the invention is relevant to the general field of the inquiry the employee has been assigned to. The university’s policy asserts that this invention is “made within the general scope of the Employee’s duties for the University.” If an employee’s duties do not include research, or if an employee is not assigned to an inquiry, then any invention lies outside this condition (1). Furthermore, if an employee is assigned to an inquiry, but the invention is not relevant to the general field of the inquiry, then again, the invention lies outside this condition (1). So, critical to this first condition is that an employee has been assigned to an inquiry. Without an assignment to an inquiry, the university has no claim to own inventions under condition (1).

Now, condition (2):

(2) Whenever the Invention or Plant Variety was in a substantial degree made or developed through the use of University facilities or financing, or on University time, or through the aid of University information not available to the public.

Condition (2) concerns the use of facilities and certain other university resources. Here, the standard is that the invention was “made or developed” “in a substantial degree” using these specified resources–facilities, money, time, or non-public information. The critical issue, then, for condition (2) is that the specified resources have to contribute “in a substantial degree” to the making or developing of the invention. If no university resources were used, or their use was not “in a substantial degree” involved in the making or developing of the invention, then again the university makes no claim to the invention under condition (2).

 

Let’s review. The University of Missouri patent policy declares that the university has an ownership interest in inventions made within an employee’s “general scope of duties for the university.” The policy then defines the two conditions in which this claim is met. In condition (1), the employee is assigned to an inquiry, invents, and the invention is relevant to the general field of the inquiry. In condition (2), the employee makes or develops an invention in a substantial degree using university’s facilities, financing, time, or non-public information.

To ascertain whether condition (1) applies, the university must look to see if an inventing employee has been assigned to an inquiry, and if so whether the invention is relevant to the general field of the inquiry–so, three elements: (i) is there an assignment to an inquiry? and if so, (ii) what is the general field of the inquiry? and (iii) is the invention relevant to that general field? For condition (2), the university must look to see (i) whether any resources of the university were used, and if so (ii) whether those resources were used in a substantial degree.

Given the statement of these two conditions, we can return then to the statements in policy with regard to “the general scope of duties as employee of the university” and “course of service to the university” and see that these expressions refer to the definition of “generals scope of duties” at the end of section D.1.a.–that is, either condition (1) [assigned to an inquiry] or (2) [university resources used in a substantial degree]. That is, the university’s claims are limited to condition (1) and condition (2).

The policy’s next move is to deal with all inventions not meeting either condition (1) or (2).

An Employee of the University shall be entitled to all rights resulting from any Invention or Plant Variety which was made by her/him outside the general scope of her/his University duties, as defined in Section 100.020 D.1.a;

That is, all inventions that do not meet either condition (1) or (2) are the inventor’s and the university makes no claim by policy on them. The policy continues, with examples:

for example, the University shall have no rights to Inventions or Plant Varieties developed in the course of summer or consulting employment by an employer other than the University of Missouri, and not resulting from research or information obtained from University services.

Summer employment or consulting employment is clearly not service for the university–and so would not meet condition (1)–and if the invention did not use the university’s non-public information, it would not meet condition (2). Easy enough, one would think.

If we were to put all this another way, it would be: university employees own all inventions they make except those that result when an employee is assigned to an inquiry and the invention is relevant to the general field of that inquiry or when the invention is made or developed in a substantial degree using university’s facilities, financing, time, or non-public information.

We can then look at Missouri’s representation of its policy in its materials for inventors:

MU owns all intellectual property created utilizing University facilities by an employee or student of the University of Missouri.

We can see that this statement is not true in a number of ways. First, the statement deals only partially with condition (2)–use of facilities. But it leaves out financing, time, and non-public information, so it is incomplete. But even with regard to facilities, the statement is simply not true. The whole point of condition (2) is to distinguish the use of facilities “in a substantial degree” from other use of facilities. Per policy, the university’s claim to ownership is only when facilities are used “in a substantial degree.” So the university does not have a claim to inventions simply based on the use of facilities.

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