University of Misery’s IP Policy Scam, 5

The distinction in the University of Missouri patent policy between the broad scope of activities that a faculty member might properly undertake in the freedom of the university and the narrow scope of claims under which the university by policy might claim ownership of inventions frames the requirement for disclosure of inventions, including the circumstances of invention, so a determination can be made whether the university’s limited conditions for asserting ownership have been met.

Here’s the university’s patent policy on disclosure of inventions (D.2.a.(1)):

Every Invention made by an Employee of the University shall be reported by such Employee to the President.

That is, every invention is to be reported, regardless of whether or not the invention meets the university’s conditions for claiming ownership. It is worth noting that the invention ownership conditions (1) and (2), the assurance that inventors own all inventions that don’t meet these two conditions, and the reporting requirement all date from 1956 and have been largely unchanged since, although the university has built up all sorts of apparatus around them, including messing with the definitions of invention and employee, and thus the introduction of capitalization. In short, employee is defined to include non-employees and invention is defined to include non-inventions. This is the usual cognitive dissonance found in university patent policies, making it all but impossible to have a normal conversation about inventions or employees.

The 1956 version of the patent policy as reported by Archie Palmer is here. In 1956, patent applications were kept secret by the US Patent Office unless a patent issued. Since 1995, however, patent applications have been published eighteen months after filing, so it is much easier to obtain information on patent applications prior to a patent issuing. Thus, some aspects of the reporting of the specifics of an invention have changed.

The scope of the reporting obligation is broad; the scope of the university’s claim to own inventions is restricted to conditions (1) [relevant to the general field of an assigned inquiry] and (2) [use university resources in a substantial degree]. Thus, the critical issue has to do with the circumstances under which any given invention has been made. The patent policy identifies three areas of special interest.

First, an inventor may have reason to believe that their invention does not meet either condition (1) or condition (2). In which case:

If the inventor believes that the Invention or Plant Variety was made outside the general scope of her/his University duties,

That is, the circumstances of the invention do not fall within condition (1) [relevant to the field of an assigned inquiry] or condition (2) [resources used in a substantial degree]…

and if he/she is unwilling to assign the rights in the Invention or Plant Variety to the University,

Because, after all, the inventor believes the invention is not within the university’s policy claim, then

he/she shall, in her/his Invention or Plant Variety report,

The inventor still must report the invention to the university, but with additional information:

request that the Patent Committee determine the respective rights of the University and the inventor in the Invention or Plant Variety,

The disclosure process at this point has a gap created by poorly done revisions to the policy (shocked face, here), but somehow the Patent Committee receives the invention report and must consider the circumstances of the invention relative to the two conditions that comprise the definition of “general scope of duties for the University.” We will get to all this in a moment. The inventor must include four additional pieces of information:

and shall also include in her/his Invention or Plant Variety report information on the following points:

1. The circumstances under which the Invention or Plant Variety was made and developed;

That is, was the inventor assigned to an inquiry? If so, is the invention relevant to the general field of that inquiry? Otherwise, the first condition cannot be met. Did the making or developing of the invention use in a substantial degree university facilities, financing, time, or non-public information? If not, then the second condition cannot be met.

2. The Employee’s official duties at the time of the making of the Invention or developing the Plant Variety;

“official” is a strange addition here. The distinction is between “official” and “unofficial” duties. “Official” duties would appear to be ones that are assigned or delegated by a formal process. That is, there should be documentation recording the assignment–assigned to an inquiry (in writing), a specific responsibility of the position (in a job description, statement of work, or employment agreement). Duties are not one’s job title or faculty appointment–duties are those things that one does in one’s position. The “official” duties are ones that one does as a result of the action of an officer of the university, made “official” through some formal process. The only thing that is relevant for the university’s claim to ownership, here, however, is whether the inventor has official duties that involve research and has been assigned to an inquiry. For faculty, assignment to an inquiry can be only voluntary, since faculty are assured by the Collected Rules and Regulations of their freedom of inquiry.

3. Whether he/she wishes a patent or Plant Variety Protection application to be prosecuted, if it should be determined that an assignment of the Invention or Plant Variety to the University is not required under Section 100.020 D.1; and

This is a special case in which the university may offer to file a patent application without receiving ownership of the invention and instead obtaining a royalty-free right to make and use the invention for the university, the state of Missouri, and the federal government. Here’s the policy statement (100.020.D.1.c):

If the University finds that an Invention or Plant Variety made by an Employee of the University outside of the general scope of her/his University duties is used or liable to be used in the public interest and executes a certificate of that effect, the Employee may, if he/she wishes to do so, request that an application for a patent or Certificate of Plant Variety Protection be filed and prosecuted at the expense of the University. Under such circumstances the Invention or Plant Variety may be manufactured and used by or for the University, State of Missouri, or the government of the United States for governmental purposes without the payment of any royalty.

That is–the invention is outside the university’s claim of ownership, but the university is willing to trade the cost of applying for a patent for a royalty-free license. I expect this is a deal that has never happened in the history of this bit of policy, but still it is an interesting variation on the theme. At some time in Missouri’s past, someone thought that it was reasonable for the university to offer support for patenting without taking an ownership position. That alone is worthy of consideration.

Finally, one more piece of information the inventor must supply in an invention report, if the inventor believes the university has no ownership claim by policy:

4. The extent to which he/she would be willing voluntarily to assign the rights in the Invention or Plant Variety to the University if it should be determined that an assignment of the Invention or Plant Variety to the University is not required under Section 100.020 D.1.

The inventor is asked to indicate, even if the invention is not within the scope of the university’s ownership claim (D.1.a. conditions (1) and (2)), the “extent” to which the inventor would assign the invention to the university anyway. This is tail-biting time, since the premise of this whole section is that the inventor is unwilling to assign the invention. Thus, “extent” must mean something more like “the terms upon which.” And there, the implication is that those terms are not the standard terms provided by policy (such as complete control of the invention by university administrators, or the imposition of a standard royalty sharing policy). In short, the inventor is asked to state any terms that might induce the inventor to assign the invention to the university for management.

Here is the part of policy, in a section on the Patent Committee, that appears to speak to this aspect of inventions made outside the university’s policy claim on ownership (100.020.E.2.e):

The Patent Committee may, when circumstances warrant, i.e., when the Invention or Plant Variety was not made in the regular course of the Employee’s duties or as a part of her/his ordinary assigned or assumed functions or when the University contribution in terms of equipment or facilities is either non-existent or minimal, recommend additional remuneration to the inventor from royalties received by the University from income realized from patent rights or Certificate of Plant Variety Protection. Such recommendation shall be made to the President for appropriate action.

Here we get an irregular “for instance” clause with instances that are not consistent with the policy’s stated conditions (1) and (2): “regular course of the Employee’s duties” is broader than research duties in an assigned inquiry; “part of ordinary assigned or assumed functions” also is broader than research duties in an assigned inquiry; and “contribution is either non-existent or minimal” is not at all the same as the meaning of “in a substantial degree”–the proper wording here would be “when the University contribution in terms of facilities, financing, time, or non-public information is less than in a substantial degree.” The adjectives “regular” and “ordinary” are strange here, too. These appear to make a distinction between usual (claimable) and unusual (not claimable) work. But the ownership claims are just the opposite–both conditions (1) and (2) call out unusual activity–assigned to an inquiry (something unusual for faculty, especially) and using university resources in a substantial degree (again, something unusual). In other words, for the policy’s ownership claim to operate, there would have to be some action out of the ordinary or regular–assigned inquiry, powerful much resources used.

It is clear that by the time university administrators get around to adding this statement (no later than the 1996 policy revision), they already don’t understand their own policy requirements or don’t want to draft consistent with those requirements. More on this in a bit.

The overall drift of the section is clear: if an invention is not within the scope of the university’s ownership claims (conditions (1) or (2)), then the Patent Committee can recommend that the inventor get a better share of royalties than otherwise. Again, I expect this has been an empty gesture in the Missouri policy, never or rarely used. Reason–university administrators claim university ownership of all inventions made by inventors within the general scope of their duties (without reference to the policy’s definition of those duties, for patent ownership purposes). Thus, it is not possible (in administrative minds) that “regular” or “ordinary” duties could be outside the broader “general scope” of duties. Empty gesture.

To sum up this part: if an inventor believes an invention lies outside the university’s ownership claim, the inventor still must disclose the invention to the university, and provide four bits of additional information–the circumstances, the inventor’s official duties, trade patenting costs for a non-exclusive university, state, and federal government license, and terms if any under which the inventor would assign the invention to the university anyway.

 

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