We have thus far established the conditions upon which the University of Missouri patent policy asserts an ownership position for the university in inventions made by employees. For the claim to be made, an invention must meet either condition (1) [relevant to the general field of an assigned inquiry] or condition (2) [used university resources in a substantial degree]. Inventors must report all inventions they make.
If an inventor believes an invention is outside the university’s ownership claim, the inventor adds information on the circumstances, the inventor’s official duties, and the interest the inventor has in dealing with the university anyway. The invention report goes to the inventor’s supervisor or department head, who reviews especially the circumstances and makes a recommendation with regard to the inventor’s claim. The report then goes to the Patent Administrator, who forwards it to the Patent Committee since it involves an inventor’s claim of ownership. The Patent Committee hears from the inventor and may investigate on its own, and makes a recommendation to the university president.
If the university has no ownership claim by policy, then there’s nothing for the president to do–the president’s official actions are limited to waiver, assignment, and licensing but only with respect to patent rights that the university does have a claim to. Thus, if the university has no claim to patent rights, policy gives the university president nothing to do. Of course, if an invention is within the university’s policy claims, then the president may choose to waive the university’s claim–the university does not have to take ownership, even if an invention is within the scope of its policy claim.
Now let’s look at how the university has implemented its disclosure policy. If you love clever administrative schemes, you are in for a treat. Here’s the invention report that all inventors are required to use, Form 16c. The form has the usual requests for information–give the invention a title, describe key dates in the invention’s history, list extramural sources of funding, and the like. But there are two things deeply wrong with Form 16c, one that’s there and one that’s not. Let’s start with what’s there. At the end of the form, the university places the following long puffy statement:
Assignment and Declaration
I certify that the information contained in this Invention Disclosure Form is true, accurate and complete. Pursuant to Section 100.020.D.1 of the University’s Collected Rules and Regulations, I acknowledge and agree that I am required to assign to the University all domestic and foreign rights to any invention made by me within the general scope of my duties as an employee of the University.
The first part of the puffiness takes the form of an acknowledgement. You can see, however, that the university leaves off the critical restricting conditions (1) and (2) that define the scope of what the university policy means by “the general scope of duties to the University.” Furthermore, the university patent policy does not require assignment outright but rather stipulates that the obligation to assign arises “upon request”; that is, if and when the university determines that a disclosed invention is within the scope of condition (1) or condition (2) and that the university has determined that it will exercise its right to acquire ownership of the invention. Here’s the sequence:
- Review for circumstances
- Determination of university ownership interest
- Decision to obtain that ownership interest
- Request for assignment
This acknowledgement section, then, misrepresents the university’s policy in two material ways, and asks the inventor to “acknowledge” these misrepresentations. It gets even better in the next part:
I hereby assign to The Curators of the University of Missouri all my rights in the invention disclosed herein, including any domestic and foreign patent applications related thereto, and I agree to sign such documents as may be required for this purpose, including but not limited to an assignment of the invention to the University in a form that may be recorded, a declaration as to inventorship, and power of attorney.
Let’s point out the drafting weirdness first. The language here purports first to assign “all my rights” in the disclosed invention to the university. At the end of this statement is a required signature block. But then the statement goes on to insist that the inventor also agrees “to sign such documents as may be required for this purpose.” Well, what does the “hereby” mean, followed by a signature, if this assignment is not an effective assignment of the inventor’s rights? Apparently this assignment is not good enough to be “recorded” (meaning, one might think, in a patent office).
But the “such documents” appear also to have to do with the university’s filing of a patent application on the invention–before the invention disclosure has even been reviewed for circumstances, patentability, or the university’s interest in owning the invention. The actual list of documents to sign is incomplete (“including but not limited to”). The requirement reads as a blank check–inventors must agree to whatever the university demands. But the only thing that the statement demands is that the inventor sign over all personal rights in the invention. There’s nothing in the university’s patent policy that creates a requirement–as a condition of employment, no less–that inventors must agree to any document that the university puts in front of them to sign.
Consider how this might play out. Inventorship is a function of the claimed invention. If a person has contributed to one or more claims set out in a patent application, then that person is considered an inventor. But the university, having become the owner of the inventor, decides what claims to include in the patent application. If a person listed on the disclosure has not contributed to at least one of the claims the university has drafted, then that person has no right to sign a declaration of inventorship. Worse, if the university has cut that inventor’s work out of the patent application, and that work is also patentable, then the university is choosing to eliminate that inventor from possible royalty sharing, even while having obtained the inventor’s assignment of rights. Interesting. Can happen.
The university may claim ownership of certain inventions as a matter of policy. But that same policy as written does not give administrators freedom to demand inventor compliance with whatever patenting the university desires to undertake. Perhaps this is one more limitation of creating an obsessive-compulsory invention assignment policy, and not thinking the obsessive-compulsion through carefully. In a voluntary assignment environment, it is easy enough to arrange a bargain that includes assignment of rights and assistance in patenting or even in marketing and licensing, too. It is a package deal, so think through all the elements. But an obsessive-compulsory policy breaks the package up into demands and assertions. You will assign. We will share royalties with you in this stated way if there ever are any.
But now think about the big picture. The university requires reporting of all inventions, regardless of the university’s ownership claim. It is clear that the university’s ownership claim is narrow, restricted to two conditions. The purpose of disclosure is to determine the university’s ownership interest. Patent policy anticipates that inventors will disclose inventions that the university has no ownership interest in. Patent policy assures inventors they are “entitled to all rights” in inventions that fall outside conditions (1) and (2). But in setting up its disclosure form, the university demands assignment of all reported inventions anyway–even when its own patent policy does not give it the authority to do so. Here’s what the policy does provide (100.020.D.2.a.(1)):
The Patent Committee may prescribe the form and manner of execution of the Invention disclosure report, and such Invention reports shall be treated as restricted reports of the University.
But the university has turned the invention disclosure report into an assignment of invention. Missouri is not the only university to do this. The University of Utah recently adopted a similar approach. The University of Connecticut and University of Arkansas also have an assignment built into their disclosure forms, but with variations. The University of Missouri patent policy, however, is clear that the Patent Committee’s delegated authority is to set the form and manner of execution of the disclosure report–not assignment of inventions in which the university has no claim by policy. The whole point of the disclosure process is to permit inventors to make a case that their inventions are not within the university’s policy ownership claim, and it is the role of the Patent Committee to make a recommendation to the university president on the matter.
Here’s what the patent policy provides for assignments (100.020.D.1.a):
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.
That is, employees are obligated to assign upon request only those inventions that meet the policy’s definition of “within the general scope of duties as employee of the university”–that is, conditions (1) and (2). The university has no right by policy to demand assignment of inventions in which the university has no ownership right as a condition for reviewing those inventions to determine whether the university has an ownership right. But that’s just what Missouri is doing anyway. An inventor cannot comply with the patent policy’s requirement to disclose all inventions and not assign those inventions to the university. Think about the consequences for faculty consulting, for independent inventing, for working with startup companies. One might anticipate that a university faculty member, deciding that some work will be done outside the university (as an assured academic right), agrees to assign inventions made in consulting to a company–and follows through on that assignment. Now the faculty inventor reports the invention, as required, to the university. But cannot do so because Form 16c requires assignment of the invention, and the faculty inventor has no rights to assign.
Back in the original 1956 Missouri patent policy, there was this with regard to the Patent Committee:
In arranging with the employee upon the division of financial returns upon the patent, the committee shall take into consideration that it is the purpose of the University to encourage and recognize individual and cooperative achievement in research and investigation, and make fair provision for the employee, keeping in mind, however, that the full rights to the patent are vested in the University until other agreements are made with the employee.
But this provision has to do with inventions that the university does have a claim in. If the university has no claim, then the inventor “is entitled to all rights.” In the original 1956 policy, there was no set royalty-sharing schedule for inventions the university did claim, so it was up to the Patent Committee to work out what that royalty share ought to be. The only rights in an invention “vested in the University” are those rights in inventions to which the university states a claim. Again, conditions (1) and (2) of the patent policy. The Patent Committee reviews the validity of employee-inventor claims to ownership. There’s no mechanism in the policy for returning ownership to inventors where the university had no valid claim to ownership in the first place.
The second problem with Form 16c is one of what’s missing. The form assumes that all inventions will be owned by the university–that’s the point of requiring an assignment of invention for all disclosures of inventions. But there’s no place where the form provides inventors with the opportunity to deal with the reporting requirements if the inventor believes an invention does not meet conditions (1) or (2). There’s no place on the form for stating circumstances, or official duties, or intentions to deal with the university otherwise. There’s no place on the form, for that matter, for an inventor to make clear that the invention is not the university’s. The form is fundamentally non-responsive to the requirements for disclosure established by the university’s patent policy, which requires inventors with personal claims to include in the disclosure report specific information that Form 16c completely ignores.
The university’s patent policy does consider the problem of an inventor filing a patent application on an invention that the university does claim under condition (1) or (2), at 100.020.B:
If a patent or Plant Variety Protection application is filed upon an Invention or Plant Variety which has been made by an Employee of the University within the general scope of her/his duties as defined in Section 100.020 D.1 hereof, but which has not been reported to the Patent Committee pursuant to these regulations, title to such Invention or Plant Variety shall immediately vest in the University and the contract of employment shall be considered as an assignment of such rights, and each Employee as a condition of employment agrees to execute any assignments requested by the University.
Though this is a tangled mess of administrative goofiness, it’s clear at least that the claim that title to inventions “immediately vest” with the university applies only to those inventions that meet either condition (1) or (2): “within the general scope of her/his duties as defined in Section 100.020 D.1 hereof.” That there are three theories regarding assignment is boggling–immediate vesting, contract of employment as assignment, and later signed assignment. Well, if title vests, then what rights does an inventor have to assign? If the employment contract acts as an assignment (in some mysterious way that gratifies administrators–magical! unicorns!), then again, what’s there to assign later?
I don’t get it. If university administrators want absolute power like this, why not make it a condition of employment that each employee gives the university durable power of attorney in matters of invention? Then the university can just assign the employee’s inventions to itself without the bother of involving the employee at all and save all the policy fireworks such as asserting vesting or if not that whatever else might work or at least sounds like it works enough to persuade administrators if not also employees.
Administrators at the University of Missouri have arranged it so that it is impossible to comply with patent policy and not assign all one’s inventions to the university, even if the university has no right to those inventions by its own policy, or as a matter of equitable treatment, or even as a matter of federal patent law. No doubt university administrators think it is a great scheme. Make everyone assign their inventions and then the university decides which ones to “waive” to the inventors.
Here’s the neat thing about the Missouri scheme. The university doesn’t simply waive inventions back to inventors when it determines that it does not have an ownership claim. Instead, it requires inventors to enter into an agreement that grants the university a royalty-free license, the inventor cannot license to any company that have previously had an interest in licensing the invention, or any startup company the inventor has or might found, or any company that the inventor or immediate relatives own or have the right to obtain an ownership interest in without the university’s consent. Further, the university requires a 5% royalty from the inventor on any transfer of the invention and a 5% royalty from any company that the inventor licenses or assigns the invention to. Although the university’s patent policy says that inventors are entitled to “all rights” in their inventions not within the scope of conditions (1) and (2), the university clearly has no intention of complying with its own policy on the matter.
Puppies make better university invention managers.