If the University of Missouri patent policy were aiming to provide helpful information to university personnel at a loss to understand what patents are, that would be one thing. In that case, the policy would not need to define invention so much as provide a discussion of what makes an invention patentable and therefore of interest to the policy (assuming that the policy intends to restrict itself to patentable inventions). And if that were the case, then the best place to do that is in a little educational booklet or something. There’s no need for a dissertation–especially a bad one–pressed into policy language.
There is an added complication. The Missouri policy is not merely a statement of institutional interest and delegation of authority. The policy goes out of its way to insist that it is part of the employment contract with each employee:
With respect to Employees, these patent and plant variety regulations form a part of the employment contract. These regulations constitute a condition of employment of all Employees of the University, and shall be effective as to all Inventions and Plant Varieties made during any period of employment from and after the date of their adoption.
There’s a difference between a university expecting employees to follow a policy and making that policy a matter of contract, and especially an employment contract, and especially when those who are employed include university faculty who have tenure. In the first instance–policy as delegation of authority, statement of objectives, and establishment of procedure–if employees fail to follow a policy, the university may take disciplinary action–letter of censure, demotion, demand restitution, termination of employment. In the second instance, however–where a policy statement has been made the subject of a contract–while the university may now take action based in addition on breach of contract if an employee fails to follow the policy, the university is also exposed to a contractual claim for breach if the university fails to follow its own policy. Furthermore, since the policy has been declared part of a contract, the university is not at liberty to change the contract with regard to any given employee without that employee’s concurrence. That’s the upshot of the ruling in the Shaw case:
When a public employer chooses instead to enter into a written contract with its employee (assuming the contract is not contrary to public policy), it cannot later deny the employee the means to enforce that agreement.
We also reject the University’s argument that the Patent Policy is a mere personnel policy which it may modify unilaterally. Although the University is entitled to revise its Patent Policy, it cannot do so with respect to Shaw because of its written agreement with him.
The university may change its patent policy whenever it wants, but in changing its policy it does not change the contract made with employees incorporating the prior version of the policy. If the university’s employment contract allows the university to terminate an employee at will, then of course the university might threaten to fire employees who do not accept the new patent policy. But even then, if the employee agrees to stay on, and the university has added new obligations for employees under the new policy, then there ought to be consideration for these new obligations–higher pay, for instance, or better benefits. Tenured university faculty, however, are not at-will employees. The university cannot fire them on a whim, and therefore cannot change patent policy on a whim and threaten to fire all faculty members who refuse to accept the new policy as part of their employment contract.
These are bothersome issues that university administrators tend to ignore. When a university introduces a definition into policy and makes that policy part of a contract, then the definition is not merely informational–it is a formal definition that replaces what otherwise would have been the ordinary meaning of a word such as “invention.” Invention becomes just what the definition says it is, to the extent that this new definition makes reasonable sense. In the Missouri policy, an invention consists of “conception” and “reduction to practice” without regard to whether the invention is patentable–that is, directed to the subject matter and conditions set out in federal patent law. It does not matter that an invention worthy of a patent policy ought to be new, useful, and non-obvious, for instance. While Missouri’s policy refers to patents, Missouri’s definition of invention ignores patentability, even while using terms derived from patent law in a Dr. Frankenstein manner.
To understand what is going on (and to see the policy horror of it), we have to read the rest of the definition of “invention”:
As used in these regulations, the term “Invention” means existence of either the completed mental element or both the mental and physical elements, whichever situation first occurs. (See footnote 1 at end of Section 100.020.)
Not only is there a definition of invention in terms of conception and reduction to practice, there’s a second definition that displaces the first so that invention means either conception or both conception and reduction to practice.
This extra definition makes no sense whatsoever in terms of patentable inventions, since an invention is not patentable until it has been reduced to practice–either actually reduced to practice by building or following the steps of the invention or constructively reduced to practice by describing the invention in sufficient detail that one with ordinary skill in the art can practice the invention without that undue experimentation. One form of constructive reduction to practice is, then, a patent application. But this extra definition says conception is sufficient without any actual reduction to practice (the “physical” element).
The sad reality is that there can be no “reduction to practice” of an invention without there also being a “mental element.” It may be that conception and reduction to practice occur at the same time, but there is never going to be a situation in which “conception and reduction to practice” takes place before “conception.” Thus, “whichever situation first occurs” is pure blathering nonsense. It is written because it sounds good to a tin legal ear. That’s about it.
But we are not done with definitions. We get referred by the extra definition to a footnote on the definition. It’s a run-on definition.
Here’s footnote 1. Brace yourself. It is long and winding and doesn’t lead to the door of anyone interesting. Maybe to a Dr. Frankenstein constructing monstrous patent policies from the dead textual body parts of laws, regulations, and contracts. We will take it bit by bit to make it go down easier:
Footnote 1 – The elements of Invention, and their interrelationship may be described generally as follows:
Okay, a discourse on elements of “Invention.”
Conception of the idea – This involves complete performance of the mental part of the inventive act.
Under first to file rules now in place, conception does not much matter. Conception mattered for determining priority of invention–who conceived first and then went on to reduce to practice? Keep in mind, then, we may as well be discussing arcanities about Windows 95. What about having to use that “Start” menu to power off? The text above regarding “complete performance” is from a law case and likely comes via the MPEP:
Conception has been defined as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….”
So far, our discussion consists of an unattributed quote from case law. Nice. Next:
All that remains is to convert the idea into reality by reducing it to practice. Both what is to be accomplished and how it is to be accomplished are necessary. Knowledge of a desirable result alone is not enough; nor is a means for an unknown result.
That’s a mighty big “all.” Again, unattributed quotes from case law mashed together. Why do we need to know this stuff to understand the policy definition of “invention”?
Additional statutory requirements for an Invention to be found patentable, such as novelty and utility, are exceedingly complex concepts and beyond the scope of this summary.
Clearly, the focus of the definition of “invention” does not have to do with patentability. How strange! The definition is in a patent policy and administrators cannot bring themselves to address patentability in their definition of invention. Instead they fixate on when an invention has been made for patent purposes, without any constraint to patenting, and dismiss the critical matters of what’s new and useful, claiming these are too complicated for a discussion of invention. Of course, that’s because what’s new and useful–and directed at statutory subject matter–is exactly what matters for patentable inventions, but not for “invention” used in any random administrative way.
Similarly, other patentability bars, such as prior use or disclosure of the Invention more than one year prior to patent application, are not presented due to complexity of the matters involved.
Now the footnote has gone to the extreme of stating what it states it will not state. These other patentability bars–using an invention or disclosing an invention more than one year prior to filing a patent application–are just that. Again, this has nothing to do with a definition of “invention” and everything to do with whether a given invention is eligible for patenting. If a patent policy were to state–the university is interested only in patentable inventions; please, don’t flood us with unpatentable stuff–that would be a good, clear start.
Now for reduction to practice:
Reduction to Practice – This involves creating either actual or constructive proof that the idea actually works, can exist, or the like.
Now we sling jargon around. “Proof” is rather over the top. “Demonstration” might be better. “Demonstration of each of the elements of the invention” might also work. But why does it matter for the policy definition of “invention”? Since “invention” means either “conception” or “conception and reduction to practice,” in effect, what matters is “conception.” If an invention has been conceived, then it must be reported to the university. By reporting the invention–if the requirements for reporting are those for a patent application–the invention is necessarily constructive reduced to practice, whatever else may be going on. Actual reduction to practice is just dribble after the fact, as far as policy is concerned. If “invention” is defined as either conception or conception and actual reduction to practice (getting all physical with the elements), then “invention” will always be conception.
“Actual” and “constructive” are from patent case law. Watch how footnote 1 flails around about it. The footnote starts with the idea of “purely” and then gets tangled up in knots about whether “complete perfection” is required in actual reduction to practice, as if “perfection” admits of degrees and “incomplete perfection” is all that is necessary:
Purely actual reduction to practice is creating a physical embodiment of the idea, although complete perfection is not required. Purely constructive reduction to practice results when a patent application covering the completed concept is accepted by the patent office.
“Purely” has absolutely no purpose here other than to point out the confused mind of the writer of footnote 1 and the uncritical eye of anyone who reviewed or approved this policy statement. None of this matters for the university’s invention reporting or ownership claims. None of this matters after the U.S. went to a first-to-file patent system. Why is any of this still in the Missouri patent policy? Are folks there asleep at the wheel? or do they enjoy working with obsolete concepts defined in nonsensical ways?
Apparently “purely” is part of a larger theory about reduction to practice–though here the theory has little to do with patenting reality. A patent application has nothing to do with proving “practicality” or even “usefulness.” And a patent application does not, on its own, meet any standard for providing a “sufficient” disclosure of the invention.
The theory is that an acceptable filing is both conclusive proof of practicality and a sufficient disclosure of the concept in the application papers that one with ordinary skills in the arts involved would be able to practice the Invention.
Here is the MPEP, again, describing a situation in which a patent application was filed, and then abandoned:
“While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice. The filing of the original application is, however, evidence of conception of the invention.”
You can see that the word “theoretically” was used in the case quoted by the MPEP, and that apparently is turned into “the theory” of the writer of footnote 1. Why this particular part of the MPEP is so fascinating to require a footnote discourse in a patent policy is beyond my understanding. It’s rather like reading a freshman comp essay on a topic that the writer doesn’t get and so just re-writes sources hoping to get close. The MPEP distinguishes between evidence of conception and establishing a priority date for an invention that meets both conception and reduction to practice based on the filing of a patent application. Funny how the statutory bar for an invention being publicly used (“prior use,” in the inexact words of footnote 1) is too complex, but we can lose ourselves in a purity argument over whether an abandoned patent application establishes a priority date for an invention.
Here is the upshot for our Missouri patent policy Footnote 1 writer:
Most often, sufficient reduction to practice is neither purely actual nor purely constructive.
A truly bizarre conclusion for a discussion that has next to nothing to do with the definition of invention. Nothing here provides any guidance to university officials with regard to what inventions are claimed by the university or what inventions are to be reported, or when. Besides, the footnote is at least four years obsolete, but then who at a university bothers to update their patent policies?