University of Misery’s IP Policy Scam, 10

Darned! We have not yet dealt with the promised interrelationship between conception and actual reduction to practice as promised by Footnote 1 of the University of Missouri’s patent policy. It’s rather simple, generally, for a university patent policy that wants to distinguish between inventions that the university should own and all other inventions. State the conditions under which it makes sense for university administrators to bargain for ownership of inventions and when it is not. Really, there are no good reasons for university administrators to compel the assignment of inventions, though there may be good reasons in some cases for faculty to agree among themselves not to pursue patenting and there may be good reasons as well for administrators to decide not to accept ownership of inventions even when offered.

The University of Missouri patent policy, as written, gives two conditions under which university administrators may require assignment of inventions–when an invention relates to the general field of an inquiry to which an employee has been assigned, and when an invention has been made or developed in a substantial degree using university facilities, financing, time, or the university’s non-public information. But this isn’t enough for the policy. At some point in the mid-1990s, an administrator felt the need to worry “conceived or first actually reduced to practice,” probably because Bayh-Dole used this phrase and, so the administrative thinking must have gone, to comply with Bayh-Dole the university also had to claim anything that was “conceived or first actually reduced to practice.” It was silly nonsense, of course, because Bayh-Dole doesn’t require federal agencies to require universities to own any invention, and thus university patent policies don’t have to be modified to comply with Bayh-Dole or its standard patent rights clause.

The terms “conceived” and “reduced to practice” come from patent practice, where they are used to determine who was first to invent for the purposes of determining which inventor is entitled to receive a patent when multiple applications are filed claiming the same invention. An invention is “made” for patent priority purposes when it has been both conceived and then diligently reduced to practice, either by filing a patent application or by making or doing the invention to demonstrate that it does everything the inventor has invented. With this preamble, let’s look at how the University of Missouri handles the relationship between these two elements of when an invention has been made for patent priority purposes.

Interrelation between Mental and Physical Elements – As between inventors with essentially the same idea, the date of conception controls priority for the right to a patent;

It’s not the same “idea”–it’s claiming the same invention. As of March 2013 priority is determined by filing date, not date of conception. Apparently no one at the University of Missouri bothers about such stuff. This is just one problem of putting what’s law into a contract or a hard-to-change university policy statement. When the law changes, what happens to the contractual requirements or the policy? Worse, what happens when one misstates the law in the contract, without reference to the law, and then the law changes? Dunno. Seems like the contract enters fantasy land. More:

provided that he/she who first conceived the idea used reasonable diligence in perfecting and reducing her/his conception to practice. However, if the inventor who first conceived the idea is the second to reduce it to practice, he/she bears a heavy burden to prove her/his priority.

The most important thing, here, appears to be alternating the gender pronouns between he/she and her/his. This, too, is somehow out of date, as male-female dichotomies are so out of place at universities these days. In terms of substance, somehow, the interrelationship between conception and reduction to practice has to do with the heavy burden of showing why it took one inventor longer to reduce an invention to practice than someone else who claims to have conceived the same thing but later than the first inventor. What does this have to do with the definition of invention? Nothing, really. The footnote writer is trying to get at the importance of documenting conception to obtain an early priority date for patenting–except of course this whole discussion is four years past its sell-by date.

The uncorroborated testimony of the inventor on either element is insufficient alone. Therefore, sufficient records to prove both the earliest possible date of conception and diligence in assuring the concept is workable are essential.

In the rare case that the same invention is made by two different inventors, we have a footnote to deal with keeping lab notebooks. But here we are dealing with a concern for obtaining a patent, not a concern for what constitutes an invention. One might keep records now to deal with possible derivation claims–but those would be a different sort of record, and apparently nothing so important that the University of Missouri might update their patent policy over the matter.

The underlying issue is one that’s not addressed by the patent policy. The patent policy requires disclosure of inventions, so it is useful to define invention so people know what they are to report. The patent policy makes a university claim of ownership to some of these inventions. Define clearly the conditions of that university claim–which again the policy does. That’s fair enough. But this footnote is about keeping records so that for those inventions that the university does claim, in the rare case of competing claims to the invention, the university gets the benefit of an early priority date and can rebut claims that the university and its inventors were not diligent in attempting to reduce the invention to practice. This is all strange. First, the university could establish a priority date by filing a patent application, so why not press inventors to report inventions as soon as possible? The implication of the footnote’s fuss about priority dates and diligence in reduction to practice is that inventors won’t report promptly and then the university (in some rare case) might lose the chance to obtain a patent.

The upshot, then, is that in a footnote to a definition, the university attempts to dictate how faculty and other researchers keep records of their work:

Accordingly, any project work or research out of which Invention rights may arise should be documented by contemporaneous maintenance of a laboratory notebook-diary in which periodic entries are made describing the work accomplished.

This requirement is overbroad. “Invention” is not defined to be any invention that the university has an ownership claim to. The requirement should only apply to research or development activities that might result in an invention to which the university has an ownership claim–that is, once someone is assigned to an inquiry or university resources are allocated specially (or at least in a substantial degree) to support the making or developing of an invention (say, actual reduction to practice). Otherwise, inventors by policy have “all rights” in their inventions, and that would appear to include how they document their work. If the university wants to give general advice to inventors, that’s something worthy. But a footnote to a definition in a policy that’s part of an employment contract is not the place for it.

Each entry should be dated and signed by the persons actually doing the work recited. The notebook-diary also should be read and signed periodically as “witnessed” by one or more associates of the inventor who are not engaged in the work but who are capable of understanding the descriptions recited and can testify as to their understanding of the concepts therein disclosed at the time of their signatures. Such a witnessed record may be vital in obtaining or defending the rights of the inventor and of the University should others assert prior Invention.

These are lab notebook management practices. If a university wants its employees to follow these practices, then put the requirement in the document in which an employee is assigned to an inquiry or gains access to special university resources to develop an invention that hasn’t yet been reduced to practice.

The next best evidence would be a timely, complete, and accurate Invention report in accordance with these Patent Regulations.

Except that these patent regulations don’t provide any information with regard to what an invention report should entail with regard to any actual invention. All that is pushed into whatever the Patent Committee comes up with by way of the manner of reporting. The focus of the patent policy is on determining the circumstances of the invention–so the university can decide on whether it has an ownership claim, not so anyone can determine whether an invention is patentable or to establish a priority date.

For all this little Footnote 1 discourse on conception and reduction to practice and its utter goofiness regarding “pure” reduction to practice and “incomplete perfection,” all we get is advice that keeping good lab notebooks is important in the rare case that two competing inventors file patent applications on the same invention. In first-to-file patent regimes, all this advice about lab notebooks is misdirected.

The actual problem for a compulsory policy is to state when an invention must be reported. At the time a patent application is prepared? That makes some sense, as then the invention is clearly defined and constructive reduced to practice. At the time that a patent issues? That, too, makes some sense, but if the university has a claim of ownership and the inventors or others have paid for the patent work, that might make for a hissy fit. What about when an invention has been made–both conceived and actually reduced to practice. That was what the 1956 University of Missouri patent policy recommended. For the 1956 Missouri patent policy, inventions were to be reported when they were patentable–that is fully conceived and preferably also actually reduced to practice.

By the 1996 patent policy, with its strange definition of invention to mean conception of an idea or concept without reference to patentability, we are faced with a troubling problem. Must one disclose all ideas that might eventually become patentable? Is the university claiming the right to control ideas so it can make those ideas become patentable inventions? It’s one thing to give general advice that in research settings, keeping good laboratory records is worthwhile. We might also recommend that birds flap their wings from time to time if they wish to remain in flight. It is another thing entirely, however, to require laboratory record keeping in a manner suited to establishing a priority date for earliest to invent regardless of whether someone is intent on inventing. If one is hired to invent, then one keeps invention-directed records. In the Missouri patent policy scheme, that would be “assigned to an inquiry” under condition (1).

Clearly university administrators want to own and profit from patents on inventions made by faculty, staff, and students. They make the patent policy wag the entire university’s research and creative programs to expand the scope of their claims. And they do it with a goofball definition with an even goofier footnote. And they let this goofy policy go on for four years after the patent law has changed to give them a good excuse to get rid of all this nonsense in their policy.

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