Let’s consider “big” projects. A project can be bigger than any particular part of it described by a particular budget to support specific work. Similarly, an invention can be bigger than any given patent filed on some part of it. We will get to inventions in a bit. These are hugely important distinctions. “Big” distinctions! Why? They make all the difference in determining the scope of a license to inventions offered to sponsors of projects.
University administrators, as they have revised their patent and research policies, and have instituted systematic efforts to commercialize inventions, especially using monopoly patent licensing, have turned otherwise small projects into big, institutionally required projects. That’s the reality of the formal documents and the repeated public assertions. If written policies and contracts matter, then university administrators are bound to outcomes involving licensing of inventions that might surprise even them. If they disclaim the surprise, then they are involved in fraud and deception, a culture of lies and untruth. It really is that stark a set of options. Let’s work through things. I will show you what I mean and you can decide for yourself.
Let’s call a “small” project one that is specified by a bounded statement of work. That statement could be on an informal description of the project, in a grant proposal, or in a funding agreement. “This is the work we will do.” Typically, unless the project is utterly simple, the work is described in phases, with a time period and budget for each phase. The work is specified, with a justification for the work (why should this work be done at a university, to advance science, for the public benefit, and all), some reports, and perhaps setting some things that are intended to be produced (data, software, a collection, a refined protocol, a design). The funding agreement also defines the deliverables from the research–what the sponsor or the public should receive: again, technical information (reports, data), software, publications, inventions, prototypes.
A “big” project, by contrast, may consist of a number of small projects. Where a small project might be “to test 100 compounds in our collection for bioactivity,” a big project might be to test 100 compounds, select three to five that show promise, synthesize a bunch of chemical cognates of these, test all these compounds more extensively, and if things prove out, put one into a drug development process to produce a commercial product.” In the big project, the first small project–discovery of compounds or classes of compounds, is just an important first step. A big project then might be depicted by “phases” that together provide a vision of what is possible. The outcome of the phases, taken together, provides the justification for funding the first phase, a first small project.
We might say that the first small project necessarily supports the rest of the project. We might say that the first small project is essential to the entire project. We might say that there’s not much point, really, in supporting the first small project unless there’s an expectation that it is part of a big project, with the outcomes anticipated for the big project. The justification for a small first project is the vision of the big project in its entirety. The justification for funding the small project is the merit of the big project of which the small project is a part. If one seeks to discover compounds with bioactivity for the purpose of developing a therapeutic drug, it is the prospect of the therapy that has been used to justify the search for those compounds.
If someone supports a small project, then whatever is done is the end of it. But if someone supports a small project that is part of a big project, then that someone is also supporting the big project. Small project support can thus also be big project support. It depends on how projects are laid out, what those proposing the projects claim for them. In a university setting, both the principal investigator and the university administration may make claims about a project. The principal investigator may make claims in a research proposal, or in responding to a call for proposals, and may make claims in publications and announcements. A university administration may make claims in press releases, in university policy statements, in guides for inventors, in reports to government officials, in statements to the public, and in patent applications. A sponsor of research may rely on any of these representations to form an idea of what the purpose of the sponsor’s funding is to be–what the sponsor is reasonably led to believe that it is supporting.
If a university administration insists that it owns all inventions made in sponsored research, and that the university is committed to commercializing those inventions, then–and here is a necessary result–then all research proposals carry this claim as a formal, legal expansion of the project undertaken by the university with the sponsor’s support.
It would take an express statement by the sponsor to disclaim and prevent this expansion of its small project into an administratively constructed big project that includes commercialization via a patent monopoly. If commercialization via a patent monopoly is baked into university policy and is systematically practiced, then any small project is necessarily appended to a big project that includes such commercial development. The proposed outcome is a commercial product produced under a licensed monopoly. Whatever the outcome of the small project, that small project exists, by operation of the university’s own formal, written claims, to be part of a big project. A small project may merely discover. But that project, placed at a university with a formal commitment to commercialization, is joined to and justified by the big project. The university gives the principal investigator and inventors no choice in the matter.
Do you see the distinction now? A small project–a statement of work and a budget, with the outcome being whatever gets revealed. Call it a tiny bit of potential science. A big project–a standing claim that anything invented, even if not patentable, must be dedicated to a systematic institutional effort to commercialize, to make a profitable product based on whatever gets revealed, collected, built, invented, tested. The small project approved by the university administration supports the big project to which it is co-joined by university administrative policy and practice.
This is a fundamental distinction. When a sponsor supports a project at a university, the sponsor necessarily also supports the big project, even if the sponsor’s funding is directed only at a small project. This is the import of “in whole or in part.” A sponsor may fund the entirety of a small project, but since the small project directly supports the work of the big project, the sponsor is also funding that big project “in part” and has a legitimate, equitable claim to the outcome of the big project as announced by the university in its formal policies, contracts, press releases, and assertions to government officials.