Thinking about projects, small and big–2

We are working our way through the idea of project–a succession of tasks to accomplish some purpose. A small project is a project in which there is just such a succession of tasks and some purpose. We can call a big project a set of small projects, where each small project supports the overall purpose to be accomplished. Supporting a small project that’s part of a big project is equivalent to supporting the big project, if only “in part”–that is, by contributing to an essential small project.

Consider a scenario. A company sponsors a small project to study the behavior of a molecule–a chlorinated paraffin, say. The molecule might be used to reduce friction between moving parts in motors. Should the study show that the molecule has desirable properties, the company expects to use the molecule to develop a lubricant. The project statement of work, however, addresses only the conduct of various tests and preparation of reports. The university’s research contract, however, requires that the university own any inventions made in the project, and grants the company sponsor the right to negotiate for at least a non-exclusive license. This university action–ownership of inventions, offer of a license–constructs a bigger university project. The university contemplates commercial use of any invention and establishes that the university will control that commercial use. The university therefore establishes, too, that in any invention, the university will necessarily seek to draft patent claims that cover commercial use of the invention–that exclude commercial use absent a license granted by the university administration.

The university in its own paper work–patent policy, research contract, patent application–makes clear that the big project in play involves development of a commercial product. If the sponsoring company refuses to commit by contract to develop such a project, then the university presents the outcome that the company will not receive a license to the invention. That license will go to a company that commits to developing commercial product based on the invention. This outcome, too, confirms the reality of the big project constructed by university documents.

The situation is not altered if the university grants a royalty-free non-exclusive license up front in a research agreement. The big project still involves the anticipation of commercial use, that the big project, whether or not it succeeds, intends to create commercial project based on the work of the project. It does not matter that there is no invention. It does not matter that the sponsor or any other company fails to negotiate a license. It does not matter that a company obtains a license but fails to create a commercial product based on the invention. The big project exists despite any of these failings. The big project exists as a necessity of the claims made by the university in its documents–patent policy, employment agreements, research policy, research contract, patent application, license documents.

This big project–every university invention should become a commercial product–exists as a consequence of university administrative choices about policy, employment, research contracting, patenting, and licensing.

This big project also exists because a company sponsoring research has a reasonable expectation that it may have access to the results of that research, and use those results in its operations. From the sponsor’s point of view, the big project might be construed in this manner: “regardless of your big project, university, if we support this small portion of that project, we expect to have a license to any invention that extends through to any commercial application based on such invention.” The license is as broad as the university’s construction of the big project. If the university’s construction of what it will own from the research is nebulously broad, and the university’s anticipation of commercial potential is nebulously grand, and the university contemplates the prospect of commercial development under a license, even if the chance of success is rather small, then the company’s license to the invention is also nebulously broad.

Let’s try again, with imagery. Let’s say I own and operate a local bakery. I help you, a faculty member at a university, develop a new cookie idea by paying for the ingredients and your time to mix them up and bake them in various ways. You invent a new cookie–a 3 dimensional cookie, not a flat one. But to develop that 3d cookie you still need to figure out better ways of formulating the batter, laying out the cookie, and baking it–so cookies can be made commercially, at high volume, with consistent quality, with minimal breakage. I’m happy, of course, with just being able to be able to make two dozen 3d cookies at a time for my customers.

But your university states that it (and you, necessarily, as its employee) are in the business of inventing 3d cookies to create commercial products and that the full agenda of the university’s project (whatever I may have funded) consists of a fundamental 3d cookie invention and then commercial development of that invention to complete the project. According to the university’s documents, the public won’t benefit from the cookie invention until there is a commercial product. This is the commitment made by the university and you, the faculty member, can’t do anything about it.

It is not enough that the 3d cookie recipe is published and that I as a sponsor have the happy joy of being able to make my own batches–even if I own a bakery and make batches for my customers, that is not the commercialization claimed as necessary by the university. Whatever way you imagined that a 3d cookie could be made, and even if you cobbled some prototypes together that baked up half decently, the university claims not only that composition and method but any of scores of variations on the composition and any of scores of variations on the method, so I cannot work out for myself a variation on the recipe or the making or the baking without coming within the scope of the university’s patent claims. The invention is not just what your lab produced. The invention is anything anticipated by the claims of the patent application that your university files based on what your lab produced.

No, wait, the invention is anything that the university defines as an invention–whether or not patentable–and claims to own under its patent policy and employment contract with you. The invention, then, might include your know-how (you cannot teach me what you know without the university’s permission), software (that includes the design constraints on 3d cookies), data (compositions of flour, grain size distribution, variable baking temperatures vs results, etc), and improvements (even if not yet made). The scope of my license is as broad as the university’s claim to ownership in the invention as the university defines it.

Now, before I can use the new recipe for 3d cookies, your university informs me that  I must negotiate a license to the 3d cookie–for which I must pay the university’s patenting costs and a royalty on the making of every 3d cookie, whether or not I sell that cookie or give it away (breakage of course excluded, so long as the crumbs are destroyed). From this–apart from the bitterness–I can see that the university really does have a big project–whether I like it or not–and expects me to continue to support that big project by paying its patenting costs, at least.

But by supporting the small project, the messing around, I have already also supported in part the big project. It doesn’t matter that there might be separate accounting for the next phase of the project–working out high volume, cost effective, baking techniques for 3d cookies. Those compositions and methods are already covered in the patent claims–even if those compositions and methods have yet to be developed and might involve additional inventive work. And any other rights the university might assert that aren’t patent rights or aren’t the rights under this particular patent are also bound up in any license I have to the 3d cookie as an invention defined by university policy and contracting with you, its employee.

The university cannot claim the invention is nebulously broad with you, and offer me a license that is nebulously broad to induce me to support your project, and then turn around and restrict the license to just the patent claims, and worse make me pay for the patenting and any commercial development that might produce yet more assets to which the university might assert control and which might exclude me from my freedom to make 3d cookies.

If I get a license to the 3d cookie, I expect get a license to every patent that derives from university ownership of the invention that would otherwise prevent me from making 3d cookies. A license to future improvements made by the university, to the extent that those improvements are based on the 3d cookie invention, to the extent that those improvements are reasonably part of the university’s big project. It is the big project that I support in part by supporting the small project. And the big project is always on, is always asserted as part of university policy. It may even be asserted as a critical public mission of the university.

Imagine. I support cookie research. A 3d cookie is invented. I get a license to it. Now the research I support ends. The university continues the project, however, and obtains additional patents on methods necessary to lay out the 3d cookie and bake it. The university claims that since I didn’t support this continuing work, I have no license to these additional patents and therefore cannot make and bake 3d cookies using any of the claimed compositions and methods. I am denied with follow-on development work the very thing that I received a license to, generally. Effectively, I see that I must fund the entire big project in order to receive a license not only to the 3d cookie but also to every possible piece of IP that the university might assert to complete its big project. It’s a clever bait and switch. I support the small project, and the small project does support the big project, but find I have to support also the big project all the way through to mass manufacturing in order to be permitted to make and bake 3d cookies for the customers of my bakery using whatever methods I might use, improve upon, or devise.

If I get a license to an invention arising in a small project, and that invention is defined broadly and is part of an anticipated and pre-committed big project, then I am not to be excluded by any other intellectual property developments of the big project, even if I no longer have the benefit of further reports or access to data from that big project. It is enough that I have supported the big project and have the benefit of a license to inventions made in the small project that the big project continues to develop.

A small project is a step in a standing big project created by the university and billed as important to the public purpose of the university and its research program. Each small project supports in part the associated, policy-required big project. Each sponsor of a small project supports in part the associated, policy-required big project. Each sponsor receiving a license to a small project invention necessarily receives a license to all subsequent claims made on the invention by work in the big project, whether the sponsor supports that subsequent work directly with more funding or not. The sponsor has already supported that subsequent work because the work of the small project that produced the invention necessarily supports that subsequent work.

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