University of Utah’s Mount Stupid Disclosure Claim, 2

We are working through a statement by the University of Utah regarding disclosure. We have got through one paragraph, and now are headed to the second. Unfortunately, the snark restrictor on my WordPress editor has failed and snark keeps popping out–more than usual. I’ve tried to strike through most of it. Gosh, it’s just hard to catch it all.

Thus, the shallow pool of the first paragraph. Now for deeper waters of the second paragraph of the university’s guidance. Snark controls have become entirely unreliable at this point.

Invention disclosure is critically important for all projects, especially where any portion of the funding comes from the federal government, private foundation, or commercial sponsor. Federal law requires prompt disclosure and the University, investigators, and involved companies could lose very significant rights if disclosures are not promptly made.

The first sentence is mildly incoherent. Invention disclosure is “critically important.” Okay. Obviously, since all inventions must pass through the “portal” (Per me si va ne la città dolenta, per me si va ne l’etterno dolore, per me si va tra la perduta gente… lasciate ogne speranza, voi ch’intrate–Inferno, Canto III), it’s important that they do so. But look at the construction–“critically important” for everything… especially…. How can something that’s critically important in general be especially important on top of that for anything? Only if “critically” doesn’t mean “critically.” It is especially important to disclose inventions if funding comes from federal, private, or commercial sponsors. Not so much for, say, state government or foreign government (not federal) or from donations or the university’s own funds–for those sources of support, invention disclosure is merely “critical.”

The point that is being attempted, perhaps, is that when a research funding agreement requires all inventions made in a project to be reported, then it’s a really sporting move to comply. Why is that point so difficult to express at Utah?

Now for the zinger: “Federal law requires prompt disclosure.” Here we have something that is not merely wrong, it is deceptively wrong, incompetently wrong. Again, we have just been informed that disclosure is “critically important” for all projects, especially projects funded with external money. Not just federal money, but also foundation money and “commercial” money. Now we are told federal law requires prompt disclosure. What can we make of this?

Perhaps this is a reference to the Bayh-Dole Act. If so, it’s still wrong. Bayh-Dole concerns only inventions arising in federally supported research or development, so it cannot possibly have anything to say about reporting inventions in projects funded by foundations or companies. And beyond that, Bayh-Dole does not require invention disclosure. Bayh-Dole requires federal agencies to use a default patent rights clause, and Bayh-Dole requires in that patent rights clause that a contractor–there, meaning the university or other nonprofit–must report inventions that are reported to them and that they own and that are or may be patentable (i.e, a “subject invention.” There’s nothing in Bayh-Dole about inventors reporting inventions to contractors. Go look. I’ll wait. Fuss around with 35 USC 202 all you want. Oh, here’s a link. You might start with 202(c)(1):

(1) That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time

That’s as close as you will get. But really, go look for it. Even there, it’s not federal law–it’s a law that requires what must be in a yet-to-be drafted patent rights clause to be included in a funding agreement–so, a provision in a federal contract. The “after it becomes known” to patent administrators is where one would expect a reference to a requirement that inventors disclose, or that the university must have a policy that requires inventors to disclose, or a patent agreement that requires it. Not in Bayh-Dole.

Instead, one has to go the standard patent rights clause at 37 CFR 401.14(a)(f)(2) to find where the inventor disclosure requirement is stashed–even though Bayh-Dole does not specify this (f)(2) requirement. And the patent rights clause at (f)(2) does not require inventors to disclose. Take a breath. It requires the university to require inventors to make a written agreement that they will disclose subject inventions. Here is just the first part of (f)(2):

The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract . . . .

So it is the university that must require disclosure by inventors, and not federal law and not even the patent rights clause. But folks at Utah cannot get this right to save their souls. We might well abandon all  hope. Bayh-Dole is just to complicated, to intricate a mechanism for these people to follow.  Uh, sorry. Snark controller failed briefly.

But the Utah claim is broader than federally funded project. Utah claims that federal law requires invention disclosure. This is simply nuts. Apart from Bayh-Dole, there is no federal law that requires inventors to disclose inventions to their employers. Even Utah state law–the Employment Inventions Act, Utah Code 34-39–doesn’t require inventors to disclose inventions. Instead, it sets out what invention agreements are enforceable.

And there in 34-39, while we are in this deep, we have a chance to take a look at what Utah does require. First, 34-39. The first section lays out what constitutes an “employment” invention–one that an employer may have a legitimate interest in as a condition of employment or continued employment. Then we get what agreements are not enforceable:

(1) An employment agreement between an employee and his employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is:
(a) created by the employee entirely on his own time; and
(b) not an employment invention.

So, two conditions–own time and not an “employment” invention. Back to the first section, then, for the laundry list of what constitutes an “employment” invention:

(1) “Employment invention” means any invention or part thereof conceived, developed, reduced to practice, or created by an employee which is:

(a) conceived, developed, reduced to practice, or created by the employee:

(i) within the scope of his employment;
(ii) on his employer’s time; or
(iii) with the aid, assistance, or use of any of his employer’s property, equipment, facilities, supplies, resources, or intellectual property;

(b) the result of any work, services, or duties performed by an employee for his employer;

(c) related to the industry or trade of the employer; or

(d) related to the current or demonstrably anticipated business, research, or development of the employer

Now it’s difficult to map this list from your typical company employer to a university, and within that map to a university “employing” faculty members, who otherwise have academic freedom, which includes freedom of research. The university, it turns out, does not generally assign faculty to research projects, does not review and approve their work, does not control their collaborations, and does not control their publications. The university does not act as an employer for most research undertaken by faculty, even when there is extramural funding involved. This reality necessarily narrows “scope of employment” for faculty members to those activities in which a faculty member agrees to act as the servant to the university’s direction.

Don’t believe me? Well, check out Utah policy 6-316:

Because thought and understanding flourish in a climate of intellectual freedom; because the pursuit of truth is primarily a personal enterprise, a code of faculty responsibility must be strongly anchored to principles of intellectual freedom and personal autonomy.

A faculty member is primarily a teacher and a scholar.

Faculty members whose commitments to the university include research, publication, or other professional endeavors must exercise reasonable care to discharge their agreed commitments.

These are of course just selections. But go look for yourself. It takes some malicious effort to twist the policy around to say the opposite of what it says–for instance by asserting that

Faculty members must not intentionally violate current university rules and regulations.

Must mean that the university can require anything, regardless of the policy on a faculty member’s rights (also, it behooves faculty members to know nothing about university policy and so avoid intentionally doing anything to violate it!).

Thus prepared, we can go down the list laid out by state law:

Has a faculty member

  • accepted university assignment of task and control? (scope of employment)
  • done the work on time controlled and paid for by the university? (university time)
  • used the university’s “property, equipment, facilities, supplies, resources, or intellectual property”? (property)

For the first condition, there would have to be some record of an agreement to give up academic freedom in favor of a special assignment to work at the direction of university administrators. For the second condition, there would have to be some record of time-keeping for pay. This doesn’t happen unless there is some requirement–such as in a grant funding agreement, that a faculty member will devote a given amount of time to the grant-funded work. And that time is time for which the university *releases* the faculty member from *university duties*. Finally, as to property, noticeably absent is “money”–though one might assert that money must be in some category–property or resources, say. But the money part is actually tied up with “employer’s time,” which follows the time=money equation (that’s the payment part–whether salary or hourly) and the purchase of property and whatnot (that’s the resources part–that the employer’s money purchases property and owned by the employer).

Three additional elements:

(b) the result of any work, services, or duties performed by an employee for his employer;

This is the “made in the course” argument, as distinct from the “scope of” argument. But here, too, the faculty member must have chosen to act as an employee, doing work “for his employer.” Most faculty, most of the time, do not make such a choice, even if for other duties they agree to be employees, such as attending graduation ceremonies or showing up to teach their classes, or turning in their grades on time.

(c) related to the industry or trade of the employer; or

This one is easy, really. A university’s “industry” or “trade” is the provision of instruction, perhaps with the extension of providing resources for the conduct of research. But that’s theory. Here’s what the ordinance (of the State of Deseret) provides for the establishment of the University of Deseret (1850):

 

 

 

 

 

 

The University of Deseret becomes the University of Utah. I know, there must be intervening clutter, but the basic charter is for the Chancellor and Regents to transact “all business needful to the prosperity of the University in advancing all useful and fine arts and sciences….” The industry or trade of the university was–perhaps still is–“advancing all useful and fine arts and sciences.” It is strange to think that “commercializing technology and ventures” is the same thing–though one can see how to squeeze one idea through the hole of the other. Of course, if every company adopted the policy that in addition to making cupcakes or unplugging drain lines, it was also in the business of commercializing anything its employees happened to invent, then the state’s law would be nonsense. Perhaps that’s the case.

In any event, there’s a good argument that Utah’s trade is not commercializing technology and ventures, and if it indeed insisted that the university was involved in such trade, the university would open itself up to a fat tax liability from all of its research activities–those activities, funneled through the portal to The Commercialization Engine–would all become themselves commercial activities. That’s what calling inventions “early stage” requires.

(d) related to the current or demonstrably anticipated business, research, or development of the employer

Again, we have that dratted “employer” limitation. The university hosts all sorts of research activity, but most of that activity is not “of the employer”–that is, that research activity itself is not “owned by” the employer, controlled by the employer, done at the direction of the employer. Thus, while pretty much anything that any one faculty member might do could be construed (by a happy but malicious administrator) to mean that everything relates somehow to a current or demonstrably anticipated activity of the university, in reality (I know, “may you go to court and believe you are right”) the only research that matters is the research that is owned by the university (and we are talking the research activity, not a claim on its inventive results–the whole point of the law is to establish what claims are enforceable, so those claims cannot be assumed in “of the employer”).

There are more malicious objections (“business = commercialization”; “development includes The Commercialization Engine”; “anticipated means anything that would be permitted as a research activity”), but let’s set them aside for the black knight at the crossing.

Not done yet. More tomorrow. Snark meter wobbly.

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