University of Utah’s Mount Stupid Disclosure Claim, 3

Now let’s look at what the University of Utah requires by way of assignment. My snark controls have apparently failed. I will try to line out at least some of the snark. Here is a link to the template Assignment Agreement (warning, the link downloads a Word document). The template gives as author Amy Wildermuth, presently identified as the university’s “chief sustainability officer” and a law professor. While there may have been changes to the template, here’s what she has drafted (or at least what she left her name on–geez folks, at least convert your files to pdf or at least purge the identifying information in Word before posting):

As part of my participation in University Research, I agree to the following:

1. Circumstances Under Which University Has Ownership of Intellectual Property. Pursuant to this Assignment, I agree to assign, and do hereby assign, to the University all of my rights, title and interests in and to the intellectual property described below that I create, alone or in cooperation with others, under any of the following circumstances:

Here we have the awful “present assignment” language that indicates a lack of understanding of Justice Breyer’s dissent in Stanford v Roche. A typical condition for university-based lawyers. But no matter that Breyer argued that present promises to assign future inventions should not be magically different from present assignments of future inventions. Let’s look at what Utah claims:

a. I create the intellectual property in connection with research supported or funded by or through the University; for example, commercially sponsored research and federally funded research (“University Research”);

We will get to the laughable but otherwise sad definition of intellectual property in a bit, but for now, it’s enough to note that the assignment is broadly drafted–“in connection with” is wildly broad. “In connection with” is not “within the scope” of an extramural research contract or even work assigned by the university and so “on the university’s time.” For that matter, “in connection with” is not even “with the aid of” university funding. The operative connective is “in connection with.” One could sit at home and have a realization that the project at the university was going off in an uninteresting direction. The realization would be “in connection with” the supported research but not within the scope of that research or within one’s university assignment (“we assign you to discover how wrong we have been to assign you to this work”). On the face of it, the claim is broader than Utah state invention law permits. I know. Who cares?

And we may point out as well that Utah’s condition defies Bayh-Dole’s standard patent rights clause’s (f)(2) requirement, which requires the university to delegate to inventors responsibility for disclosure of inventions and establishing the government’s rights. Inventors cannot establish the government’s rights if the university refuses to delegate that right to them and instead claims that ownership of inventions has been previously obligated to the university as a condition of participation in the research. That’s what (f)(2) and (g)(1) preclude. Can’t happen for research conducted under a federal funding agreement. At least not in the real world. Pass through the Utah portal of stupid, however, and things change. More:

b. I create the intellectual property using University resources other than property, equipment, facilities, supplies or other resources the University makes available to the general public (for example, library facilities and resources) or that my University department or unit customarily makes available to my colleagues and me; for example, office furnishings, office supplies, computers, communications equipment and administrative support (“Non-Incidental Use of University Resources”);

It is relieving that office furnishings can be used to create inventions that the university might not claim. That would be fun to witness–“Smithers! Have you cut up another filing cabinet to build a prototype?!” We should be relieved that Utah has seen it appropriate not to claim inventions when conceived while the inventor sat in a university-supplied chair. But otherwise, the claim is again broad–to all use of “University resources”–but here might appear to be within the scope of the state law’s “aid . . . of his employer’s . . . resources” condition. But what’s left out is any distinction between an employer’s resources and University resources. These are not identical, since the university is not necessarily the employer of faculty when it comes to their research. Furthermore, the university may allocate resources to a research project on conditions other than that of an employer. For instance, in federally supported research, a university assures the federal government that it will release for use in the project the required facilities and equipment, for which the university is compensated with an F&A payment. Those resources are obligated as a condition of the grant. They are not the “employer’s” resources any longer, even if they fit in a larger abstraction labeled “University resources.” There is no quid pro quo–“if you use these resources, you must assign all intellectual property to the university, and hereby do so.” The resources have already been obligated. (f)(2) controls–if a university ever complied with (f)(2).

One more condition:

c. I create the intellectual property while I am a University employee, and the intellectual property arises within my University area of expertise (“University Area of Expertise”). If I am a faculty member, including a tenure-line faculty member or a career-line faculty member, my University Area of Expertise includes my specialized skills or expertise, as determined only by the instructional, clinical and research activities that I perform or have recently performed for the University. If I am an administrative officer, staff member (including a student-employee), or a non-faculty academic employee, my University Area of Expertise includes only the specialized skills or expertise I must have to perform my University duties and responsibilities.

I’ve boldfaced the bombast the non-enforceable elements. State law is clear that for such agreements to be enforceable, the invention must relate to the “industry or trade of the employer”–not to the expertise of the employee. As for the employee, the conditions have to do with scope of employment, course of employment, and time controlled by the employer. There’s nothing in state law about an employee’s area of expertise, nothing about intellectual property created merely at the same time that one is also an “employee.” “University Area of Expertise” clearly is not “scope of employment.” If it were, why go to all the bother of creating a new, bespoke definition? Why not rely on “scope of employment”? Ah, because the university aims to enforce what state law says is unenforceable.

“Area of Expertise” (without the “University”) is a defined term in Utah’s Patents and Inventions policy (7-002), where we find the following awfulness statement:

Questions regarding whether a particular invention arises within the scope of an inventor’s area of expertise for purposes of this policy will be referred to the Director of the Technology Commercialization Office (“TCO”), who will make a determination in consultation with the inventor and his or her department chair.

Sure–the director of the technology transfer office decides what is in a faculty member’s “Area of Expertise.” And if they don’t like it, then there’s a waste-your-energy procedure by which the vice president for research makes the decision. After you figure out who reports to whom, you see that there’s nothing for it but submission or litigation:

In the event the inventor, the TCO Director and department chair disagree regarding the inventor’s area of expertise, the determination will be made by the vice president for research, in consultation with the inventor, the TCO Director and the department chair.

Interpretation: “We can make your life miserable, or we can make it even more miserable.”

Just to pack it home, the template assignment includes the following:

Intellectual property that I create which satisfies one or more of the circumstances described above will be subject to this Assignment, even though a party other than the University has provided personnel, funds or other resources in the creation of that intellectual property.

Thus, inventions made “while” an inventor is also a university employee and within that “University Area of Expertise” are claimed by (and apparently assigned to) the university even if the invention is not made with university resources, not on university time, not within one’s scope of employment. Yes, the template does reference “unique” circumstances–but even there, the requirement is that there must be a consulting agreement or work for others–and those requirements are also walked back with greasy talk. One clearly cannot do anything for oneself in one’s area of “expertise.” Talk about anti-competitive, unenforceable overreach. What an amazingly horrid gesture, given the limitations set out by state law. And apparently authored by a faculty member in the school of law. Grisly.

If this is not enough to show that the template assignment agreement is unenforceable under Utah state law, have a look at the definition of “intellectual property.” We are not talking here simply of patentable inventions:

Intellectual property I create under any of the three circumstances described above, and assigned under this Assignment, includes only the following types of intellectual property:

Surely the “only” here is a lawyer’s idea of joking around:

a. Inventions, technological advances, scientific discoveries and improvements, whether or not patentable, including all applications for United States and foreign letters patent and the patents granted on such applications, as well as all derivatives thereof, in each case related to such inventions, technological advances, scientific discoveries and improvements.

Inventions–even not patentable inventions. What is the ownership theory on a non-patentable invention? What is, even, an invention that isn’t patentable? It is pretty much anything that anyone calls an invention. Anything. Same for “technological advance” and “improvement.” If not patentable, what makes something an “advance” other than an administrator chooses to call it that? Nonsense, as far as a definition in an assignment agreement goes–faculty are required to assign anything that administrators choose to call by the words “invention” or “advance” or “improvement” regardless of whether there is anything to assign–certainly not title and rights–but there is still “interest” I suppose.

More:

b. Trade secrets.  A trade secret is information that (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, another person who could obtain economic value from its disclosure or use; and (ii) which is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Bizzare. How does a faculty member come to hold a trade secret? Ah, perhaps by not disclosing it to the university and also not publishing it? In such a case, the template assignment claims that the university owns all unpublished, undisclosed bits of information that might have “independent economic value.” Such a claim of ownership flies in the face of the university’s policy on faculty rights–all that nonsense about autonomy and the like. Or, more to the point, the claim is utterly unfounded and itself violates a fundamental part of university policy. At this point, the definition of intellectual property becomes offensive.

c. Trademarks and service marks;

Trademark rights are acquired through use or registration followed by use. Apparently, since the assignment involves anything “in connection with” research at the university and while at the university, a faculty member could not create a trademark for a consulting business and expect to own that mark. Same for the names of software programs or services associated with scholarly books or media. Utah must love totalitarian regimes to acquiesce in this template assignment.

d. The tangible and intangible results of research including, but not limited to, data, lab notebooks, charts, biological materials, cell lines and samples;

The university claims “results.” Here, “including, but not limited to” likely reasonably limits the definition to exactly what is listed–the university has a chance to lay out what it is concerned about and that’s that. But work the idea of “intangible results of research” around in your mouth for a minute before expectorating. Yeah. Splat. Nonsense.

e. Copyrightable works, to the extent they are also patentable under applicable law;

Huh? There are no “copyrightable” works. Copyright vests when a work meets the federal definition. Copyright covers expression. It makes no sense whatsoever to call out a work as having copyright that is also “patentable.” Even the definition of “invention” does not require patentability! The work is never patentable. Perhaps an algorithm implemented in computer code creates a patentable system or device–but then it doesn’t matter in the slightest whether there’s a copyright anywhere, any more than if a lab notebook has a diagram that provides constructive reduction to practice of an invention–and a copyright vests in the diagram.

The copyright/patent distinction in university patent policies arises as a problem (especially to the clueless) with regard to precedence of claims. Copyright policies generally granted all rights to authors but for special circumstances. The folks writing patent policies (see previous parenthetical) wanted to make sure that conceding rights to original works of authorship did not prevent the university from claiming ownership of inventions, and furthermore did not block the university from appropriating written descriptions of inventions, regardless of who otherwise would have the copyright. But here, in an assignment template, this bit of the definition of intellectual property that is assigned is silly, gawd-awful silly, as in “it will cost you plenty to try to resist such silliness.”

Still more:

f. The term “software” means: (i) computer programs which are data comprising a series of instructions, rules, routines, or statements, regardless of the media in which recorded, that allow or cause a computer to perform a specific operation or series of operations; and (ii) data comprising source code listings, design details, algorithms, processes, flow charts, formulae, and related material that would enable the computer program to be produced, created, or compiled; and

Essentially copying a definition from somewhere. Since the definition already claims “data” and unpatentable inventions, hasn’t software been covered? Here, of course, the software does not have be inventive or even an original work of authorship. Any code, even copied from Stack Overflow or Numerical Recipes apparently is assigned to the university. Weird.

And finally the all-encompassing claim on anyone’s expertise:

g. Know-How. For purposes of this Assignment, know-how means proprietary knowledge or information that, standing alone, might not be patentable, but which is necessary or otherwise useful to practice an invention that is assigned under this Assignment and that is patentable under applicable law including, for example, technical information, processes, procedures, compositions, devices, methods, formulas, protocols, techniques, designs, drawings, specifications and data; [sic for that terminal semi-colon]

Again we encounter the idea that the inventions that matter are “patentable under applicable law”–certainly not under non-applicable law, whoever it is to determine what law applies. So anything that one knows–knowledge that is “otherwise useful” to practice an assigned, patentable invention the university claims also must be–and is–assigned. That’s a huge claim against academic freedom–against how someone might teach or publish. If the university owns your know-how, you need the university’s permission to practice it. How else can know-how be assigned and owned? Further, this assignment constrains how anyone is able to act with respect to such knowledge if they leave the university. Essentially, this claim on know-how operates as an unrestricted post-employment non-compete covenant. Those restricted don’t even have to be inventors of the patentable invention. Anyone who signs the template agreement is bound–if they think up something useful that goes along with an invention assigned to the university, then the university claims they have assigned those useful thoughts to the university, too. Well now.

The upshot–the University of Utah ignores state law on invention assignment agreements, demands the disclosure of “inventions”–with the laundry list definition which the template agreement dutifully carries over from the patent policy. Just to make it clear, the university’s patent policy argues that the template assignment agreement is unnecessary:

The signing of an invention assignment is an administrative convenience for confirming technology ownership rights, but the terms of this Policy are controlling and as with other University policies, constitute conditions of employment and participation in research.

The university makes it clear that its policy acts as an employment agreement, and in so doing would appear to violate state law with regard to the policy’s ownership claims. Stranger by far is the idea that inventors and authors assignments are executed on their behalf by the policy and not by instruments in writing signed by those who have initial ownership and that clearly identify the assets subject to assignment.

Here’s the nonsense in policy:

Upon agreeing to be bound by University Policy, and as a condition of the University’s provision of employment, services, facilities, equipment or materials to faculty, non-faculty academic employees, staff and student, (a) each faculty, non-faculty academic employee and staff member (including a student-employee having invented in his or her capacity as an employee) agrees to assign and does assign to the University title to all inventions he or she conceives, develops, reduces to practice or creates . . . .

Of course, it is merely an administrative convenience that anyone then signs the assignment template, and it is nothing at all that the policy requires assignment only of title but the template requires assignment of “rights, title, and interests.” Why not broaden the assignment beyond policy requirements when you can? Sure. Companies should follow the university’s lead here. Skip all the other paperwork. “By agreeing to be employed, you hereby assign everything whether ownable or not to us.” May as well throw in durable power of attorney so that a company doesn’t even have to bother with getting an employee’s signature on a form for administrative convenience–the company can sign that document itself, too. Heck, that’s what university administrators and their lawyer ilk claimed Bayh-Dole did, and that’s what the Supreme Court tossed. But here’s that same totalitarian mindset operating in the University of Utah’s policies and forms.

This brings us back around to the simple assertion that federal law requires the disclosure of inventions (and now we know what Utah policy means by invention). The particularly disingenuous bit that operates is that it is Utah’s own policy–and in particular some predecessor of the present proprietor of The Commercialization Engine–that requires disclosure (and even in the Utah’s patent policy, disclosure is not actually required: “is expected to inform promptly the director of TCO concerning all inventions created”–“is expected” is wonderfully passive for a requirement). Utah does this to itself, but claims that doing it is a matter of federal law. Perhaps it isn’t the lying that motivates. Perhaps it is institutional masochism. Perhaps university attorneys just delight in imposing this sort of suffering on the institution. After all, it must create the conditions that would give rise to disputes–and isn’t disputes what gives these folks purpose in their lives? 

Yes, it is true that the university’s patent and invention policy allows inventors to attempt to beg back ownership of inventions, but even there they have gamed the language:

The University, in its sole discretion, may release to an inventor, by written instrument only, those inventions owned by but not of interest to the University. It is understood if the University does not actively promote or develop the invention within a reasonable amount of time, the inventor’s claim to full rights will be honored. Requests for releases should be made to the director of TCO.

What does “sole discretion” mean here. Is it a fish reference? Why is the verb “release” used, when the university asserts all inventions have been assigned. Wouldn’t that verb here have to be “assign”? How else would an assignment be made, but by “written instrument”? Ah, yes, the university asserts written instruments are merely an administrative convenience when going the other way. Oh, and to “actively promote” an invention, all one must do is post it to a “inventions available for licensing” page, no? And what does one do for all those emails and poster sessions and anything else that the policy and/or template claims has been assigned to the university? There’s a hell of a lot of paperwork waiting for the university administrators on the other side of their damnable portal, if only faculty had enough free time on their hands to bother to claim their “full rights.”

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