University of Connecticut patent practice hash, 2

The definition of subject invention in federal funding agreements is not a matter of university administrator preference. Either an invention meets the definition of subject invention or it doesn’t. The administrator’s job is to gather the documentation that provides the basis for making a determination. But why do actual work when one can postpone the effort (“most grants won’t produce inventions”), pass the work, and the blame if things go wrong, to the inventor? And that’s of course just what the UConn disclosure document does at the end–

The inventors are to confirm “the completeness and accuracy of the information.” Well, there you have it. The inventors not only must provide their opinions, but also they have to swear to the information. One would think that the university administrators are the ones charged with confirming the completeness and accuracy of the information. The only thing an inventor is asked to do is to provide a description of the invention. Here’s the requirement from the standard patent rights clause at 37 CFR 401.14(a)(c)(1) (I have added numbering and broken up the layout):

The disclosure to the agency shall be in the form of a written report and shall

[1] identify the contract under which the invention was made  and the inventor(s).

It shall

[2] be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.

The disclosure shall also

[3] identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure.

The standard patent rights clause then requires university contractors to require their technical employees to make a written agreement to disclose inventions so the university can meet this standard (37 CFR 401.14(a)(f)(2)):

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 in order that the contractor can comply with the disclosure provisions of paragraph (c), above

There’s what needs to be conveyed in a disclosure form, for reporting federally funded inventions. The challenge for inventors is the first part–providing information regarding how they have made their inventions so that the university can determine whether any obligations to research sponsors (or licensees, or donors, or other contracted parties–such as those involving loan or lease of research instruments or test products) are involved. The point of a form is not to ask the inventor for a conclusion, but for the inventor to disclose the activity surrounding the invention–the factual context, as it were.

The Connecticut disclosure form doesn’t ask the inventor’s supervisor–the principal investigator, say–to provide information pertaining to the inventor’s work assignments and other activities to be considered.

And then there’s the nonsense in the disclosure form about “legal inventor.” This messes with the difference between an inventor and an inventor named on a given patent application. There can be multiple patent applications based on a single invention. There are then potentially two sets of inventors–the inventors of the common law invention and the inventors that contribute to any of the claims of a claimed invention recited by a given patent application. The inventors own their inventions by common law. They are the legal owners of the invention. The right to exclude others forms the basis for the named inventors in a patent application. These are different things. Why would anyone conflate them? A disclosure form should ask for the names of those who conceived the invention–who contributed to the conception of the invention. It will be up to the university (if it comes to own the invention) to sort out who has contributed to any of the claims of a given patent application.

Consider: a university can draft a patent application to exclude the contributions of some inventors. Cut them out of any future deals. But they are still inventors, very quite legally, but just are not named inventors based on the claims the university chooses to include in a given patent application. So UConn administrators make a hash of inventorship, too.

There is an incentive for university officials to delay disclosure. Their own reporting obligation does not kick in until they receive an invention disclosure from the inventors:

(c)(1) The contractor will disclose each subject invention to the Federal Agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters. 

Then there a bunch of things that must be in the report, most of which only the inventors can provide. Without a compliant disclosure from the inventor, university folks don’t have to do any reporting or electing or patent application filing. You can see in the way (c)(1) turned out the happy helplessness of university patent officials. By comparison, here’s the authority for this provision, in Bayh-Dole as originally passed:

(1) A requirement that the contractor disclose each subject invention to the Federal agency within a reasonable time after it is made and that the Federal Government may receive title to any subject invention not reported to it within such time.

The 1984 amendments to Bayh-Dole “cleaned up” this bit by introducing an indeterminate amount of time between invention–inventors recognize their work as inventive–and the university’s need to report an invention. In the original Bayh-Dole Act, the purpose of the requirement that universities instruct their inventors on the importance of timely reporting was that the university would be non-compliant rather than passively waiting if the inventors failed to report in a timely fashion.

The UConn disclosure form also does a dirty thing. It makes assignment of an invention a condition of disclosure of that invention. There is, generally, a gulf between inventions that an organization has a right to claim and all other inventions. A university may have the right to see disclosures of all other inventions–to be assured that none of the other inventions are in fact not claimable. But a university has no right to insist to own all other inventions without first establishing its equity in the invention or a contractual right to claim ownership.

Here’s UConn’s intellectual property and commercialization policy on disclosure:

All faculty, employees (including students who are working for the University) and students (to the extent the student is working under a research grant, sponsored research or other governing contract) must disclose promptly any potentially patentable invention to the OVPR, and execute documents necessary for invention evaluation, patent prosecution or protection of University Patents.

There’s no distinction with regard to what inventions are to be disclosed. All.

The disclosure should be made as soon as a faculty, employee or student becomes aware that their research or work has resulted in a patentable invention. OVPR will provide a preliminary evaluation of the patentable invention to the inventor within three months of disclosure, and will also provide periodic updates to inventor on the development and commercialization of the invention.

The disclosure requirement slips from inventions that are “potentially patentable” to ones that are “patentable.” Sloppy? The federal standard is “is or may be patentable.” This is why the Bayh-Dole patent rights clause carries its own patent policy with it–because university patent polices cannot be expected to be compliant and it is not worth the bother of imposing on them the requirement to draft clearly and consistently and without predation.

The more important bit is that the disclosure “should be made as soon as” the inventor is aware of a patentable invention. Notice, however, that here there is a restriction: “that their research or work”–that is, the inventions that must be disclosed “as soon as” are those that arise from “research or work.” An invention that might arise elsewhere–from a conference discussion, based on general expertise applied to a new problem that one is not actively researching or working on at the university–carries no such obligation for “as soon as” disclosure. But it appears that the general requirement to disclose inventions stands. No doubt in practice no one cares just what the words say–it’s not the rule of law, after all, it’s more like guidelines for university administrators to make up whatever they want.

Now to complete the thought. UConn creates an invention disclosure form that requires, for its completion, inventors to assign the invention to the university. But UConn does not have the authority under state law for such a general claim to ownership of all inventions that the policy requires, apparently, to be disclosed.

This entry was posted in Bayh-Dole, Policy and tagged , , , , , . Bookmark the permalink.

Leave a Reply

Your email address will not be published. Required fields are marked *