University of Connecticut patent practice hash, 3

Here’s UConn’s policy on invention ownership:

Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered by the University (“University Inventions”).

No definition there of “invention.” So we go to Connecticut General Statutes, 10a-110a:

“invention” means any invention or discovery and shall be divided into the following categories: A. Any invention conceived by one employee solely, or by employees jointly; B. any invention conceived by one or more employees jointly with one or more other persons; C. any invention conceived by one or more persons not employees.

Not much help here, either. “Invention” means “any invention or discovery.” Invention means invention, dammit. The categories are fussy bureaucracy at their fussiest. Moloch state drinks Moloch beer.

And here’s the claim, then, in 10a-110b:

The university shall own, or participate in the ownership of, and shall be entitled to place in the custody of the foundation to the extent of such ownership, any invention as follows:

The sense of the law is that the university can own but a separate foundation would manage inventions. Notice that the law does not quite give the university outright ownership of every invention–“or participate in the ownership of.” That’s because before 2013, the law read:

The university shall be entitled to own, or to participate in the ownership of, and to place in the custody of the foundation to the extent of such ownership, any invention, on the following conditions:

That is, the law authorizes the university to have a right to own–“entitled.” One might think of this law as parallel to 10a-109d(7), which provides for the university to acquire real property:

To acquire by purchase, contract, lease, long-term lease or gift, and hold or dispose of, real or personal property or rights or interests in any such property and to hold, sell, assign, lease, rent, encumber, other than by mortgage, or otherwise dispose of any real or personal property, or any interest therein, owned by the university or in its control, custody or possession in accordance with section 10a-109n;

That authorization leaves out intellectual property–and deals just with real property and personal property, though of course patents, according to federal patent law, shall have the “attributes of personal property.” Thus, one might anticipate an additional state statute to authorize the university to deal in patents. The original state statue, however, authorizes the university to be “entitled” to certain inventions but that a separate foundation will have “custody” of these inventions.

The revisions to state law here cuts out the foundation’s role as well, so that the university itself, an instrument of the state, may deal in inventions and patents. It is just this state dealing in patents that the framers of the Constitution sought to prevent by granting the federal government the right to grant exclusive rights in inventions to inventors. Here, state law might be read to simply take back for the state the right to decide who should get a patent on certain inventions–as long as it is clear that the state’s position is that that “who” should not be the inventor.

We can read the state law another way, as identifying the conditions under which it is equitable that the state as employer should have an interest in inventions made by employees. Let’s have a look. State law then provides the conditions on which the university “is entitled to own” or as revised “shall own” inventions:

(1) In any instance in which any invention in category A is conceived in the course of performance of customary or assigned duties of the employee inventor or inventors,

Category A–conceived by employees–but now restricted to “performance of customary or assigned duties.” What the heck does “customary” mean, especially with regard to faculty members? For extramural research, the university does not assign the work to faculty, and faculty have to request a release from their normal duties to participate, so can any particular extramural research project be considered “customary.” No, not hardly.

or in which the invention emerges from any research, development or other program of the university,

Program “of the university” would indicate a program owned by the university–one in which the university, not a faculty investigator, has the right to assign and direct and approve and publish the work. While “other” is broad–making “research” and “development” merely illustrative–“of the university” is narrow, isolating programs to those owned and controlled by the university. The problem word in all of this is “emerges.” Inventions must be, at UConn like some form of locust that emerges after some years of living underground. Bizzare.

or is conceived or developed wholly or partly at the expense of the university, or with the aid of its equipment, facilities or personnel,

It is difficult to understand how any invention can be conceived at anyone else’s expense–unless someone is expressly commissioned to solve a problem, conception of an invention is simply not a fundable thing. There’s a whole body of literature around employee inventors and the concept of the shop right and when equitable ownership might apply. Here, we have “conceived or developed”–that’s strange. Perhaps “conceived or first actually reduced to practice” might be more helpful, but even then these parameters were used to identify priority in invention–and later to establish the scope of a government licensing in inventions made under federal contracts. And why not use “emerge,” as that’s a lively verb–“or emerges . . . at the expense of the university.” That’s better. What do we make of “wholly or in part”–why both when “at least in part” makes the general case clear–how little expense is the university willing to claim as constituting “in part”?

If we work this list with the idea that in each instance there’s an equitable claim to ownership by the university, then we don’t have state law aiming to disrupt common law of invention ownership, but rather form something of a patent agreement with employees that memorializes equitable dealing–

1. when inventive work has been assigned

“customary or assigned”; an employee has been hired or assigned to invent

2. when the work is done in a program under the control of the university

“program of the university”; “of” means ownership–the university controls the program, the research

3. the university has expressly paid for work directed at inventing

“at the expense of the university”–university pays, as distinct from passing through funds contributed by others (such as donors or sponsors)

4. the university has provided equipment, facilities, or personnel to aid an effort

“with the aid of”–aid expressly contributed with the understanding that the university will “participate in the ownership” of any invention, but not aid committed by the university in extramural research for which it is contractually obligated to provide or for which it is compensated, such as by indirect cost charges.

Read in this manner, the state law lays out a perfectly acceptable scope of equitable claim on inventions made by employees or others put on notice of university control over the work or with an express commitment of university assets (money, equipment, facilities, personnel) for which the university is not compensated by a sponsor, donor, licensee or other third party. Of course, the university could read the law expansively and argue that if an inventor uses the university’s library (a “facility”) as an aid to inventing, then the university owns the invention. That would not be an equitable reading, but in my experience university administrators don’t do so well with situations requiring equitable readings.

Consider the special case of federal funding. The federal government pays the salaries of those involved, pays the direct expenses of their purchases, and compensates the university for its indirect facilities and administrative costs–the rate for which the university and federal government negotiate. The university is fully compensated for federally funded research. If it comes up short, it is through administrative inefficiency. Does the university funding administrators “in part” constitute funding “in part” an emerging invention? Hardly.

Which brings us to the statement of claim–if an invention is made in a program owned by the university, or at least some university expense, or with the aid of its equipment, facilities, or personnel, then:

the entire right, title and interest in and to such invention shall automatically vest in the university.

No need apparently for a patent agreement. No need for any present assignment. To heck with common law. But there’s a problem for federally funded research–it is not clear at all (unless one is perhaps a UConn patent administrator with the ability to see images in mud) that state law makes inventions “automatically vest” when developed in performance of work under a funding agreement. Federally funded projects are not necessarily–or often–programs “of the university.” The university is fully compensated by contract for the work, so no expenses unless there’s some express fund matching where the university expressly puts more money into a given project. And the “aid” without expense stuff appears to be exhausted in the university’s provision of the “aid” as part of its indirect cost reimbursements for administration (“personnel providing aid”) and facilities (“equipment and facilities”). It may be “clear” what university administrators want out of this law–but it’s not at all clear in practice whether they should get it. The problem, of course, is that university administrators have rather free and ready access to legal services to beat down anyone who might disagree with their reading of state law. Again, Moloch administrators drink Moloch beer.

There’s more:

In each such instance, the employee inventor shall be obligated, by reason of his or her employment by the university, to disclose his or her invention fully and promptly to an authorized executive of the university;

In state law, then, inventors are required to disclose only those inventions that meet the requirements stipulated by state law. Not all inventions. Just those for which the state has established a claim to ownership. The UConn disclosure requirement overstates what the university is legally entitled to require to be disclosed.

In the case of federal funding, this obligation to report is preempted by federal regulation–the university must require inventors to make a written agreement to protect the federal government’s interest, including an obligation to disclose inventions. So despite this being state law, in federal funding situations, the written agreement takes precedence. See 37 CFR 401.14(a)(f)(2).

to execute instruments of assignment;

The invention “automatically vests” with the university, so this is paperwork to perfect the university’s ownership claim. But if state law disrupts common law, then what rights does the inventor have left to convey by “executing instruments”? It is one thing for an everyday employer to claim ownership of inventions as a matter of equitable interest, but here a state simply decrees that the state, rather than inventors, will own their inventions–there’s no attempt to state conditions upon which the state would have an equitable interest and then require inventors to acknowledge this equitable interest by assigning inventions upon request. It’s just a “to execute instruments of assignment”–the request comes later, with regard to patent applications. The effect of the state’s ownership claim is to prevent inventors from having any say whether patents should be sought on their inventions.

and to execute such proper patent applications on such invention as may be requested by an authorized executive of the university, and to give all reasonable aid in the prosecution of such patent applications and the procurement of patents thereon;

This stuff, in the context of faculty research, constitutes an abrogation of the faculty member’s freedom of to publish. Here’s the statement from the University’s By-laws (Article XIV, B):

All members of the faculty, whether tenured or not, are entitled to academic freedom set forth in the 1940 Statement of Principles on Academic Freedom and Tenure formulated by the Association of American Colleges and the American Association of University Professors. The faculty member is entitled to full freedom in research and in the publication of the results, subject to the adequate performance of his/her other academic duties, but research for monetary return should adhere to University policies.

“Full freedom in research” means that the university does not own those programs of research–they cannot be “programs of the university” or the university would have the right to assign, direct, approve, and control the results of that research–and here we see that the university does not. And look at “freedom in the publication of the results.” A patent is a publication. That’s the whole deal in the patent system: publish an invention in exchange for exclusive rights for a limited time. It is the publication, in combination with the limited time for exclusive rights, that promotes the “progress” of the useful arts. If a university claims the right to patent faculty research, then it also claims the right to compel faculty to publish their research in a manner and forum dictated by the university and its administrators and lawyers. A faculty member then does not have freedom in the publication of results. The faculty member’s name must go on a document that university administrators control.

How do we then avoid a conflict between the university’s By-laws and the statement of state law regarding university ownership of inventions? It is clear (other than to the mud-seeking administrator), that the By-laws establish the freedom of faculty in research and publication, and that nothing in the statement of the state law claim to ownership can get in the way of the university’s management of its own affairs. Inventions made by faculty are outside the scope of the state law unless a faculty member has expressly agreed to give up his or her freedom of research (such as to work in a program of the university, under university direction) or freedom of publication of results (such as in agreeing to work in a project in which publication is controlled–and therefore a project that may fail the export control exemption for fundamental research).

If the university wishes to invoke “customary or assigned” duties, then the university has to show that these duties come under the university’s control and are not subject to the By-laws. For faculty, neither extramurally sponsored research projects nor personal consulting are “customary” or “assigned” duties. If the university invokes “expense,” then it must bargain that expenditure for the academic freedom of the faculty members involved; similarly, if the university wishes to invoke aid without expense.

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