University of Connecticut patent practice hash, 4

So now back to UConn’s patent policy claim. Look at it again:

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”).

It’s simply not true. “Created” does not show up in the state law. The state law uses “conceived,” “conceived or developed, “emerges.” The invention “vests” with the university. The university does not own the invention until assigned. State law authorizes the university to own and limits the scope of that ownership claim by reciting the situations in which the university can require assignment. The university’s patent policy, however, does not respect those limits–and that’s unacceptably awful.

And now garble: “by employees in the performance of employment with the University.” What can we make of that? What does “with the University” mean? For that matter, what does the policy mean by “employment”? The state law is fussily clear about Category A inventions–“customary or assigned duties.” “In the performance of employment” is nonsense written by someone with fantasizing about rainbows and dancing hippos. Clearly, the university’s policy overreaches.

There’s no mention in the state law of “funds administered by the University”–state law’s treatment of “at university expense” is not the same thing at all. Money provided by a donor or sponsor in support of a project is not “at university expense.” Same for “University resources.” State law identifies only with the “aid” of “equipment,” “facilities,” and “personnel.” Again, the patent policy generalizes without authority.

In all, the UConn patent policy is a con job. It misrepresents the law, especially for faculty, especially in light of the university’s By-laws, and particularly in the context of federal funding regulations. While no doubt the university’s patent policy reflects administrative practice–because administrators adapted their practice to their own restatement and misrepresentation of state law–the patent policy represents another instance of university patent racketeering: abrogate faculty freedom to publish; violate federal regulations; misrepresent state law.

Now let’s return to the UConn disclosure form. The form ends with a terminal declaration ahead of required signatures, including a present assignment of the disclosed invention:

(2) to the extent that each investigator is or may be determined to be a legal inventor of the invention described herein, each investigator agrees to and does hereby assign all right, title and interest in the invention to the University of Connecticut;

First it’s a conditional present assignment. It only operates when an investigator “is determined to be a legal inventor.” That’s stupid. If one is going to require assignment, then it’s not conditional. What’s the difference? A conditional operates when the condition it depends upon goes true. Perhaps “or may be determined” renders the condition always true–but then one is reading the clause to render the “to the extent that” meaningless–why assert a conditional only to take it back by an ambiguous “may be determined.”

The whole point of a present assignment is to deal with the foolish advice of lawyers who claim that the Stanford v Roche case hinged on the timing of when an assignment takes place, that a present assignment of a future invention takes place at the time of the present assignment, but a promise to assign in the future a future invention takes place in the future, not at the time of the promise. If one makes a present assignment conditional, then one loses the priority of the assignment. The condition of the assignment might never go true. A university inventor might assign to a company or to another university (as a joint inventor, completing another university’s invention form, say). UConn might only determine the inventor is a “legal” inventor some time after that assignment. The “hereby assign” cannot be conditional or it pretty much fails in its purpose.

Just for those who haven’t heard: Justice Breyer argued that there should not be such a difference based apparently on different wording that ought to accomplish the same thing. But that wasn’t the issue at the Supreme Court. Stanford wasn’t arguing about priority of a present assignment over a promise to assign; it  was arguing that Bayh-Dole vested ownership of inventions with Stanford and this vesting preempted any other assignment. In deciding that Bayh-Dole vests nothing, the Supreme Court did not address the CAFC reasoning that Justice Breyer objected to. But more than that, once the Supreme Court’s ruling operates, there’s no point to Stanford’s claim of ownership anyway, because under Stanford’s patent policy and the patent agreement its post doc employee signed before taking a nine-month leave to work at Cetus, the university would claim inventions only when it had a legal obligation to do so. If Bayh-Dole did not create that obligation, then the CAFC analysis does not have to consider the post doc’s patent agreement with Stanford–it simply doesn’t apply. The form, then, of the assignment to Cetus doesn’t matter–promise to assign, present assignment doesn’t matter, as both provide equitable title and that’s sufficient to preclude Stanford from suing Roche (which acquired Cetus’s interest) for infringement.

Now the big hole in the UConn invention disclosure form is that there’s no assurance that all the inventors have signed the document. The document itself introduces nuttiness that might lead some inventors to be left off–describe only the invention to be offered to companies. Fuss about whether someone is a legal inventor or just an inventor. And then this, at the end:

List any graduate students and post-doctoral researchers who made intellectual contributions to the described invention

What is the difference between being an inventor, a legal inventor, and making “intellectual contributions to the described invention”? And why aren’t the graduate students and post-docs signing the invention form? By not signing, they aren’t assigning and not even promising to assign. For graduate students, perhaps the reason is that state law does not provide for university ownership of their inventions. The university employees may have obligations, but others do not:

B. any invention conceived by one or more employees jointly with one or more other persons;

(2) With respect to inventions in category B, to the extent to which an employee has or employees have disposable interests therein, all such interests shall automatically vest in the university and, by reason of such employee’s or employees’ employment by the university, such employee or employees shall be obligated to take the same actions required by subdivision (1) of this section with respect to inventions in category A;

A graduate student is not an employee of the university, just by being a graduate student. But why does the disclosure form throw post-docs into the same bin with graduate students? Nuttiness.

The UConn invention disclosure form is typical. It gives bad advice about what inventions to disclose, and worse nothing about whether an invention meets the definition of the “subject invention” in 37 CFR 401.14(a). Perhaps that’s because those drafting the form just don’t care. After all, the form is intended to cover all situations, not just federally funded inventions. And that’s the case at nearly every university. I used to collect university invention disclosure forms. I had a notebook with scores of them. Not a one of them was developed specifically for federally funded projects.

Think about it. A university accepts a federal funding agreement with a patent rights clause. Now, for this new project, the university has a set of obligations that kick in, specific to that patent rights clause and that project.

(1) Review the patent rights clause to determine if it is the standard clause or a custom clause, such as one based on exceptional circumstances.

(2) Instruct employees (other than clerical and non-technical employees) “through employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars.”

(3) Require those employees to make a written agreement to protect the government’s interest by disclosing inventions to university personnel designated for patent matters, signing papers to permit patent applications to be filed, and signing papers to establish the government’s rights in subject inventions.

At this point, for those “employees” who will be working on the new project, the university has the opportunity to provide a disclosure form that is already set up for exactly this project. A roster of personnel involved can be developed, based on any activity on the grant budget. A summary of the project and its promised deliverables can be place on the template form. The grant information can also be placed on the form. (There may be other funding involved, of course). And a specification of what to disclose to comply with the patent rights clause can also be placed on the form. The form can include the fields required by iEdison, for instance.

The form can be made available by the sponsored projects office along with other grant management materials. Not only is this form specific to federal funding, but it is also specific to the grant. Sure, someone can pull down a general purpose form, too. But why not be specific for each grant, as part of setting up the grant in the first place? Because it is better to inconvenience and confuse potential inventors with disclosure form bombast than to inconvenience administrators? Ah, I get it.

To comply with the standard patent rights clause, a university must require the (f)(2) written agreement. That written agreement makes inventors parties to the funding agreement and their inventions subject inventions when they make them (and they are within scope). That written agreement also chops out any university policy or contractual requirements that are not consistent with what the university requires to comply with (f)(2) of the patent rights clause. Since the university does not assign or direct or approve or control the research work or publications of faculty, this means that the university gives up any claim to an interest in the subject inventions of faculty inventors. The faculty inventors then are subject to the inventor patent rights clause at 37 CFR 401.9. That’s the most favorable patent rights clause of the four that have been created under Bayh-Dole, and much better than the clause for nonprofits.

Thus, not only should a university invention disclosure form be set up for compliance with each federal grant, that form when combined with the (f)(2) agreement should also assume that the university has no interest in any subject invention disclosed to it until the inventor(s) request the university’s involvement. The university reports the invention to the federal agency, but it is up to the inventors to decide whether to elect to retain title. The university can helpfully provide the inventors with a form by which to notify the federal agency of their choice.

Once the inventors have elected to retain title, they are not required to file a patent application–there’s no (c)(3) (must file) or (d)(2) (government can request title if one doesn’t file) in the inventor patent rights clause. They can publish their invention to the public domain if they please. The inventors also may assign their invention as they wish–there are no restrictions such as those for nonprofits at (k)(1). Of course, if the inventors assign to their own university, the university is bound by the nonprofit patent rights clause. But no other organization would be bound by the university’s patent rights clause. The inventor patent rights clause is based on the small business patent rights clause, which also has no restrictions on assignment of subject inventions.

You can see from this description of the apparatus that complies with Bayh-Dole’s patent rights clauses what ought to be done:

For each grant, a disclosure form that

  • is specific to the grant,
  • identifies the (f)(2) obligations for participating employees,
  • makes no assumption that the university has an interest in the invention,
  • assists inventors in notification regarding election to retain title.

There’s your best practice. No one does it.

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