Best practices in university invention management, 8

We are working through the model invention assignment agreement proposed by the ipHandbook as a university “best practice.”

Now we get the present assignment:

agree to disclose promptly to UNIVERSITY and hereby assign all rights to all inventions, copyrightable materials, computer software, semiconductor mask works, tangible research property and trademarks (“Intellectual Property”) conceived, invented, authored, or reduced to practice by me, either solely or jointly with others, that:

First, note the form: a broad statement, to be followed by a restrictive clause (“that”). Second, note the gawd awful grammar: “agree to disclose . . . and hereby assign all rights . . . .” Yes, the direct object of disclose is rights, not inventions. Botchery must be a best practice! Certainly it is a ubiquitous practice. Why does university invention management attract such incompetent legal work product? Is it the cesspool of university lawyering? And what is so attractive about the cess?

The scope of the assignment is broadened beyond invention to include “copyrightable materials” (which is nonsense wording anyway–materials aren’t “copyrightable”–copyright vests in original works of authorship when fixed in a tangible medium of expression; there’s nothing “copyrightable” about it–that’s obsolete usage from the 1909 copyright act.) Mask works are subject to copyright. Software is treated as literary work by the Library of Congress–so, more copyright. Tangible research property is not “intellectual property” at all–it’s chattels. And one invents a patentable invention by both “conceiving” it and “reducing to practice.” If the university claims inventions (and non-inventions) that are merely “conceived,” then the university is claiming pretty much anything and everything. There’s no real limit to what’s called an “invention.” The model assignment agreement botches all this in an effort to sound legal and comprehensive.

Consider the copyright botch in more detail. If a faculty member produces an original work of authorship within the scope of his or her employment, then the work is a work made for hire, the author is the university, and no assignment is necessary–the copyright vests in the author when the work is fixed in a tangible medium of expression. In the IAA, however, faculty members are required to assign “all . . .  copyright materials . . . that”–meaning these materials must be ones that are made outside the scope of a faculty member’s employment. Think about that. And never mind that the term of art in copyright law is “work” not “materials.” What is a “copyright material”? Total botch–or a deliberate effort to create ambiguity. But ambiguity works against the drafting party. A reasonable faculty member might think that a “copyright material” is something less than an “original work of authorship” and consider it be something specified expressly to be created by the university for additional consideration, which the faculty member has agreed to produce. An agreement requires a meeting of the minds. The mind that matters is the one that has not done the drafting. If the drafter gets to dictate the meaning of ambiguous terms later, then there’s no contract.

If someone wanted to produce a competent, non-weasely assignment agreement, they would direct the assignment to patentable inventions. It is the patent right, after all, that makes all the difference. If the university claims to own unpatentable inventions, then it claims a trade secret–that is, claims the right to decide what to publish or even disclose, and again that repudiates academic freedom of all sorts. Not to mention that such an assertion also creates a serious compliance issue for export control and ITAR, as then the university’s exemption for fundamental research is–by operation of this assignment document–forfeited. Better not have foreign nationals on student visas working in any research lab! But the lawyers promoting these assignment agreements don’t appear to care about ITAR compliance–if they did, they would offer competent advice.

Now we get the restrictive list of inventions and other stuff that is assigned:

(i) are developed in the course of, or pursuant to, a sponsored research or other agreement in which I am a participant, as defined in Paragraph X of the UNIVERSITY Technology Policy Guide; or

The “sponsored research agreement” is one thing; but “other agreement” is utterly nebulous. Sponsored research agreements are generally contracts between a university and a sponsor. Faculty members are not parties to those agreements (though they and others should be made parties to federal funding agreements–just that as a “best practice” universities refuse to comply). What, then, are these “other” agreements? This is a case of an attorney drafting into fantasy land–covering all the agreements that matter by specifying one sort of agreement and then including everything else in fantasy land. Why not just state, “any agreement whatsoever”? A university could agree with *anyone* that all a faculty member’s inventions must be owned by the university and this IAA would purport to mean the faculty member agreed upfront to any such arrangement and assigned all those inventions before they were even made. Again, no academic freedom.

And the wording is strange. The restriction here is to inventions that are “developed” not inventions that are “conceived” or “reduced to practice.” Development is a distinct activity–one develops an invention by finding a best mode of practicing the invention for a particular purpose, such as to mass produce commercial product. This item (i) is a member of a restrictive clause–started by that “that”–so “developed” restricts the scope of claim to, yes, “development” of inventions not their being made.

Worse than this–look at the following clausal element:

are developed in . . . a[n] . . . agreement in which I am a participant

The agreement–not the research–is the subject of the faculty member’s participation. Thus, for this restrictive clause be given effect, the university must make the faculty member a “participant” in the “agreement.” Reasonably, the faculty member must be a party to the agreement, and for that at least have notice of the agreement and have evidenced acceptance to be bound by its terms. Or, of course, you might argue that the wording here is botched and what is “really” meant is something else–even if there is a reasonable interpretation to the words as written. If a university wants something so badly that it should require a special agreement upon signing paperwork *after* an offer of employment has been accepted, why does the university find ways to botch the language of that agreement?

Next we get a second alternative, prefixed by “or”:

(ii) result from the significant use of UNIVERSITY-administered funds or facilities as “significant use,” as defined in Paragraph X of the UNIVERSITY Technology Policy Guide; or

“Result” is ambiguous. How long after the significant use might an invention “result”? It’s one thing for the university to identify a problem that needs solving or an opportunity to benefit, if only something magical takes place. It’s another to claim to have received assignment of any invention that merely “results” from (significant) use of funds or facilities. Something has to bound that “results” or one could claim to own an invention made two years later that appears related to the prior use of funds or facilities, or that draws on observations or experience created in that prior work–even if that use of observations or experience is to be persuaded that the prior line of research would never be productive. “You realized that what we significantly funded wouldn’t work and that resulted in you trying something different–voila, you assigned that different thing to us because it resulted from that significant funding.” Unreasonable claim? Then why doesn’t the IAA bound its scope to make it clear that it is making an equitable claim, not an unreasonable one? How difficult is that?

“Significant use” is also ambiguous. Yes, it points to a statement in a university “Guide”–but is that “Guide” also formal policy? Can the university unilaterally change the “Guide” whenever it wants? Under the reasoning in Shaw, once the university enters into a contract with its employee, it cannot then change that contract unilaterally–even when it changes its policy. That makes sense. The University of California cleverly responded to the Shaw decision by changing its “Patent Agreement” form to “Patent Acknowledgement”–while retaining all the “agree” language. The aim was to make the invention agreement appear to merely provide notice of the university’s policy statement while leaving open the later argument that it really is an agreement (for purposes of enforcing an assignment demand) but not an agreement (for purposes of changing policy whenever the university decides to do so, such as when the university adopted present assignment language).

Consider also the difference between “significant use of funds or facilities” and “use of significant funds or facilities.” Clearly the concern is that an invention “results” from the use of funds or facilities. The question is just what it is that the “significant” refers to. Is it a significant effect on the making of the invention (“without which the invention would never have been made,” or “enough use to demonstrate an effect on the making of the invention, which we judge to be a significant effect”)? or is it that the funds or facilities were significant (“a lot of funds or facilities were used”) and if so, how is significant differentiated (“a lot more than usual”?, “a lot by anyone’s standard”?, “more than we could otherwise legally allocate without requiring ownership of all inventions”?). The use that results in an invention has to be “significant”–perhaps the use is significant but the portion of that use that contributes to the invention is insignificant. What then?

One might claim that I am creating ambiguity where otherwise it’s all clear. But that’s not it. The text here is not at all clear, and pointing to a definition in a “Guide” does not make things any clearer. If the “Guide” definition is unambiguous, then it goes here in the agreement; otherwise, the absence of the definition here is itself an ambiguity. Furthermore, there’s no reason to assume that despite the crappy drafting of this model IAA, the university’s lawyers somehow got everything perfect in drafting the “Guide.” Really, if they had gotten things perfect in drafting the Guide, there would be no need for an IAA.

There’s more. The restriction here–remember, this is part of a restrictive clause that limits the university’s scope on the faculty member’s present assignment of future inventions–is directed expressly to “UNIVERSITY-administered funds or facilities.” There’s a principle of interpretation in copyright agreements, at least, that if a party that controls the drafting of an agreement wants that agreement to cover things, and states a list, then no matter if there are qualifications such as “including but not restricted to,” those don’t matter. It’s what one states as having importance when one has the opportunity to do so. And here we are with “funds” and “facilities.” Funds are money accounts. Facilities are buildings, ships, and the like. We are not talking supplies, equipment, personnel, information, data, know-how, or technology. Again, the clause here is restrictive, and the university has stated that inventions that result from significant use of “university-administered” funds or facilities are within scope of the present assignment.

We may also point out that “university-administered” funds might include scholarship money, donations, and money entrusted to the university, such as federal grant funds. The model IAA claims, then, assignment of inventions that the university passes through financial support that is not even the university’s own money and that the university has no standing to withhold. That’s unreasonable–even an abuse of authority, breach of fiduciary duty, racketeering. But here, in the IAA, it’s just a bureaucratic adjective. Who uses “[anything]-administered funds” other than bureaucrats? “I’ll just use some of my household-administrated funds to pay for this restaurant meal.” Right.

In a reasonable world, if a use is going to be significant with respect to an anticipated invention, a university would allocate that resource with a written agreement that expressly provides access in exchange for an invention within the scope of the anticipated work. That is, if one is working on a method for creating a hen that lays five eggs a day, then inventions resulting in multiple eggs a day are within scope, but a better chicken food resulting in happier hens is not within scope, and a realization about how to make duck eggs taste better is not within scope. If one is to agree upfront about the ownership of an invention that results from specially allocated funds or facilities, because significant, then the scope of the assignment should be clear enough that anyone can see what inventions were intended. It’s that hired to invent something issue again. One does not hire someone to invent anything. If so, then those states with laws purporting to limit an employer’s claim to inventions as a condition of employment are nonsense, because all an employer has to do is assert that the employee is hired to invent anything, that the employer’s business and future business is to exploit any invention that an employee makes. It kinda sucks to work for these sorts of people–unless one is an attorney, apparently, then it is good money regardless of one’s competence.

The best practice here that matters is that university officials, when they desire to specially allocate funds or facilities in anticipation that something inventive may result, must enter into a voluntary agreement with those that would make use of the funds or facilities in which they promise to disclose those inventions and assign them to the university. One obtains that agreement prior to the allocation of the special and significant funds or facilities. There’s no compulsion. No-one’s job security is threatened. Things are pretty clear. “We provide special funds or facilities for you to do this work; if you invent what we and you hope to invent, then you will assign to us; agree?” Not only that, but one reduces the number of agreements required. I know, that makes less work for the sort of attorney attracted to this sort of work. There are apparently downsides to even these best practices.

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