Best practices in university invention management, 9

We are deep into the ipHandbook’s model invention assignment agreement (IAA). We have hit the basic disclosure and assignment clause that depends on a restrictive clause with three parts that together establish the scope of the present assignment. Part (i) deals with sponsored research; part (ii) deals with significant use of university funds or facilities. Here’s part (iii):

(iii) result from a work for hire funded by UNIVERSITY, as defined in Paragraph X of the UNIVERSITY Technology Policy Guide; and

A punch line here. Finish laughing and we’ll try to get through it. Hawhr, hawhr–no really, haw! hee! Oh, stop. Heh. Let’s go slow:

all inventions (and copyright materials, and laundry list) that . . .

  • result
  • from a work for hire
  • funded by UNIVERSITY
  • as defined in . . . Policy Guide

“Result” is crazy broad, as in the previous paragraph of the restrictive clause.

A “work made for hire” is an original work of authorship fixed in a tangible medium of expression made within the scope of employment or subject to a written agreement signed by the author with a commissioning party, with the subject work falling within a list of qualifying categories. If a work is made for hire, then it is owned by the employer or commissioning party. There is nothing to assign. The producer of the work is *not an author* as a matter of federal law. Remember, this whole IAA cites authors.

There is no concept of “work for hire” in patent law. “Hired to invent” might be used to establish a claim to equitable title. But that’s not “work for hire,” which in the context of an invention amounts to “employed.”

“funded by University” is redundant silly redundancy. We already have “result from the use of significant funds” in (ii), so here the point must be that some arrangements don’t require significant funds or that “UNIVERSITY-administered” funds are not the same as “funded by UNIVERSITY.” We can say–crappy drafting–but we ought to start with the thought that words mean things and if we can find a reasonable meaning, we ought to respect it. Work “funded by UNIVERSITY” reasonably suggests funds that the university chooses to allocate rather than funds that the university administrates but which have been allocated for a purpose by others, such as a donor or sponsor of research.

But even then we are back to the silliness that a work made for hire does not have to involve any money payment (“funded”), and that if it is a work made for hire, then the IAA has no effect; no assignment is possible because the author–by employment or agreement–is the university. The point here, apparently, is that even if the university funding is not significant, the inventor (or non-author or whatever) still has assigned the invention/materials/whatnot. So screw paragraph (ii)’s fuss about inventions resulting from significant use of funding (or facilities).

Oh–but all will be made clear by the definitions in the “Policy Guide”–because clearly, here, everything is a botched mess of incompetence.

You may feel yourself in a forgiving mood and suggest that this stuff is really complicated and it is difficult to find the proper words to satisfy everyone. But stuff that mood. Get a spine. This model IAA creates the complications first by being incompetent work but second by attempting to do something that only an incompetent would propose to do–that is, securing a one-agreement-fits-all that will be applied to university faculty, to staff, to students, perhaps to janitors (as at the University of California), and anyone else who might suffer from university employment (or receiving university-administered funds). It is not complicated to propose the use of such an IAA. It is incompetent to do so. Such an IAA repudiates academic freedom and contradicts university formal policy assuring faculty of freedom of research and publication and job security based on tenure; the IAA conflates employment and appointment; conflates patentable inventions with all sorts of other products of scholarship; and then aims to assert that faculty must assign in advance all such things before they are created, as a condition of . . . something or in return for . . . at least $1. This is not complexity. This is incompetence that produces a complexity. This is pigpen administration of inventions, carrying its cloud of awfulness with it.

The effect of the restrictive clause and its three parts is to restrict assignments to inventions (i) made in agreements to which the inventor is a party; (ii) result from significant use of only university funds or facilities; or (iii) are what the university already equitably owns under the circumstances. You may not have got these restrictions by reading the IAA on its own. But now you can see it: this is a reasonable interpretation of the IAA’s restrictions on scope, assuming that the IAA is drafted where its words carry its meaning. As the Shaw court put it,

The true intent of a contracting party is irrelevant if it remains unexpressed.

We will move through the rest of the IAA more quickly. I’m a bit depressed from the work thus far and you can anticipate the rest will be much the same. Faculty also

agree to execute all necessary papers and otherwise provide proper assistance, at UNIVERSITY’s expense, during and subsequent to the period of my UNIVERSITY affiliation, to enable UNIVERSITY to obtain, maintain, or enforce, for itself or its nominees, patents, copyrights, or other legal protection for such Intellectual Property; and

That is, inventors give up the right *not to use the patent system* and agree to participate in suing others for practicing the inventions that the university patents–or makes a claim under any other “legal protection.” Totally unreasonable in the context of a university, where academic freedom extends to the right to have a view of public service distinct from that of the university. Again, this requirement is a made, potentially, a condition of future employment and job security. Rat hole.

agree to make and maintain for UNIVERSITY adequate and current written records of all such UNIVERSITY Intellectual Property; and

Given the definition of “Intellectual Property,” the requirement is almost impossible to fulfill–anything conceived, say. You must make an adequate written record of it. Just try.

agree to deliver promptly to UNIVERSITY, when I terminate employment with UNIVERSITY for any reason, and at any other time as UNIVERSITY may request, copies of all written records referred to in Paragraph C, above, as well as all related memoranda, notes, records, schedules, plans, or other documents, made by, compiled by, delivered to, or manufactured, used, developed, or investigated by UNIVERSITY, which will at all times be the property of UNIVERSITY; and

Now the IAA is in full bombast mode. First it was just adequate written records of whatever. Now it is not only those records but also anything else–without even recourse to grammar. No, really: look–

agree to deliver . . . copies of all written records . . . as well as all related . . . documents, made by, compiled by, delivered to, or manufactured, used, developed, or investigated by UNIVERSITY, which will at all times be the property of UNIVERSITY; and

WTF? The university claims to own whatever it uses or investigates? Just how does a university manufacture a document? What does this even mean? Why if the university develops a document should a faculty inventor have to be bothered with delivering the document to the university? Here the IAA asserts that the university owns “all related documents” to any “Intellectual Property” with a scope so broad that all the university has to do is investigate the document and it owns it. Sucks to work at model universities in fantasy land. Best practice apparently is to make it suck really bad.

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