An invention is not a thing, 3

An invention is not a thing. An invention is a set of practices and objects. Invention is broader than just what’s patentable, as is the case with Bayh-Dole’s definition of invention, which includes stuff that’s not patentable and stuff that people think might be patentable but turns out not to be patentable. The edges of the scope of Bayh-Dole’s definition then are as flexible as what people think about inventions. If they don’t think certain inventions are patentable, then, well, those inventions fall outside Bayh-Dole’s definition even if those inventions turn out to have been patentable. Obviously, if someone files a patent application on a given invention, then someone at least–a patent attorney, say–thinks the invention may be patentable.

Invention, then, has all sorts of meanings, depending on context. Universities write policies with all sorts of corny definitions of invention. It would be funny except the consequences can be horribly sad. Look–here are some:

Northwestern:

Invention: A machine, method, manufacture, composition of matter, or design that may or may not be patentable under the patent laws of the U.S. or a foreign jurisdiction.

Northwestern recites patentable subject matter and then provides a useless division between stuff that “may be” patentable and stuff that “may not be” patentable. Talk about ambiguity. Excluded from the definition: stuff that *is* patentable and stuff that *is not* patentable. A definition of what is perhaps. Worse, an invention is not merely a machine–it’s a machine that is new in some way. And to make it a patentable machine (which Northwestern’s policy does not care about), the inventive aspects of the machine must be new, useful, and non-obvious. It’s a stupid definition–it means “anything that may be or may not be” patentable. Anything that may not be patentable is pretty much *anything*. Sorry, Northwestern. It’s stupid.

UNC Greensboro:

For the sake of this Policy the term “Invention” shall mean any innovation, or process (way of doing or making things), device, contrivance, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, or any computer software originated from a discovery or finding resulting after study, research or experimentation, whether or not patentable under the law of any nation.

“For the sake of” is just bizarre. Perhaps they meant “As used in this Policy.” But of course they didn’t write that, and in legally binding documents, we should assume that people are capable of writing what they do mean. “Any innovation” is broad. What makes something an innovation? There are plenty of definitions–one is Rogers’s–anything seen as new to an adopting party. Well, then, one would have to have some party adopting the “innovation” to make it one. Another definition is OECD’s, from the Oslo Manual–“a good or service that is new or significantly improved.”

Well, in that definition, innovation is the outcome of a development process, not the starting point. The UNCG definition takes as its definition of invention the desired outcomes of applying institutional ownership and licensing for commercial development. Again, stupid. UNCG sprinkles into a base text drawn from patent law sillinesses–innovation, contrivance, software–and then does the same stupid division–“whether or not patentable.” What is a non-patentable invention? Well, it can be *anything*. What makes it an invention if it is not new, useful, and non-obvious? Well, anything–whatever someone says is an invention can be an invention. The definition conveniently drops “new, useful, and non-obvious” from the list beginning with “innovation,” but recovers for “new and useful improvement” but then expands to include “new and useful improvements” that are not patentable. So, not particularly new or useful.

And for all that, the structure of the definition is “any innovation [and list] originated from a discovery or finding resulting after study [and list] whether or not patentable.” The “resulting after study” restricts the definition hugely. Any “innovation” that does not result “after study” isn’t within scope of the definition. What cluelessness.

The only thing that a policy definition of invention needs to do is to make clear that it concerns patentable inventions. The point is ownership of patents on inventions, not to provide some bespoke new definition of invention. It is the right to obtain a patent that is at issue. But no, we must be clueless first. Why is that?

Utah:

Inventions” shall mean and include: inventions, technological advances, scientific discoveries and improvements (whether or not patentable); all trade secrets and know-how; trademarks and service marks; and the tangible and intangible results of research (including, for example, data, lab notebooks, charts, biological materials, cell lines and samples). “Inventions” shall also mean copyrightable works that include subject matter that is also patentable, as determined by the TCO Director, and software, notwithstanding the extent to which software may be governed by University Policy 7-003 (Ownership of Copyrightable Works and Related Works). Each faculty member will be deemed the custodian of his or her laboratory notebooks and must promptly deliver such notebooks upon the University’s request or upon termination of his or her appointment with the University, in which event, the faculty member will be entitled to retain a copy of such notebooks.

Hooey. Inventions shall include inventions. That’s a sweet opener. Then a laundry list of things–including such creatures as non-patentable scientific improvements. What the heck is a non-patentable scientific improvement? By the time we get to know-how (personal knowledge of how to do something) and trade secrets (which may not be inventive at all (just having economic value and not generally known to the public with reasonable efforts to prevent disclosure)), the term “invention” does not carry *any* of its common meaning of something new as “a new device, method, or process developed from study and experimentation” (to use a common dictionary definition tracking ordinary usage). One creates a definition in policy to distinguish the use of a term from ordinary usage. But here, Utah creates a use of innovation that distinguishes the term from any usage at all. It would have been better to define the term “kitchen sink” with their list of whatever.

Think about it. The Utah definition amounts to a claim on anything. The definition aims to be broad rather than specific. The result is two-fold. One might argue that the claim to ownership based on this definition is so broad as to be unconscionable as a matter of public policy and therefore void, unenforceable, empty. One might argue, also, that the definition is ambiguous–by claiming everything when clearly everything is not appropriate, the definition makes it unclear what actually is intended. In matters of ambiguity in adhesion contracts–ones that one party to the contract is not able to negotiate–the non-drafting party should be given the benefit of interpretation. It’s not what a university administrator asserts is meant by the definition, but what each faculty member and employee of the university might understand the text to mean. If a faculty member or employee reasonably cannot understand the text as an administrator says it must mean, then the text is not recording a mutual agreement, there is no meeting of minds, there can be no contract.

For good measure, Utah throws into a definition of invention an unrelated provision that’s not a definition at all, and concerns laboratory notebooks.

That should be enough to get you to the idea that university policies are full of definitions of invention that stretch the scope of what is involved in an invention. An invention, again, is not a thing. University administrators work hard to create mind-bendingly stupid definitions of invention in an attempt to capture everything that they might want to claim. It would be much easier if they did not try to define invention (even patent law does not make that attempt, but for Bayh-Dole) and instead focused on the disposition of what is actually patented.

Going this direction, one would have a cascade of reasoning that went: to what patents should a university have a claim? If a university makes a claim to certain patents, then inventors would be wise not to spend their own money preparing patent applications only to find that they have already agreed to assign the patent rights to the university. Thus, they may want to disclose the invention to the university to confirm that the university does not claim an interest in the patent rights–or, if the university does claim such an interest, then it is the university’s problem to spend money on the patent application.

If an invention isn’t patentable, then there’s no reason for anyone to spend money on a patent application, and fussing over ownership of prospective patent rights is meaningless. If the university’s real purpose is to suppress publication (“trade secret”) or practice (“know how”), then put those suppressions in a policy on University Suppression of Public Access to Faculty Work and Expertise. Given that most universities by formal policy assure their faculty of freedom of publication and research, it would be strange to find a contrary policy announcing the right of the university to suppress, at will, faculty work and expertise. Yet this is just what the combination of broad definition of invention + claim of ownership in things that cannot be owned but only suppressed does. The only difference is that in one approach–A Policy of Suppression–the purpose is announced, and in the other–a stupid Patent and Invention policy–the purpose is kept implicit (or, suppressed, if you will).

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