We are working through examples from the ipHandbook‘s advice on best practices for university ownership of inventions. All the examples feature a professor who finds ways to stick it to the university and wise words about how university officials could have stuck it to the professor if only they had been vigilant and pro-active. Yes, best practice is to stick before getting stuck. Ownership of inventions is assumed to be the goal. Why on earth would ownership be the goal, and not something more interesting, like public benefit, or widespread use of the invention, or, heh, making money?
Saturday afternoon conception at home. This one sounds like fun!
Ownership, in this case, would depend on the exact wording of the IAA. As a matter of policy, each university must decide what is fair and what is beyond the scope of the IAA.
Ah, snap. Not what I thought.
The analysis here stumbles. If the university must decide, then the inventor assignment agreement cannot be a contract. It is more like a statement of inventor’s submission to whatever the university decides. If the “principles of ownership” set out in the patent policy are so unclear that magical wording is needed in an IAA, then all hope of clarity is lost, and the contract fails for lack of specificity. “We made it certain that you agreed to something–we just haven’t decided what.” Oh, geez. This is best practice?
A faculty member invents at home, rolling in the hay with, er, an idea. If only magically precise language in an invention assignment contract can determine the outcome, the policy has already failed. If an invention is a deliverable under a sponsored research contract, then it is the terms of that contract that control, not some university policy statement. If the invention is not a deliverable, then what is the university’s basis for a claim? Nothing equitable, that’s for sure. Continue reading