Most US universities have now moved to compulsory ownership IP policies. This is a huge mistake and is damaging American innovation and subverting the rationale for the federal government to promote university research. We will deal later with why compulsory university IP programs are bad for research innovation; how the arguments given don’t hold up; and why the evidence for “success” doesn’t support the claims being made. We will also go after limitations and fallacies of compulsory ownership IP policy for research innovation.
Here, however, the focus is on how to avoid or mitigate the claims of compulsory IP ownership programs.
For any given approach proposed here, you will have to check the details of your university’s IP policy, your employment agreement, and any funding agreements that support work. If you can, decide early to keep good things out if they need to be out, before you make things that carry ownership claims—especially inventions, software, data, and prototypes. Once you see the strategy, the particular choice of implementation should be pretty clear.
What follows is not legal advice. Get that from your attorney. Keep in mind that attorneys at a university don’t typically imagine that they work for faculty or staff employees. They tend to work for senior administration.
We will develop each of these strategies in more detail in later posts. For now, here’s the list and for each, a brief statement of strategy.
1. Don’t invent
Unless you recognize something as an invention, it’s not one. Don’t. No one owns what you do then.
2. Co-invent with someone outside the university
Co-invention means co-ownership. That ruins university monopoly licensing dreams, and lets you manage inventions through your co-inventor.
3. Subcontract
Push potentially inventive work and software development to another organization that’s more rational or better adjusted to the work. Subcontracting can be combined with collaboration to create opportunities for co-inventing.
4. Consult
Take advantage of your university’s consulting policy to document an area of work that is outside the IP policy claims. The amount of money doesn’t matter. The consulting documents that the work you do isn’t the university’s.
5. Go Open
Make the work in your lab available to the public as you do it, so there’s less chance for anything to become patentable as an invention. Use GPL software to force open treatment of any derived software. Incorporate open requirements into funding proposals.
6. Move promising work outside
Make a phone call or start a company or create a collaboration to move good work out before you invent or write code. If the first order of business is getting work out of the university, then take the initiative and do it before the bureaucrats get to it.
7. Ask for waiver
I put this in mostly for humor. But sometimes it works. You can even include the request up front, with a disclosure of an invention, just to make the licensing office folks get all paranoid.
8. Disclose but do not cooperate
Compulsory ownership folks hate it when inventors ignore them. Become a problem inventor. Throw fits. The office might spit the IP back out and might leave you alone in the future.
9. Challenge policy changes
If the policy has been changed to compulsory after you were hired, challenge the application of the compulsory claims to your work. Some IP policies fail here. Always challenge ownership claims placed by administrators into sponsored research contracts.
10. Change the policy
Start the process to change the policy. Challenge the rationale for a compulsory program. It’s not Bayh-Dole. It’s not efficiency. And it’s most certainly not the false dichotomy that administrators can manage IP better than faculty. The issue is whether administrators can manage *your* IP better than anyone else in the world.