Here’s an interesting bit from the Ohio Revised Code (my emphasis in the text):
3345.14 Rights to and interests in discoveries, inventions or patents – establishment of rules.
(B) All rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university. No person, firm, association, corporation, or governmental agency which uses the facilities of such college or university in connection with such research or investigation and no faculty member, employee, or student of such college or university participating in or making such discoveries or inventions, shall have any rights to or interests in such discoveries or inventions, including income therefrom, except as may, by determination of the board of trustees of such college or university, be assigned, licensed, transferred, or paid to such persons or entities in accordance with division (C) of this section or in accordance with rules adopted under division (D) of this section.
A number of interesting things are going on here. First, there’s no definition of invention. But there is elsewhere in the ORC, at 1345.61, in conjunction with invention development services (for which universities and non-profits, among others, are exempt)(again, my emphasis):
(E) “Invention” means a discovery, process, machine, design, formulation, product, concept, or idea, or any combination of them, whether patentable or not.
That is, an invention is an invention whether it is an invention or not. One would expect “that is or may be patentable.” But here, no. An invention that’s not patentable is exactly what? A trade secret? An idea in people’s heads? The law appears to claim anything that someone might call an invention–a piece of software, a cheeky idea, a selection of data–as a thing that can be owned, even if not under patent law, that is, even if it cannot be owned under the available theory of ownership that the law intends to address. Essentially, one assigns (or rather gives up) non-existent invention (and non-existent patent) rights for an asset that is not an invention and for which no patent can be obtained but is called an invention of the purposes of the law. But perhaps this definition is only for other parts of the law, and a different, special, unmentioned definition goes for this part.
Returning to 3345.14, we have more problems. What should be made of “shall be the sole property of that college or university”? One interpretation is that the ORC aims to place ownership of inventions outright with each university. That would appear to be in conflict with the US Constitution and federal patent law, which provides that title to inventions is with the inventors until they assign that title by a written instrument (see 35 USC 261 or the MPEP discussion). Does Ohio state law supplant federal common law?
Another interpretation is that the state law is directed at universities, requiring them to implement rules and agreements such that they take ownership of inventions, whatever an invention might be. That would make more sense. It’s just the strategy used doesn’t do that. In short form, the law reads like this:
All inventions are owned by the university. No one has any rights in their inventions except as the trustees decide. That means that any invention that’s made as a result of research in an Ohio state university facility is by law owned by the university outright, whatever it is that is meant by “invention.” The law does not even restrict itself to “in” those facilities: “as a result” is rather open-ended, broad. A result could come about months or years later. Heck, an invention could “result” because someone read about research conducted at an Ohio state university. Surely there are bounds to the legal claim of ownership.
[Translation to Piscopo:
Inventions!
Anything!
University!
Ownership!
Trustees!
Authority!
Inventors!
Big Losers!]
[Translated into original Star Trek, this becomes:
Spock: Alien companionship appears to be showing up on ship sensors now, Captain.
Ohura: We are being hailed, sir.
Kirk: Patch through the audio.
Alien: [Static] Captain Kirk, bring us your ideas, and we will make you rich [more static, pause] and provide you with lasting pleasure.
Kirk: Analysis, Mr. Spock.
Spock: It appears whoever it is that is hailing us is making you a business proposition.
Kirk: And more! I’m ready to beam down to the planet surface. Ohura, get me Starfleet.
Ohura: I’m trying, sir, but the signal is jammed by the ORC.
Kirk: Damn! Bridge to Engineering. Scotty, I need more power, now!
Scotty: I na can do’t, Captain. We wud ‘ave to be refitted by the auld Trustees and they be many a light years away and we dunna ha’ th’ money to buy them off anyway.
Sulu: I have lost the helm, sir. We are veering off course.
Kirk: Spock, what is happening?
Spock: It appears the ORC has us in a defensive tractor beam. The ship, and all its crew, and your good ideas, are being sucked toward a huge black hole of bureaucratic legal negative energy that has appeared behind us.
Kirk: Chekov, give me full power ahead. Get us out of here, Scotty! I have to beam down to that planet! I need power!
Scotty: She may blow, Cap’n, but I’ve connected the warp drives to one of your old consulting contracts and rotated the controls 90 degrees to see if we can somehow go sideways and break the tractor beam o’ legal blackness.
Alien: You are fading. Your ideas,… so lovely… Going… [static]
Uhura: We have lost the signal. The opportunity has passed, sir.
Sulu: Helm restored, Captain.
Spock: All systems appear to be once again nominal. Most interesting.
Scotty: [Sirens] Cap’n, we have [garbled, explosion]. Tha bureaucratic black hole has beamed itself aboard and is scanning your consulting contracts. I tried disconnecting the controls but she isna responding.
Kirk: What are you saying, Scotty?
Scotty: I’m tellin’ ya, Jim, I’m afeard that we are aboot to be decomissioned, put in desk jobs, working as clarks for Starfleet on some murky planet in the Banality star system.
Kirk: Get me Sick Bay. McCoy, expect another patient! I’ll need a strong shot of something [winks at Spock, who raises an eyebrow]]
This is the standard legal strong-arm of taking everything and giving back whatever the powers that be don’t want to keep. It makes it easy to be indifferent or dull. Just don’t give anything back. The effort, presumably, has to be on inventors to pitch their needs to an indifferent management, making an offer that overcomes their lack of incentive to act. In this way, the law as structured–whatever the intent–is fundamentally immoral, an attack on inventors–the public–through a drafting snarkiness:
“All [x] is mine; I release what is worthless; for anything else, pay me to give it up.”
That’s good government for you. That’s what we expect of universities. Yes, open and collaborative, except for the lawyers and bureauklepts writing laws and policies that claim anything new until more lawyers and bureauklepts have gotten a chance to thumb things over. Who would want to work in a technology transfer office running this way? Doesn’t it feel sort of, well, greasy? Worse, however, is the effect on innovation.
The law has some limitations–it recites the conditions under which claims are made: inventions that “result” from research in a university facility, any employee within scope of employment or using university “funding, equipment, or infrastructure.” It is not clear at all, however, what “result” means, and especially how far it extends. Research is conducted, and a discovery made and published, and folks at a company read the article and realize something and invent. Is that an invention that “results” from research at an Ohio university? It would seem to be.
The law having dealt with ownership in the first sentence turns its attention to rights in the second. Ownership is about title and has to do with those means by which title is recognized. Rights are about privileges in an asset, regardless of ownership. One can have rights in an asset without owning it (by way of license or by having privity in a contract involving the asset, say), and can have rights in an asset even if it is not owned at all (such as when one uses an idea made available by others–no ownership at all). This second sentence says, no-one–not employees, not companies, not students–has any rights to discoveries and inventions made within the claims of the first sentence unless the trustees of the university choose to allow them to have those rights. This is very strange. It would appear to mean that if one discovers something, he or she cannot do anything with it but for permission from the trustees.
Imagine, then, a university employee conducting research (not sponsored–just research) along with students. It could be in a classroom or a university coffee shop. It could be some parsing algorithm for complicated information. They invent, the employee and students. The law says not only does the invention belong solely to the university, but also that the students don’t have any rights in their invention but for an action by the trustees to assign, license, transfer, or pay them.
The language here might be set up to say: you can’t exploit privately what has been invented at public cost without permission from a representative of the public institution. But the law doesn’t say that. It says, without the need for assignment, ownership of inventions and resulting patents is with the university. The university trustees have limited options–they can assign, license, transfer, or pay–they cannot leave alone invention rights with individuals or outside entities. The law assumes ownership rather than provide a mechanism for it, and therefore cannot contemplate the trustees not having control of everything until they release it.
What might make trustees release discoveries, inventions (including all non-inventions), and patents? Worthlessness, for one. One might ask, worthless upon receipt, or made worthless through the bungling and indifference or bad luck of the trustees, or worthless over time as other things arise that compete? One might see in this line of questions the potential for the trustees to be liable for making personal property worthless through an unjust taking.
A second limitation is legal. The state law flies against the Constitution and federal law. [or another way of putting it, the law pre-empts federal common law, and that’s that]. The invention clause, the fifth amendment on taking personal property, and the Patent Act. The trustees, in their good sense, could create rules that limited their claims to requiring assignment of inventions by those who are employed or otherwise use facilities to conduct research–that is, assignment would be part of the bargain for employment or use of facilities or “infrastructure”. That would make better sense, and would provide some room to say, “yes, the law on its face is a grasping, ignorant mess, but because the trustees can act to hand things back that would be illegal to take, no harm, no foul.” Not a lot of room, but a start at a defense. It would be better if the second sentence did not limit trustee action to those four elements–assign, license, transfer, or pay.
A third way would be for the trustees to consider public policy and interests. This is a tough thing, however. What makes some thing “public interest”? One might start with a kind of academic freedom–that scholars are employed by a university to teach and do what they will to study, investigate, and publish. The state in trying to control the study does nothing helpful. Even evaluating folks based on publications and grant income is not helpful. It just adds to the incentives to game the system with faux metrics. Trustees might think in an enlightened moment, that even valuable things, even though legal to claim them, might be most valuable anyway to the public if left in the hands of those that created them. The role of the trustees would be to help those individuals become successful in their development of their property. This, rather than taking that property away as the first step, and waiting to be bought out to give it back. That would be something.
This Ohio law is a great instance of how university administrators destroy the environment for innovation. Even if one wanted to have a law that limited the ability of public universities to require their employees assign inventions outright to, say, commercial concerns sponsoring research, this would not be how to go about it. One hopes that in the future, someone chooses to contest the law and it gets thrown out as vague, illegal, and against public policy. One can only hope at that time the public universities in Ohio come out in favor of overturning the law. Why is it, then, that I expect the bureauklepts to a person will be defending the law?
We end with an observation about Bayh-Dole. The Bayh-Dole Act applies to agency contracting with universities. The agencies are required to enter into funding agreements with universities. Those funding agreements are required to include a patent rights clause, either the standard one, or an allowed variation. Upon accepting a funding agreement, the trustees accept the patent rights clause. That patent rights clause then tunnels through the Ohio statute. Under the patent rights clause, the trustees do not have ownership of any federally supported invention until they have required an agreement by employees regarding inventions and government rights, disclose the invention to the agency, obtain title by means of assignment, elect to retain title in the invention, and grant the government its royalty-free government-purpose license. The Ohio statute cannot operate to relieve individual inventors of their rights–or Ohio public universities are in breach of their federal funding agreements the moment they sign them.
In essence, the patent rights clause in federal funding agreements operates to provide some protection for inventors *against the overreaching claims and defective behaviors of their employers*. One may argue further that when the trustees agree to the standard patent rights clause and its definition of invention, they do not have the ability to invoke Ohio law to grab the inventions of non-employees or more broadly than the patent rights clause definition of invention at 35 USC 201 (d) — an invention “which is or may be patentable” not “whether patentable or not”.
The upshot is, the Ohio law fails to support federally sponsored research, runs against federal patent law, ignores Constitutional protections, overreaches to claim personal property (such as that of students and other non-employees), and is unreasonably vague, lacking the support of decent definitions and limitations on claims. Now, what public university folks want to take on defending it as a good thing?