I have been working through University of Washington policy on inventions. One of the interesting–and dismaying–aspects of the Washington policy is its use of conflict of interest policies to route intellectual property ownership to the control of administrators. I know, there are folks who think that if you work for a university, it should be like a company, and everything you do should be the company’s. It’s just “fair” and “reasonable”. I don’t agree, not even for companies, especially if we are talking invention. All the more so for universities, and in particular, public universities. There, claiming IP is equivalent to demanding state control over creativity. I don’t know why folks would think that state control would be really keen, but let’s start by saying it’s not the sort of thing that promotes academic freedom, and it is also not what promotes innovation. We can have it out on survey data proxies for productivity and the like, but why not just stay with the idea of argument for a bit before flying to statistics, damned lies, and the like?
Washington puts its outside consulting policy into what they call Executive Order 57. Thus stuff used to be in what was called a “Handbook” but apparently consolidating power in the form of a “Presidential Order” sounds mighty more awesome. We have to work through Order 57 to see just how the policy for outside work has twisted claims on intellectual property. I wish it weren’t so painful. Take something for the anguish and follow along if you are up for it.
After some truisms about how outside work can benefit just about everyone, we get down to the business of mitigating that benefit. First up for the Order is to report that the university gets to opt out of the statewide ethics law and substitute this Executive Order 57. Thus, whatever we see here is the result of the University dictating the requirements to itself.
The State Ethics Act builds in a number of requirements on outside professional work, assuming that there is something of value provided in return (pay, but this is an Ethics Act, so it’s about anything of value, because receiving any benefit is, without prior approval, a form of corruption). The work has to be bona fide, not part of official duties, not involving transactions with the University, not with folks one is prohibited from receiving gifts from, and not for a contract that the employee has created at the University. So far so good. Then we get 6):
| 6) | The outside consulting is not one which results in the unauthorized disclosure of confidential information or unapproved transfer of University intellectual property. |
Keep an eye on “unapproved transfer of University intellectual property.” Notice that “intellectual property” means patents, copyrights, and trademarks in most working definitions. One could transfer manuscripts and data and not transfer any associated copyright. One could also transfer ideas and inventions and not transfer any patent. Of course, if the University doesn’t hold a copyright or patent right in material one is working with, then there is no University intellectual property to transfer. I’m just betting, however, I can find a University official who will tell me that they didn’t really mean “intellectual property”; they really meant “anything we call intellectual property”; and by “transfer” they ought to mean “license” but they probably will want to mean “any conveyance, disclosure, offer, license, assignment, bailment, export, alienation, waiver, share, or any other thing we might mean by transfer but haven’t been able to anticipate.”
It’s more than this, however. This policy sets up the idea that the University by default controls the “transfer” of stuff–intellectual property in the normal version or something more than IP but called IP in the anything version. There’s no policy on the control of transfer in the anything version, actually, that I can find–that faculty as a condition of employment somehow give up their right to talk to people pending approval from administrative officials. Maybe it’s there somewhere and someone will be kind enough to point it out to me. The idea, then, is something more–it is an assertion. Accept the policy, and the assertion comes along for free. That’s how you wake up some day and find it’s all changed, and yet the changes seemed so minor, so technical.
Technology transfer in its broadest sense is the creation of new capability within an adopting entity. It involves moving stuff from developed to developing countries, from one industry to another, and from labs to industry use. You teach, empower, and develop capabilities in a new place. It’s what faculty do every day, teaching, publishing, discussing things. The piece that’s called “technology transfer” by technology transfer folks is really a narrow bit called “making money from patent licensing”. But what they really want it to mean is “making money from licensing anything that we can get our hands on covered by a claim of public mission”. Thus, there’s a question at the outset as to just what constitutes an “approved transfer of intellectual property.”
Linger on this. If the university owns the intellectual property, then no faculty member is authorized to transfer it. It’s a matter of delegation of authority, and that will end up with a provost or a vice provost or some technology transfer officer or contracts officer. In public universities, especially, care is often taken to expressly exclude faculty and staff from contractual matters: they are not parties to the deal, and they are not to attempt to influence those making the deal if they have any “interest” in the deal. Thus, there is no possible “approved transfer” of University intellectual property for this policy to deal with. Whoever wrote the text of the law didn’t have much idea what they were writing.
Then we have the zinger that despite these restrictions in the state law, a recent revision to the law allows the University to waive the restrictions when the activity will be “consistent with relevant University and public interests”. Okay. Again, faculty don’t get to decide what’s consistent or relevant here. That would be for administrators.
Section E gets things serious. In E, the policy recites Executive Order 36, the order having to do with patents, inventions, and copyrights (but referred to in Order 57 as “intellectual property”, though it doesn’t concern trademarks and apparently not other stuff that we will see comes into play in implementing Order 57). In Order 57, Section C, the reporting obligation is restricted to “inventions and discoveries”. This should, really, be “patentable inventions and discoveries” (inventions that are not patentable are not ownable by intellectual property means–there is no title, so no licensing–yes, trade secret, but that’s not an intellectual property right–it’s a right based on preventing public disclosure–and something one has to give pause to introducing as an obligation of faculty to the state).
But slop is slop. This is one of those “you’ll know what we mean when we see what you are doing and figure out what we mean” situations. In administrative circles, this is talked about as “leaving us some wiggle room”. Really, I’ve heard it in the wild, as if the art of drafting policy is to avoid making things clear so one has an advantage later. I think of it as a symptom of people who aren’t competent, trying to make a virtue of compensating through deception rather than candor.
If you feel that’s harsh, hold the thought. Really. It gets a lot worse, but I’ll try to stay level. Remember, this is an elite university, reportedly at the top of its game in technology transfer.
The point of this excursion is that one policy uses “intellectual property” in a disclosure obligation in reference to another policy that restricts disclosure to “inventions and discoveries”–which aren’t intellectual property, but are rather subject matter to which patents rights may attach. Further, “inventions and discoveries” are not copyrights, either. What this Section E of Order 57 is really about is scope. One isn’t allowed to make commitments in consulting to work for which one has already made commitments in University employment.
Here of all places would be the perfect place to change policy to deal with Stanford v. Roche (at least, according to those who want to preclude freedom). If one followed Stanford’s argument, here the University would stipulate that if you make commitments in consulting, and then later the university makes commitments that are in conflict with those consulting commitments, then you should set it up so that the later commitments made by the University void any now conflicting deal you have made under it. Stanford’s argument means: any transfer you make, even if approved by the University, is conditional, and later, it could be voided by the University by entering into a sponsored research agreement with different terms.
If you didn’t want to follow this form of Stanford’s argument, then here is the place to distinguish between scope of work for the University and what “outside” work is. For that, folks have to wrestle with the problem that faculty work, for the most part, other than meeting the commitments to teaching and service work like committees, is not assigned by the University. Faculty choose what to study. They choose the scope of their creative commitments to the University. It’s their choice whether to submit a grant proposal to a sponsor, or to call up a colleague at another university with a great idea, or to suggest an idea for a start-up to a student, or decide what to work on in a consulting arrangement. The faculty choose these things. No associate dean bosses come around and assign the work. One could say, all research is outside work until a faculty member decides to bring it in. It is the faculty member that commits research, and research outcomes, to the University. Executive Order 57 makes it sound like the President commands something definite, and everyone is warned not to cross the line. It simply is not that way.
Tone matters. Definitions matter. Assumptions matter. Common language across related policy statements matters. The problem has to do with how a text–here, a policy text–gets used. The bully way is to use the text as an emblem for power, and interpret it later as it suits one’s situation. This is a way of using text when one is determined to have power and put the reader at a disadvantage. For such a text, meaning is not carried by the words, and need not even be clear–all that matters is that there is “wiggle room” so that the authority side of the text can stick it to the subservient side of the text. Oddly, in contracts, the rule of interpretation is that a contract is interpreted against the drafting party–the drafter is not entitled to make up the meaning at need–the other side has a degree of freedom to do so, within the bounds of reasonable meanings. The bully approach, however, is endemic in university policy drafting, practiced by attorneys and bureaucrats alike. Love of autocracy runs deep, especially in public servants with low status and access to something that feels like power).
Section 3.A of Order 57 lays out the requirement for approval of “outside consulting work for compensation”. According to policy, one has to request approval in advance, request that approval annually for each activity, and receive approval before accepting work. The approval goes from supervisor to dean, chancellor, or vice president. There is no indication that this responsibility for approval can be delegated, except that the President can delegate most, but not all, of the President’s responsibilities to the Provost. One would think there’s a lot of work here for all of these folks. It’s important to note, however, that the policy requirement to seek approval applies only to outside work for compensation.
We will pass over the strangeness of 3.C, which is surely not drafted correctly. We pass over as well Section 4, which requires an annual report of all outside activities, whether for compensation or not. Fine and good, if one wants a diary.
The surprise comes in Section 5, which suddenly carves out exceptions to the policy. Think of it as a little West Berlin in a great big East Germany. This is a typical policy drafting pattern by folks that favor autocracy but often don’t have a good idea what they are supposed to deal with. Cover everything, even if you don’t know what everything is, and release what you are sure of. That’s consistent with autocracy, but it’s not consistent with freedom. What, then, do we consider a university to be? I’ll say: the more free it is, the more it deserves public funding. The more autocratic, compulsory, and corporate it is, the more it should fend for itself.
Section 5 says that it is fine to work for nonprofit associations, scholarly and advisory bodies, public commissions, and philanthropic organizations. It is also fine to do guest lectures, deliver papers, serve on review and accreditation panels for nonprofits and other colleges and universities. This work can be compensated, voluntary, or involve honoraria (which have their own messy policy, which we will avoid). What is exceptional about Section 5, however, is that these activities are “not considered outside consulting” and are “appropriately characterized as University and community service and are complementary to University responsibilities.”
We have, then, as a matter of policy, three categories–university responsibilities, university and community service, and outside consulting. Service and consulting must be reported annually, but only consulting requires approval. We may note that there is no exception for such things as thinking for one’s self, helping a neighbor design a go-kart, or being asked to give a guest lecture at a company (even without compensation). Is this an oversight? Or does the policy intend that *everything* that is not done for the University, but for the exceptions of Section 5, must be approved in advance? Yeah, maybe it’s just a drafting flaw, and we’ve already thrashed the idea that words matter, except in emblematic policies.
Let’s turn now to the Request for Approval of Outside Professional Work for Compensation. The link is in the upper right corner of this page, and it opens a Word form. The Form consists of a Policy Overview, instructions for use, a series of questions to be answered by the applicant, an oath-like text to be agreed to by the applicant with a signature, and disposition blocks for supervisors.
It’s really a disaster as a form. But I want to focus on a few key areas.
The “Policy Overview” appears to be a statement of policy, launching into a definition of an “activity for compensation”: “A person is deemed to engage in an activity for compensation if the person has any economic interest in the activity, or has waived or assigned that economic interest.” I’m stumped. If a person has waived compensation, then how can there be any? Yet this little bit of policy “overview” says that even if you turn down an economic interest, you still have one. This should be deeply disturbing in an Orwellian way. Just to prove that this is not an isolated or mistaken things, the Form continues by defining “economic interests” as “monetary payments” or the “right to receive monetary payments”; “equity interest” or the right to receive equity; and this:
any intellectual property interest, that is, any interest in an invention, patent, copyright, trademark, trade secret, know-how, or other intellectual property right.
Here we find a working definition of intellectual property, outside of Executive Order 36 (Patents, Inventions, and Copyrights) and Executive Order 57 (our friend for the past few minutes concerned with outside professional work for compensation). Here in the Form we have a laundry list of things, some intellectual property (patent, copyright, trademark), some associated but not (trade secret), some having nothing to do with intellectual property (know-how), and a catch-all (“or other intellectual property right”). The catch-all is remarkable as there *isn’t* any other intellectual property right once you’ve got through patents, copyrights, and trademarks. And if by “other” the drafters intend “anything else that’s not intellectual property but we decide to call intellectual property,” then the gesture is that intellectual property is anything anyone at the University decides to add to the list. That’s not an enforceable position. Clearly this is an incompetent job of drafting. But it’s worse. It’s deeply, maliciously, incompetent.
In a typical personal conflict of interest policy, one is looking for some personal, external benefit that would reasonably be understood to influence a person in a way that would call into question their actions with respect to their duties of employment, and you want to exclude or manage that, with some way of bringing it forward for disposition. But this is not happening here. Here, the economic interest could be something *an employee already has*. They don’t even have to receive it from someone involved in the proposed involvement! It is an activity for compensation not only even if there is no compensation, but it is also an activity for compensation if you already have any of this laundry list–including practical knowledge “know how”. This means, if you have written a scholarly article, and you talk to someone not at the University, why, that’s Outside Professional Work for Compensation requiring approval. Does it feel like nonsense? Still up for the argument that “everyone knows what is meant here, the language is clear”?
There’s more (my bold and underline):
A person is deemed to have an equity interest or an intellectual property interest if the person either will receive the interest in exchange for engaging in the activity, or owns the interest prior to the activity and the value of the interest could be affected by the activity.
Let’s work through this. “is deemed” is such obfuscating legalese. Who here who is doing the “deeming”? The Form is not saying. This is an effort to define a scope for the requirements. But that is the job of Executive Order 57, not the Form. Has the Form been through the same approval process as the Order? Given the horrible drafting of both, perhaps the answer is yes–but I doubt it. What follows in the quoted sentence might make sense for an equity interest, but it makes no sense at all for intellectual property–especially not the way it has just been defined. You “are deemed to have” (even if you don’t have) an economic interest in an activity if you “will receive” the IP in exchange for engaging in the activity.
Put it this way: By working with you, I will learn something. Or, say, by working with you, I will write a computer code. These are “deemed” to be economic interests, even if there is no compensation. I don’t know what “will receive” means. It’s not the language of transfer of title, and it’s not the language of licensing, and it’s not the language of how a copyright or title to an invention vests initially in the author or inventor. One does not “receive” a copyright. One has it by operation of federal law. It vests. It certainly does not come from some other party. Maybe what is meant is “assignment” or “license”–that is, I’ll work with you if you agree to assign whatever you do or have to me. I can’t imagine such exchanges take place in consulting work very often. I’ve never heard of a consultant working to obtain someone else’s patent or copyright. Perhaps it happens. Bowl of lentils for a birthright. What an odd fetish to show up in the Form, however.
The second part of the quoted sentence is even stranger. Here, the economic interest is that one already has IP (again, defined as broadly as know-how), and that IP “could be affected” by the activity. This isn’t compensation, and it isn’t even a foreseeable “will be affected” and it isn’t even that the effect is an increase in value. The effect of this deemedness is to claim that if you work with someone who does not pay you and you have a working knowledge of something, and that knowledge could be more (or less) valuable as a result, then you are being compensated anyway and have to get approval. That’s outlandish. It’s unethical. It’s utterly bungled. Or, it’s East German.
Note to Michael Young: You really should recall this Form. It is happening on your watch. You are not responsible for the wretchedness of Executive Order 57, or Executive Order 36, but the moment you stand behind them, and let this Form go, it’s all yours as if you approved every word. You are a better lawyer and leader than that, so here’s your chance to start to clean up the mess that’s been made. Don’t tolerate this kind of thing. And don’t hand it back to the same people to have them re-do it. They clearly are incompetent for the job.
We note that the Form moves on to provide “information” regarding how one calculates the days allowed in outside work. It’s a tangled mess. And it’s not in Section 1.B of Executive Order 57. It’s just made up out of the blue. It’s not “information” about policy, it is asserting policy. Worse, when folks come to the oath section at the bottom, there’s an implication that they will sign it into policy as their little personal amendment with their employer.
We can add to this yet more. In Section 6 of Executive Order 57, which deals with “Deeper Involvement” than consulting–a section that has perhaps the worst paragraph in the history of University of Washington policy (more of which to come)–we find this statement:
The policy recognizes the need for flexibility and the difficulty of anticipating all situations that may arise by leaving discretion to an employee’s supervisor to interpret the policy and evaluate the activity proposed in the context of the unit in question.
Apparently the Form doesn’t think that this is the case. Or, if it is the case, then why is the Form so troubled to differentiate travel time and continuous relationships–whatever those are? Clearly, deeper involvement requires supervisor judgment, while common everyday chatting it up for no compensation requires getting approval and proper accounting of whether you drove downtown solely for the coffee meeting or whether you also bought something at Nordstroms to offset the full time allocation to the “consulting”.
As to the questions the Form puts to applicants for approval, let’s focus on the ones involving IP:
(22a) __ Yes __ No Will this activity result in the transfer or use of technology, information or other intellectual property developed at the University of Washington that is not publicly available?
(23a) __ Yes __ No Will this activity result in the transfer or use of discoveries, software, databases, inventions or other intellectual property not yet disclosed to the University of Washington?
(24a) __ Yes __ No Will this activity result in the transfer or use of intellectual property obligated or licensed to another entity?
There are a number of things going on here. First, we get a new implied definition of “intellectual property” — now it is “technology, information, or other intellectual property” (22a). No, oops, it’s “discoveries, software, databases, inventions, or other intellectual property” (23a).
Note that the language of question 22a is directed at stuff “developed at” the University. It does not have anything to say about whether this stuff is owned by the University, waived by the University, or simply not a matter of ownership. One could use information in scholarly articles that report research results derived from work at the University in 2001, or software released open source. Or something that a student thought up and put up on a web site last year.
Even if the focus of the Form were restricted to real, statutory IP owned by the Univesity or obligated to the University, that stuff is already handled in Executive Orders 57 and 36–it can’t be transferred by mere employees. So why would the Form think folks would answer “yes”? And if that part is excluded, then in the Form’s present approach, it is really asking whether anything that isn’t obligated to the University but was developed at the University (could have been 1963) is being *transferred or used*. That is, the interest of the Form would then be in things that have no bearing on “approved transfers” of IP. It’s plain nonsense. It hasn’t been thought out.
Question 23a is no better. Here the query introduces a new implied definition of intellectual property, but asks after work simply because it hasn’t been disclosed to the University. There is no indication that this new list of IP is owned by the University, or should be. It could be company IP. Why would anyone have to disclose it to the University? It could be personal to the employee, a database of books on quilting, say. What does this have to do with a request for consulting? It’s none of the University’s business, beyond ascertaining that a given activity won’t interfere with the employee’s duties, doesn’t involve use of University resources, and doesn’t take up more time than allowed.
Question 24a is simply incomprehensible as drafted. What is “another entity”? And who is doing the “transfer or obligating”? It’s not stated. Someone rolled their eyes back in their head and blurted out something they were worried about and here it is in the Form. If the issue is, that there’s University IP that has already be transferred (i.e., licensed exclusively, say) to company A, and the consulting is with company B and would use that same IP (presumably, without a license from A), then that would appear to be covered in 22a, as that would be stuff that’s not “publicly available” because it has been licensed to A. But perhaps it is any license–say, an open source license of software, picked up by companies A..ZZ and this will be compnay ZZA. But then, ZZA need only go get the software first, and then do the consulting deal. So the workarounds are obvious.
Even trying to fill in the blanks in some reasonable way leaves little clarity about what the question is trying to get at. If the question is merely asking, “Are you going to use something that’s not yours that the University already has licensed elsewhere, so as to create an infringement situation?” then there are a ton of those. Think of every stupid, malfeasing thing you can think of and ask a yes or no question about it. There’s a long list. Question 24a is merely an instance, an emblem to stand in for all of them. At some point, it becomes insulting. Bad people are going to lie or at least not think clearly about it, and good people will see that the needling is there to imply that good people are really bad people, too, but not so bad or clever as to lie about things, and gosh, it will be good to catch up those not so clever but not so good people and deny their request to do bad stuff while the bad folks sail through the forms process and who’d have known? For this, it is really important to have a Form like this, to ensure the “integrity” of the University. It’s a useless, malicious Form.
It may be worth noting that for all the questions on the Form, few of them track the requirements at Executive Order 57.6.C. Those that do make subtle changes that have marked effects. Some changes are not subtle at all, such as expanding the sphere of interest to include family members, which does not show up in Executive Order 57.
We have already handled the oath section of the Form elsewhere, so I won’t belabor it here. The point is that policy that should be acknowledged is not the Patent policy (Exec Order 36) but the Outside Professional Work policy (Exec Order 57). Of course, by the time it gets to the Form, it has devolved into a kind of incoherent madness, not concerned with professional work, but nearly any work, and not for compensation but for any economic benefit, and not for just any economic benefit but even economic benefits that aren’t benefits, and for even changes that could take place in the value of intellectual property even if it isn’t intellectual property at all, and even if it has never been valued.
Little things are left. The “Office of the Provost” is to complete the Form for the Provost. There’s nothing in Executive Order 57 about the provost delegating responsibilities. 57 3.B. specifies “dean, chancellor, or vice president”. No provost there. 57 6.A. has this “The President’s responsibilities as supervisor may be delegated to the Provost, except for approval of activities of the Provost.” But that is in a list of supervisors, not a general delegation of oversight of the top level review.
So here on the form we have a little more rewriting of policy going on, or perhaps it reflects a delegation that isn’t in policy, but you know, this stuff appears to be made up as folks go, so maybe that’s more of the “flexibility” built into the system. Whatever the reason, it’s clear that the Form expects someone perhaps other than the Provost but yet in the Office of the Provost and thus not in the Office of the Vice President, say, to sign off on the Form. For all this work, all the fussing over details, all the definitions and warnings and explanations, the final sign off is could be an underling obscured by a grand Office. What qualifications, this underling? What accountability? What delegation of authority? Either this kind of stuff is important or it ain’t. If the policy says Vice President, then how about the Vice President? If the policy doesn’t say, delegate to underlings because you are too busy with other important things, then how about signing every one of these things that you are required to, after a diligent review? And if this looks like a lot of waste effort and expense, drafted carelessly, to make a sham show of compliance with a substitute policy for what must be considered a nuisance state law about “ethics”, well then you might well be close to what is going on.
There’s a movement out there to make nonprofits follow the model of Sarbanes-Oxley and demonstrate executive responsibility for the activities on their watch. It’s a good gig for consultants, if you can get it. In its way, this Form participates, however incoherently, in that effort. And yet it also does just what one might fear in such corporations, and that is merely serving as a show to make it appear there is a level of awareness and judgment that simply does not–and cannot, really–exist. Into that void, sloppy, silly, earnest, even malicious folks can draft the darn’dest stuff and pass it off without the coarsest review for language, consistency, purpose, or thought. Perhaps the folks there in technology transfer policy think it’s all a pretty fun game and they can make stuff up with impunity, and faculty will dutifully sign off on whatever nonage they produce. Perhaps that is what has been happening. But if this is the state of the art for elite research universities when it comes to innovation policy, then it’s time to reboot the franchise.