Here is a collection of clips from ten US research university IP policies. The focus is on claims of ownership, not considering any of a number of other matters, such as royalty sharing schedules or the conditions on which property is restored to its inventors/authors/developers/possessors. I’ve added some bold. Commentary follows for each, in blue.
University of Delaware
http://www.udel.edu/ExecVP/policies/research/6-06.html
It is policy of the University that all inventions and discoveries, together with any tangible research materials, know-how and the scientific data and other records of research including any related government protections (collectively “Intellectual Property”), which are conceived or reduced to practice or developed by University faculty, staff, or students in the course of employment at the University, or result from work directly related to professional or employment responsibilities at the University, or from work carried out on University time, or at University expense, or with the substantial use of University resources, shall be the property of the University. An invention shall constitute any discovery, machine, new and useful process, article of manufacture, composition of matter, life form, design, algorithm, software program, or concept that may have commercial value. University faculty, staff, or students employed by the University who discover or invent or develop a device, product, plant variety, method, or work while associated with the University must cooperate with the University in defining and establishing the rights to such inventions, works, materials, and data. This obligation extends to any Intellectual Property, whether or not made on University time with or without use of University facilities.
Here we have an expansive definition of Intellectual Property that includes know how, data, and records of research; and an expansive claim based on employment–includes work “directly related”, distinguishes “professional responsibilities” from “employment responsibilities” and claims both! What might work carried out “on University time” mean, if not within course of employment?
The policy furthermore requires “cooperation” in “establishing rights” even if the assets are *not* made on “University time” or with University resources. One would expect such a provision to be a *disclosure* obligation for inventions only, not a demand for “cooperation in establishing rights”. Note the “may have” that qualifies the list of subject matter the policy includes under “invention”–some of which has no patent (and therefore no invention ownership) significance, such as “concepts” or “software program”. The “may have” dramatically expands the scope of interest, and leaves open exactly who makes the determination of what has “commercial value” and how such value differs from other sorts of value, such as “utility value” or “research value” or “social value”–any of which could also carry “financial benefit” even if the thing itself does not have “commercial value”–that is, it will not have its value by being *sold*.
In all, a needlessly expansive set of claims, with enough problems to make the policy generally read: “we own everything we say we own, and you agree to agree with our determination”. Which, if this is the essence of the policy, is it not merely an agreement to agree? Is such a thing binding? I was taught that agreements to agree weren’t enforceable. Perhaps the folks drafting this policy didn’t get the memo. Is a university patent policy a kind of private law (as UC has claimed), a contract with employees, guidance for administrators, or a restatement of laws and regulations? The policy here is given effect, not by being sound drafting based on law and a contract formed with university personnel, but standing as something of a threat to the livelihoods and reputations of faculty, staff, and students. Assign or we will come after you. Policy as implicit threat. Perhaps that is the thought that motivates much of the drafting in these policies.
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University of Texas
http://www.utsystem.edu/bor/rules/90000Series/90101.pdf
Individuals Subject to this Rule. This intellectual property Rule applies (a) to all persons employed by the U. T. System or any U. T. System institution, including, but not limited to, full and part-time faculty and staff and visiting faculty members and researchers, and (b) to anyone using the facilities or resources of the U. T. System or any U. T. System institution, including, but not limited to, students enrolled at a U. T. System institution such as in an undergraduate or graduate degree program or certificate program, and postdoctoral and predoctoral fellows. The Board of Regents automatically owns the intellectual property created by individuals subject to this Rule that is described in Sections 3, 5, and 6 below and in Rule 90102, Sections 2 and 3.Accordingly, all individuals subject to this Rule must assign and do hereby assign their rights in such intellectual property to the Board of Regents. Moreover, individuals subject to this Rule who create such intellectual property (creators) shall promptly execute and deliver all documents and other instruments as are reasonably necessary to reflect the Board of Regents’ ownership of such intellectual property. A creator of intellectual property owned by the Board of Regents has no independent right or authority to convey, assign, encumber, or license such intellectual property to any entity other than the Board of Regents.
Intellectual Property Included. Except as set forth in Sections 4 [exclusion of copyrights in scholarly and educational materials] and 5 [exclusion for scholarly content in software, but not the code itself] below and Rule 90102 of the Regents’ Rules and Regulations, this Rule applies to all types of intellectual property, including, but not limited to, any invention, discovery, creation, know-how, trade secret, technology, scientific or technological development, research data, works of authorship, and computer software regardless of whether subject to protection under patent, trademark, copyright, or other laws.
The scope of the Texas claim is beyond employees–anyone using facilities and resources. The policy makes the totally ineffective effort to claim that those subject to the policy “hereby assign” their rights–something that has to happen in a written contract signed by the person conveying rights, not in a pronouncement in a policy. But worse of all, the policy claims rights in assets beyond patents, and beyond intellectual property–taking in “know-how” and “data” and “trade secrets” as well as unpatentable inventions. The foolishness–and graspingness–of this is beyond comprehension. Ownership of IP depends on the fact that the IP has standing under the various IP laws. Without a legal means of ownership, there is none. If an invention is not subject to protection by patent, then it isn’t owned. If the university cannot sustain a trade secret claim against faculty, then it cannot claim trade secrets (of the faculty) or their know-how. Certainly the university cannot do this for non-employees “using the facilities or resources” of the university.
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University of Southern California
http://policies.usc.edu/p4acad_stud/intellectual_property.pdf
Unless otherwise stated in this Policy, the University is the owner, under federal and California law, of all intellectual property created by members of the University community which is:
- created or developed during the course of an individual’s responsibilities to USC, including works made for hire; or
- created or developed pursuant to a sponsored agreement or pursuant to a written agreement to transfer ownership to USC; or
- created or developed with the significant use of University facilities, funds, resources or supplies.
Members of the University community own intellectual property that is developed on their own personal, unpaid time, in the absence of any sponsored project agreement or other agreement giving rights to USC, and with only incidental use of University funds or facilities.
This is a standard statement of ownership based on employment–but broader –“individual’s responsibilities”–sponsored research agreement (but “pursuant” should mean “as required by” but here may mean “if within the scope of–that is, the agreement contemplated the creation of the work, rather than stipulated the disposition of ownership of the work)–and significant use of resources of various sorts.
Later in the policy we find this:
Contracts or grants sponsored by the federal government require that the University retain title to inventions conceived or reduced to practice in the performance of a sponsored project, subject to a royalty-free, non-exclusive license granted to the government. The same requirement frequently applies to copyrightable material developed in the performance of a sponsored project.
This bit restates the standard (now shown to be wrong) interpretation of Bayh-Dole. But a year after Stanford v Roche, USC has not bothered to change its published policy. When does such a thing become contempt? The policy statement is also unsupportable (at best) with regard to copyright. 2 CFR 215.36(a) addresses copyright. A grant recipient “may copyright” any work developed under an award. There is no requirement that it do so, nor any indication that the recipient (if a university) must take ownership of copyrights.
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University of Michigan
http://www.techtransfer.umich.edu/resources/policies.php
Intellectual Property made (e.g., conceived or first reduced to practice) by any person, regardless of employment status, with the direct or indirect support of funds administered by the University (regardless of the source of such funds) shall be the property of the University, except as provided by this or other University policy.
The University will own Intellectual Property made by a former University employee if the Intellectual Property was made both (1) with substantial University faculty guidance or University resources and (2) during activity directly relating to and closely following employment.
Michigan goes even further and claims ownership of inventions made by *former employees*!
The University generally will retain ownership of Intellectual Property produced by Employees while participating in sabbaticals or other external activities if they receive salary from the University for such activity.
And faculty on sabbatical, when they cannot possibly be employed by the university to “invent”. Worse, “other external activities” could mean pretty much any kind of collaboration, or volunteer work.
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MIT
http://web.mit.edu/policies/13/13.1.html
- Inventor(s)/author(s) will own Intellectual Property that is:
- not developed in the course of or pursuant to a sponsored research or other agreement (the faculty advisor, administrative officer, or the Office of Sponsored Programs contracts administrator can advise on the terms of the agreements that apply to specific research); and
- not created as a “work-for-hire” by operation of copyright law (a “work-for-hire” is defined, in part, as a work prepared by an employee within the scope of his or her employment) and not created pursuant to a written agreement with MIT providing for a transfer of copyright or ownership of Intellectual Property to MIT; and
- not developed with the significant use of funds or facilities administered by MIT (“significant use” is discussed in Section 2.1.2 of the Guide).
- Ownership of all other Intellectual Property will be as follows:
- ownership of Intellectual Property developed in the course of or pursuant to a sponsored research or other agreement will be determined according to the terms of such agreement;
- ownership of copyrightable works created as “works-for-hire” or pursuant to a written agreement with MIT providing for the transfer of any Intellectual Property or ownership to MIT will vest with MIT;
- ownership of Intellectual Property developed by faculty, students, staff, and others participating in MIT programs, including visitors, with the significant use of funds or facilities administered by MIT will vest with MIT.
MIT claims even the inventions of *non-employee* “others” if they are “participating in MIT programs”. More expansion of claims, as we have little to go on with regard to “participating” beyond “with the significant use of funds or facilities.”
The use of “will vest” is interesting. A legal definition is “to give an absolute right to title or ownership”. Apparently MIT here intends a claim equivalent to assignment. The use of “will” however leaves open the timing of the transaction. When exactly is “Intellectual Property” (statutory IP and “tangible research property”) “developed”? When exactly does such developed stuff “vest”? Not known. In the US, invention ownership “vests” in inventors per federal patent law and the US Constitution. To get to “vesting” in MIT takes something more than an assert that it “will”. A written assignment, for instance. But in the interim, good policy foot stamping of entitlement appears to be in order.
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University of California
http://atyourservice.ucop.edu/forms_pubs/forms_worksheets/upay585.pdf
I acknowledge my obligation to assign, and do hereby assign, inventions and
patents that I conceive or develop 1) within the course and scope of my
University employment while employed by University, 2) during the course of
my utilization of any University research facilities, or 3) through any connection with my use of gift, grant, or contract research funds received through the
University.
This is text embedded in a form that all employees must sign, along with an oath to the state of California. The bold phrase was inserted into this document by UC administrators, citing Stanford v Roche and claiming that this addition is not a change in policy. Faculty were also asked to sign a new “acknowledgment” with the revised language. I have discussed this at length elsewhere, so won’t belabor it here. The UC patent policy anticipates disclosure, review, and based on circumstances, a request for assignment when an invention is within the scope of UC’s claim
You have to love a construction such as “my University employment while employed by University”. Right away, we know something of the quality of drafting going on here. University “facilities” are, within UC policy, essentially “buildings”. “Any connection” with use of funds is remarkably expansive. A common goal of such drafting is to claim everything one can think of “just in case” and leave it to administrators working with such a gift of policy to release whatever they think they should.
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University of Washington
In policy and as a condition of consulting, even if not for financial pay:
http://www.washington.edu/admin/rules/policies/PO/EO36.html
As a condition of employment, and even if a specific patent agreement is not signed, University employees agree to assign all inventions in which the University has an interest to the University, to an invention management agency designated by the University, or to the sponsor if required under agreements governing the research.
See especially:
http://www.washington.edu/admin/acadpers/forms/approval_compensation.docx
The Statements above are truthful to the best of my knowledge. With this request for outside work, I acknowledge that I am bound by and I agree to comply with the University Patent, Invention, and Copyright Policy (Executive Order 36) (“Policy”), as it may be amended from time to time. In accordance with this Policy, I will disclose all inventions and discoveries I create to the UW Center for Commercialization, including any that I create in connection with any outside work. I agree to assign and I hereby assign to the University all my rights in any intellectual property to which the University has a right of assignment under the Policy, provided I created such intellectual property in the course of my University activities or responsibilities or with more than incidental use of University resources.
This request for approval for consulting carries a free-standing present assignment to all inventions for which the university has a “right of assignment”–that is, anything the university might claim, it does, without review for circumstances.
The form has the following expansive definition of intellectual property:
any intellectual property interest, that is, any interest in an invention, patent, copyright, trademark, trade secret, know-how, or other intellectual property right.
Got to love that “other intellectual property,” which here is intended to mean, apparently, something along the lines of “anything else we might think of to include in the definition”. Again, another example of incompetent drafting. Not only is the list a mish-mash of intellectual property rights and other sorts of rights, like “know-how”, but by supplying such a list, in such an expert-sounding way, the drafter may well have *limited* the university to just these things, the “other” phrase notwithstanding.
It goes without saying that the policy’s expansive definition combined with the present assignment means that the university claims to own faculty expertise. And this assignment is required merely for *requesting* permission to consult. Don’t get me going about the university’s claim that this form is required even when a faculty member is interacting with someone without charging for doing so. That’s also “outside professional work for compensation” because in talking with someone, one’s own “intellectual property” value might change, and that’s compensation, apparently. These folks are loons, of course, but they do have access to folks who like to draft legal-sounding documents.
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Arizona Board of Regents (ASU, UA, NAU)
https://azregents.asu.edu/rrc/Policy%20Manual/6-908-Intellectual%20Property%20Policy.pdf
A. Ownership of Intellectual Property.
1. Ownership by the Board:
a. The Board claims ownership of intellectual property in each
of the following categories:
(1) Any intellectual property created by a university or Board employee in the course and scope of employment, and
(2) Any intellectual property created with the significant use of Board or university resources, unless otherwise provided in an authorized agreement for the use of those resources.
b. The Board’s claim to ownership may be altered by:
(1) Exceptions described in this policy,
(2) Applicable law, or
(3) Written agreement signed by an authorized Board or
university representative.
c. All employees and others creating intellectual property in the course and scope of employment are required to assign (and do assign) to the Board all rights in intellectual property in which the Board claims an ownership interest under this
policy. In addition, all employees and others creating intellectual property (including students) with a significant use of Board or university resources are required to assign
(and do assign) to the Board all rights in intellectual property in which the Board claims an ownership interest under this policy
Can one really impose an assignment on a person by a parenthetical policy statement?
Intellectual Property is defined: “Intellectual Property” includes all forms of legally recognized intellectual property, including copyrights, patents, trade secrets, trademarks, and plant variety protection together with any associated or supporting technology or know-how. For the purpose of this policy, “intellectual property” also includes tangible research property such as research tools, prototypes, and records used or produced in the course of university research projects [then a list of examples].”
Set aside that the definition includes itself: “intellectual property means intellectual property”. I suppose the point is that some intellectual property is not “legal” and that shouldn’t be included. But then we get an “including”–at least not followed by “not restricted to”. So this is the list, but in addition to a remarkably well behaved list, but for trade secrets, which aren’t a statutory form of IP, but hey, grab what one can, we get this tag of “any associated or supporting technology or know-how”. So if you invent, using your own, not otherwise university-claimable IP, then too bad–you have parenthetically presently assigned it already to the university along with whatever the university may claim. One might wonder what is meant by “associated” and what the contrast is with “supporting”. Clearly, some precision is demanded here, but what? Who does the associating? What does the supporting? Not known. Either way, that’s a pretty long reach into the ol’ pocket by the policy. But there’s a bit more–the university also adds tangible stuff to the definition, when it’s not intellectual property at all, but now, by definition, it is. It makes for a difficult time, reading such policy, without fully grasping just how grasping the policy is. But Arizona is nothing compared to Colorado.
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University of Colorado
https://www.cu.edu/policies/aps/academic/1013.pdf
A. University Ownership.
1. As required by Regent Policy, the University shall take assignment of and shall own all discoveries in which University has an interest. Every included person(s), as a condition of employment, and every collaborator participating with an included person on a discovery, will assign and hereby does assign any legal rights that may exist in such intellectual property.
The University shall have no ownership rights in the following intellectual property, which shall be owned by its creator:
a. Intellectual property that is Educational Materials and owned by the creator as determined pursuant to the Administrative Policy Statement Intellectual Property that is Educational Materials; or
b. Intellectual property created by a student solely for the purpose of satisfying course requirements, unless the student A) creates the intellectual property with an included person, B) assigns ownership rights in the intellectual property to the University in writing or C) must make an assignment of such ownership rights to the University as a condition for participation in a course.
Provided, however, that if the intellectual property referred to in (a) or (b) is a derivative of or otherwise uses pre-existing University-owned intellectual property, this provision shall not prevent the University from asserting its pre-existing rights.
2. As provided in A.1., the University shall take assignment and shall own “discoveries in which the University has an interest’ that are created during the course of sponsored research, consulting, or other contractual arrangements. Only the Principal Technology Officer has the legal, delegated authority to assign ownership, license, or otherwise provide legal rights to discoveries and University intellectual property.
Another embedded present assignment inserted into a policy statement. Apparently the guidance is to throw these present assignments around like pepper, hoping to ensure that any faculty reading the policy will assume that they have already given up ownership of everything the university decides to claim. The policy is set up as a claim, a limited set of exceptions, and then an expansion of the claim. Note that the claim includes essentially anything created in “consulting”. So much for having a private life. There is nothing that limits the consulting, even, to subject matter directly related to employment or sponsored research.
The definition of intellectual property is also expansive:
“intellectual property” means any discovery for which legal protection is sought. For example, a patent, copyright, know-how, mask work, tangible research property, trademark, trade secret, proprietary and confidential information, tangible materials, and other forms of intellectual property legally recognized now or in the future.
Getting used to this yet? The first sentence is difficult enough. The definition appears to be limited to “discovery”. But, ah, there is a definition of that, too:
“discovery” or “discoveries” means any inventive idea and/or its reduction to practice which relates to, but is not limited to: new processes or methods of producing a new and useful industrial result; any composition of matter, including chemical and biological compounds; any new devices; any new plant; any new design in connection with the production or manufacture of an article; any new computer hardware and/or software programs; any know-how supporting these inventive ideas, systems, devices, compositions, programs or processes; and any new use or improvement of existing systems, devices, compositions, programs or processes.
A “discovery” is an “inventive idea,” with some qualifications. The qualifications are drawn from the subject matter for patents, but the definition never comes out and makes that point. The claim is not for “patentable inventions” or “inventions which may be patentable”. It is a claim directed at the *subject matter of patents* without regard for whether that subject matter happens to be “patentable”–it need be merely “inventive” as an “idea”. We are not talking here about “conception and reduction to practice”, the two acts that comprise an invention for patent purposes. Nope. We are talking about something defined in policy as any “idea” that is “inventive” within scope of certain subject matter, with “software” slipped in, apparently, because sometimes software is patentable, too.
Note that the definition of subject matter extends to “any know-how” that “supports” these inventive ideas. The ownership of this know-how is claimed by the university because it comes within the definition of “discovery” even though know-how that “supports” an inventive idea may not be in any way a “discovery” as anyone might think of using the word. It could be standard knowledge available in the literature. What does making a claim to “know-how” mean? Apparently, that the university can prevent the possessor of such “know-how” from using or disclosing that know-how. That’s saying something, therefore, about academic freedom and freedom to publish. I wonder, too, if it triggers export law controls, which kick in when an employer or other asserts the right to control publication, among other things.
Now, consider the effect of “which relates to, but is not limited to”. My oh my. So the list that follows is not exhaustive. What else could possibly be on the list? There is no way to know. It could go on forever. There is no guidance with regard to what inventive ideas might relate to. Why then have the list? What’s the point? Again, this is the kind of clueless drafting that universities put forward as expert IP work. It’s sloppy, grasping, incoherent, and borders on malpractice.
We are not done. Back to the policy claim, next sentence. I’ll repeat it:
For example, a patent, copyright, know-how, mask work, tangible research property, trademark, trade secret, proprietary and confidential information, tangible materials, and other forms of intellectual property legally recognized now or in the future.
Whew–another laundry list, with another expansive terminal constituent, all by way of example. Another confusion of statutory IP with trade secrets, information, tangible materials (not IP at all, but non-IP–chattels), and the big kahuna–“other forms of intellectual property”, that great unknown to the clueless drafter who knows, perhaps, deeply, that he or she is clueless (and writing for a committee who is clueless, or they would have sent it back for revisions). But there’s even more–the university’s claim is based on “forms of IP” that might be “legally recognized…in the future”. This, by way of example, is what the university means. They claim *now* (present assignment, “hereby does assign”) anything that “might be” (not “is”) “legally recognized” in the future.
Not there yet: “discoveries in which the University has an interest” is also defined:
“discoveries in which the University has an interest” means discoveries made while performing duties required by a University grant or contract, and/or made with substantial use of University resources, and/or made as a result of the use of sponsored program funds supplied or administered by the University, and/or made in fulfillment of an included person’s work responsibilities.
The usual list of sponsored work, use of resources, use of sponsored funds, or “work responsibilities.” Note also, however, the “made as a result of the use” construction. One could use funds, learn something, move on to another institution and “discover” (within the meaning of this policy), and the claim here is that the university has an interest in such things, and by the present assignment, owns these things, too. These draftspersons are always the clever ones, slipping in something expansive, just in case, trying to take away as much as they can.
Consider these bits:
Adjunct and adjoint appointees and visitors who are collaborators with included persons and partake in substantial use of University Resources are also bound by this policy.
Every included person(s), as a condition of employment, and every collaborator participating with an included person on a discovery, will assign and hereby does assign any legal rights that may exist in such intellectual property.
“collaborator” or “collaborators” means any person or persons who participate with an included person on a discovery.
Yup, the policy claims to form a contract with all such non-employees, who “partake in substantial use” of Resources and imposes on them this same present assignment of everything the university can think of, and all that which it cannot. (And yes there is a definition of “substantial use of University resources” which also aims to define Resources, but you will have to go read it for yourself).
This sort of thing takes one’s breath away. Linger on it. This is writing by fools, but it is placed in a serious place in policy, where the entire research output of the university flows down the rocky crags toward the ocean of opportunity, use, and benefit. And what do we find here, but utterly helpless institutional bureauklepticism.
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Stanford
rph.stanford.edu/5-1.html
- All potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources, shall be disclosed on a timely basis to the University. Title to such inventions shall be assigned to the University, regardless of the source of funding, if any.
http://rph.stanford.edu/su18.html
Pursuant to those policies, and in consideration of my employment by Stanford, the receipt of remuneration from Stanford, participation in projects administered by Stanford, access to or use of facilities or resources provided by Stanford and/or other valuable consideration, I hereby agree as follows:
I will disclose to Stanford all potentially patentable inventions conceived or first reduced to practice in whole or in part in the course of my University responsibilities or with more than incidental use of University resources. I hereby assign to Stanford all my right, title and interest in such patentable inventions and to execute and deliver all documents and do any and all things necessary and proper on my part to effect such assignment.
At least the Stanford policy tries to set up the idea that there is a contract going on here, an exchange of a thing of value for the rights that are promised (and with the new language, hereby assigned). That’s a plus. At least the policy is limited to patentable inventions within the course of university responsibilities. Another plus. We will leave aside the determination of “University responsibilities” as distinct from other sorts of responsibilities, or employment, and the like. At least it is not the clueless graspiness of other policies. The policy also allows inventors to place their inventions in the public domain–so the assignment has a grain of salt with it as well.
One might not agree with the intent of the policy, but it is sure refreshing to see a policy written by competent folks.
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This is just the tip of the berg. The policies are a tangled mess of the hopes and dreams of power, seeking to establish a monopoly interest in the work of faculty and students, visitors and volunteers–the very people for whom the university should be a commons not a landlord claiming ownership of everything that goes on. The policies evidence a lack of good drafting (but for Stanford’s, which is uniformly clear, direct, and to the point) and a disregard for the value of independence. For university technology transfer and IP policy, this appears to be the Age of the Monopoly. The goal is to capture all research assets one can, for their financial value, to prevent any competition with university monopoly IP offices, and (but for Stanford, in this set of policies) to prevent anyone from *giving away* their work by teaching it, or publishing it. That’s what the drafters are about, and they do not seem to care how they get there–the more convoluted the better. That’s what organizations like AUTM are determined to defend.
What is beyond me is why anyone seeing this stuff would accept it. Why is that? Is it also an Age of Who Cares If They Take My Work? If so, no wonder university technology transfer is so stagnant and AUTM can tout it as the most wonderful thing in the world. We wouldn’t want to disturb such a treasury of “incredibly complex, nuanced” policies, to adapt AUTM’s description of technology transfer. IP policy by bozonet–what AUTM wants the US to commit to as its strategic advantage. I can even see how a die-hard AUTMite might think it’s a compelling case that only AUTM members, operating in the safety of their monopoly licensing offices, have the brains to make sense of the mess. Really, it’s time to drive the rascals out, mess and all. IP management can indeed be challenging, but it does not have to be the way it is. What has been created is a landscape of IP policy desolation, fraught with error, incoherence, and greed, written by the cleverly clueless, defended by entitled minor underlings, at the expense of research innovation, all in the name of public benefit. It doesn’t get much more screwed up than that.
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