The University of Washington and University of California patent policies are rather strange. Both have been interpreted by the university administrations as requiring assignment of any and all inventions faculty make, whether in their labs, offices, showers, on sabbatical, or otherwise, with the implication that inventions made in consulting, if “in any way connected” to their work at the university, is also are belonged to us. But the policies don’t actually say any of this.
Here is Washington’s statement:
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.
First, this is a statement in a policy about others. It is not evidence of agreement, but simply an assertion that employees agree to assign. Nothing that makes an assertion of agreement an actual agreement. Second, this agreement is made a condition of employment. It is not a condition of, say, an arrangement regarding patents independent of employment. Third, the requirement only concerns inventions “in which the University has an interest.” Nowhere in the policy is there a direct statement of what inventions those might be. Finally, the policy waffles on who the beneficiary of the agreed upon assignment should be. That is, the obligation to assign is not to the university, but to some to-be-named entity, which would become evident in light of circumstances. Nothing in this policy statement obligates faculty to assign up front any and all inventions to the university.
But consider things further. There are reasons to consider this policy statement to be an attempt to create a contract. First, there is the use of “a condition of employment”; second, there is a reference to no need for a “specific patent agreement”; third, the use of “agree”–these all point to the idea that this is not an administrative announcement, but rather something that employees must agree to. This is not the language of other aspects of policy, where the university sets out how faculty are appointed, say. All employees aren’t told they have to agree to such things. Those things are just how it is. It is clear that the university aims to align an agreement on employment with an agreement on assignment of inventions. The university intends to create a contract by assertion. One might call it an adhesion contract, with the claim that by continuing to come in to work, a faculty member has agreed to this deal.
Now a fundamental tenet of contract interpretation is that a contract is formed when there is offer, acceptance, and consideration. As for offer and acceptance, this is sometimes called a “meeting of the minds”. Just what do the parties to the deal think they are offering and accepting? For this, a contract tends to be interpreted against the non-drafting party. What is “intended” is what a reasonable reader of the contract wording might draw from it. In other words, an adhesion contract–in which the party on the other side has no opportunity to negotiate–is a recipient-responsible text. It is the recipient that determines the reasonable meaning of what is on offer. If the offering party wants to ensure that there is a meeting of minds consistent with the offering party’s intention, then that intention had better be expressed reasonably and unambiguously in the text of the offer. Here, the offer is the policy statement, and the university has all the resources anyone could dream of to make its intention reasonable and unambiguous.
As the court in the Shaw case regarding the University of California patent policy (UC and UW policies were twins separated at birth, apparently), the university has no foundation for claiming a secret intent for the policy that is not reflected in the plain words on the page (citations removed).
The clear language of the patent agreement does not, as the University argues, effect a contemporaneous and “complete transfer of plaintiff’s rights to the University.
….
We are unconvinced by the University’s assertion that it “did not intend to incorporate the Patent Policy as part of the Patent Agreement.” Although the intent of the parties determines the meaning of the contract, the relevant intent is “objective”-that is, the objective intent as evidenced by the words of the instrument, not a party’s subjective intent. Nothing in the patent agreement hints at what the University now claims was its long-held desire that the Patent Policy’s inventor royalty provision not be incorporated into the patent agreement. The true intent of a contracting party is irrelevant if it remains unexpressed.
Fuss as UC might, the court made it clear that the deal is what is objectively expressed, not some secret wish for a deal, or ulterior motive, or a reservation of the right to interpret the deal later in whatever way one wants. For the agreement to hold up as an enforceable agreement, the university has to state what the deal is. In the case of UW, the policy does not provide a scope for the obligation to assign, nor a firm entity to which the assignment is to be made.
But we can push this further. The use of “employment” is odd. What is it that faculty are “employed” by the state to do? Teach, do research, commit public service. But the aspects of these things that are *conditions of employment* rather than *things that may be done while employed* are very different. The state does not direct and control the teaching, research, and public service. It provides resources so that these may take place, but other than assignment of teaching duties and certain committee assignments, the actual “employment” by which faculty are answerable to the direction of the state is really very narrow. There is virtually nothing that a faculty member might invent that would arise within the employment by which the state exercises any control over the faculty member’s work. Scholarship is not work made for hire. Faculty are not hired to invent for the beneficial use of the university.
A reasonable understanding of the UW policy by a faculty member is that the requirement for assignment is constrained to the scope in which the faculty member works under the direction and control of the university as employer. This would be a very narrow scope of interest, and indeed could be seen as perfectly reasonable and acceptable. That is: for any faculty member who understands the policy in this way this is the meeting of minds. This is the objective interpretation. This is what the policy states.
The university administration is not in a position to explain “what it really meant” by the words. And if what the university “really means” is that after review the university will decide what it has an interest in, and claim that, then really the policy says that the employee as a condition of employment will agree to anything that the university decides it has an interest in. Essentially, an agreement to agree. Without a statement of scope, it’s hard to see how anything binding has been created, other than what takes place within the scope of employment, which for faculty absent some wildly effusive appointment letter, is next to nothing.
UW does not help itself by going on to recite the state’s employee-inventor protection law (RCW 49.44.140), but with a swap of “university” for “employer”:
The University will not require assignment of interests for any invention for which no equipment, supplies, facilities, or trade secret information of the University was used and which was developed entirely on the employee’s own time, unless:
1) The inventions related:
a) Directly to the business of the University, or
b) The University’s actual or demonstrably anticipated
research or development, or2) The invention results from any work performed by the employee for the University.
This does not state a scope, but merely places restrictions on scope that are required by law. Nothing is added. And there is the added question of whether this additional statement invalidates the entire agreement as contrary to law. The state law is clear that the issue is what the “employer” can require. The “University” is not the employer of faculty except to the extent that the university directs and controls the actions of the faculty member as an employee, not as a scholar. I cannot imagine faculty members, being in control of their own faculties, nodding in agreement that the understanding they had when they joined the university was that the state would now direct and control their scholarship, tell them what and how to teach, and supervise their public service to ensure that it was undertaken for the benefit of the state-as-employer. Hardly. Big totally hardly.
The swap of “University” for “employer” in restating the state law appears to be an effort to deceive employees as to what the university might claim. That is, even in making a show of complying with the state law, the university cannot help itself but to introduce wording that would make it appear that the university’s scope of claim to inventions was greater than the state law allows. The UW demand for assignment as stated in the policy is amazingly narrow, and for all that, should be invalid and unenforceable for stating a claim that is broader than that of the state law, just as “University” is broader than “employer” for purposes of faculty employment.
What then about the use of equipment, supplies, and facilities? That, too, is just a restriction on scope reciting state law. The university does not say it has an interest in inventions where inventors made use of such resources. The policy just says the university does not have an interest in ones where the inventors did not make use of such resources except where the invention relates to the business or anticipated business of the university. Well, just what is the “business” of the university? The whole point of the state law is that the business of a business is not “everything that an employee invents that the business could make money from”. The point of the law is to prevent just such behavior. The business of the university would appear to be providing the resources to educate students and discover cures for disease and better spam filters. That is, it is not the things faculty do, but the things that the university does–build buildings, buy stuff to go in the buildings, and handle the logisitics of it all. The business of the university is not the business of the faculty, and the anticipated “research or development” of the university is not the anticipated “research or development” of the faculty. These are way, way different things. Any reasonable faculty member would see this in a moment. Maybe even reasonable administrators.
If by its practice UW claims that its policy requires more inventions than that policy reasonable states an interest in, then the policy violates state law. It is void. There is no agreement, and no enforceable obligation to assign. The policy is so much fluffle that manages to screw up even the most basic, reasonable basis on which the state might agree with faculty on what of their work at the university reasonably is done for the benefit of the state as employer, subject to the state’s direction and control.
Even so, the UW scheme to replace the agreement to assign with “present assignment” wording–something so outlandishly horrid that it defies words like “outlandishly horrid” to describe it–represents a substantial change in policy–or a huge disregard for policy. A present assignment anticipating assignment to the university goes against the clear wording of the policy, which clearly indicates that the assignment will be made when the university determines just who should receive assignment. The policy does not say, you will assign to the state and then the state will fling that assignment around to whomever it chooses. Nope. The policy says that the university will designate who will receive the assignment. So the present assignment language is stupid for that reason, too, and “stupid” is a nice way of putting it. Incompetent, malpractice, sleezy come to mind as well. But enough melodrama.
If we put this all together, we find that the UW patent policy statement does not state a scope and leaves that to the imagination of the faculty members: that is, it is up to them to decide just what that scope is, and when they decide, then there is the basis for an enforceable patent agreement cojoined to employment. The wording is interpreted against the drafting party. The university administration has no standing to tell folks later what it was that they agreed to. There is no revelation at the certain time of the secret intent that the university in its fumbling could not manage to express in plain language.
If we were to help UW with plain language–something that appears to be in short supply, apparently–then we might say that the UW policy goes something like this:
Faculty own their inventions except when the university expressly commissions work subject to the university’s direction and control, intended for the beneficial use of the university, in which case they agree to assign such inventions to the university. If the university intends to make a claim to ownership of inventions and/or a financial interest in such inventions as a condition of the use of certain equipment, supplies, or facilities, the university will set forth such an intention in a written agreement with those involved prior to the equipment, supplies, or facilities being used. Where the university accepts ownership or management of faculty inventions, acting as an invention management agent, the university will share any royalties earned according to a standard schedule, so that all faculty are assured of comparable arrangements.
There’s more to it, of course, because these days nothing can be done easily, but that would be the gist of it. Such a policy is not merely fantasy. It is the policy that the university had pre-Bayh-Dole and all the administrative hooliganism that has followed in Bayh-Dole’s wake. It is, in essence, the policy of the university now, when one works it through and follows the reasonable, objective expression of the words on the page. It’s just that the university administrators involved continue to believe that the policy is just a script by which they can torque everyone around at their pleasure, and make it up as they go as to what the words mean. In such a case, there is no agreement at all. Certainly nothing binding. No meeting of minds, because the university’s mind, golem-like as it is, is not able to settle on a statement that would reflect the reasonable understanding that faculty members, or the general public, might make of the words.