Washington state senator Maralyn Chase has introduced legislation (SB 6106 and SB 6107) to free up inventors at the state’s public universities from administrative requirements to assign all their inventions to the state for management. In addition to seeking to make voluntary faculty assignment of inventions, she has taken a new approach. Washington state is one of eight states, including California and Illinois, that has a law designed to protect employee inventors from predatory employers. Washington’s law is at RCW 49.44.140 and 150.
Patent law requires an agreement beyond mere employment for an employer to have a claim to ownership of an invention made by an employee–even if the employee has used company resources to construct the invention. Washington state’s law restricts employer claims in such agreements to only those inventions that are directly related to the company’s business and research or which used company equipment, supplies, facilities, or trade secret information or which were “performed by the employee for the employer”–for instance, the employer assigned the work.
Universities in Washington state ignore the law. Well, actually they recite the law in their patent policy, make a few changes to the law to add some confusion, and then ignore it and claim anything that an employee inventor might make in the employee’s area of expertise. In essence, the universities create a patent licensing office and then declare that anything an employee inventor invents is in the university’s line of business, anything they invent within their area of expertise is performed for the benefit of the university, and thus, the law really doesn’t restrict much of anything. Any company can see the loophole in an instant. Just create a new “product line” consisting of anything employees invent. Now any invention an employee makes is directly related to the company’s business, which now includes seeking to profit from any employee invention. Done. Magic.
Senator Chase is concerned only with public universities at this point. While there is plenty of research at these universities, most all of it is not performed by faculty for the university-as-employer. Inventions, too, may not make use of the enumerated university resources, and for sponsored research, the university is compensated for those resources by an outside sponsor, so it’s only loose language to bring those resources within the scope of “company equipment, supplies, facilities, or trade secret information.” A public university may have good reasons to require assignment, but it should work within a much narrower statement of the law than is presently the case.
The bigger issue, however, is whether the public is benefited much at all by compulsory state control of faculty inventions. Yes, it may be nice to think that the state will profit from selling patent rights to speculative monopolists–though that is a weird thought in all sorts of ways. Yes, it may be nice to think that if the state owns inventions, then the public is saved from the potential greed and ineptitude of university faculty, who otherwise might license their patents to, um, speculative monopolists or worse, just allow free public access to what they have invented and discovered. The horror, the horror.
Freeing university faculty from expansive university demands to own is a first step toward restoring faculty to the position they had before Bayh-Dole–the position that Bayh-Dole was predicated on–as the first point of decision about how to manage inventions made in their research. Along the way, patent law has expanded the idea of invention to include software algorithms (implemented on computers) and life (in various versions)–both of which make incursions into what previously would have been findings that once published would be free to all. A university does not employ faculty to invent for the university. Adding a patent licensing office does not change the fact, nor the university’s public mission.
A university that restricts its own claims on faculty (and student) inventions will best position itself for collaboration, economic development, and even to benefit from those few inventions that may become commercial successes.
Here is a slide deck that lays out the argument for SB 6106.