Here is a basic question: When should university-based inventors disclose their inventions to the university administration? This is a remarkably difficult question. Is it when the invention is “made”? If so, what does it mean to “make” an invention? What is, in particular, an “invention” and how does an invention differ from other things one might make? Does university policy define invention in a specific way? Does that definition displace other, even conventional, definitions of invention? Does the invention have to be within the policy’s definition? Should the inventor disclose the invention when the inventor thinks an invention is patentable? When the inventor wants to pursue a patent? When a patent application has been prepared, but before it has been filed? Or after it has been filed? When the inventor thinks the invention has “commercial value”?
And what, exactly does it mean to “disclose” an invention? Is “disclosure” the same as “reporting” an invention? That is, is it sufficient to report that an invention has been made and the general nature of the invention–“I have invented a way to remove soot from smoke using electrical charge”–or does one have to also reveal how the invention works? Or, does one have to disclose as well all the ideas one has for how the invention might be used, alternative designs, investment or commercial opportunities, competing products, and the like?
And if we replace “should” with “must,” is there a big difference? That is, “should” suggests answers along the lines of “if you disclose at this point, you have the best chance of doing the right thing” while “must” suggests answers of the sort “disclose now or face discipline.” Does one have to disclose, then, whenever an administrator demands it, but not otherwise?
Answers to such questions depend on concerns such as:
- (i) status of the patent policy as contract, statute, guideline, threat, or wish-lust
- (ii) the language used in the patent policy regarding disclosure
- (iii) when something is an invention under policy
- (iv) when an invention is within scope of a policy requirement to disclose
- (v) what happens when a university administration requires more than disclosure of an invention in order to comply with the policy on disclosure (such as signing over ownership of what is to be disclosed)
University patent policy statements are remarkably unhelpful on the matter. It’s not that the answer has to be difficult. If a university patent policy uses the definition of a patentable invention in US patent law, then the policy might require the disclosure of such an invention when it has been made–that is, conceived and reduced to practice and recognized as an invention by the inventors. In US patent law, if the inventors do not recognize their work as inventive, then, well, it isn’t. But most American university patent policies are a hopeless mess.
Let’s look at the disclosure requirement in a couple of them, to illustrate this point.
Arizona’s Policy, For Instance
Here’s the Arizona Board of Regents “Intellectual Property Policy,” Policy Number 6-908 (Rev. 08/2010), which governs the policy at multiple Arizona universities, including Arizona State University:
Each employee (including visiting faculty, researchers, and scientists) must promptly and fully disclose in writing to the IP official any intellectual property made by that person, or resulting from work carried on under his/her direction, in which the board may have an interest. Each university will adopt a disclosure form and make the forms readily available to employees and others who may use university resources.
I have highlighted some words to consider. The only indication of when to disclose is “promptly” after “intellectual property” has been “made.” “Disclose” gets no definitional support, but it must be “fully.” Whatever is demanded on a disclosure form perhaps constitutes the definition of “disclose.” The policy could be read to authorize the university administration to do whatever it wants in the way of disclosure.
ASU, then, produces a form that directs disclosure to AzTE, an affiliated for-profit company owned by the ASU Foundation. The policy, of course, states that ownership will be with the Board, not with a for-profit company. In the definitions appended to the policy, “IP Official” can be anyone a university designates “to manage university intellectual property.” ASU then asserts the policy requirement of assignment by inventors to the Board as a precondition of disclosure, which would then operate even for “intellectual property” that the Board has no interest in, even if at the point of disclosure there was some reason to think–by whom?–that the Board may have an interest:
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
So the policy purports to create a present assignment of every employee’s (and others!) future interests in inventions they create. The “do assign” either operates, in which case the assignment to AzTE demanded on the ASU disclosure form is void, or the “do assign” doesn’t operate (as it shouldn’t–it’s pure nonsense), but that still does not change the policy requirement that employees (and those others) assign to the Board, not directly to the IP Official. The policy then creates a gulf between disclosure–which is to the IP Official, which may be an outside firm–and assignment, which is per formal policy to the Board. The policy-mandated pathway for ownership is “creator” to Board, and from there the university might engage an external IP Official. But ASU simply ignores the policy requirement.
Present Assignment Nuttiness
We should pause here and consider the effect of the addition of the “do assign” to a Board-level formal policy statement. The Board policy is not law–it is a governance document that delegates authority within state instruments such as ASU. The Board may state a claim to intellectual property, but the statement of claim does not get the Board what it wants. Nor does the insertion of “do assign” actually assign anything. Assignments of patents and copyrights generally require a written instrument signed by the inventor or author. That’s not happening here. All we get is a policy statement. Even if employees agree to obey university policy, they still haven’t signed a written instrument assigning rights in any specific (and specified) invention or work of authorship. And if for some inexplicable reason some court decides they have anyway, then the later assignment wording on the ASU disclosure form can’t possibly operate. Or, if it does, we live in truly magical land where words count for nothing, what the words mean exists only in administrators’ heads, where unicorns run freely.
Further, how is it possible that “others”–non-employees–can be imagined to have agreed to a present assignment of future rights. Even if employees somehow have signed away their rights, how do “others” do so? Perhaps the argument is, since the policy is “on display,” the university’s facilities and other “resources” are like “posted land” with an adhesion contract–“if you use these facilities, then in taking that action you confirm that you have assigned all rights in intellectual property to the Board.” And yet this sign, such as it is, is tucked away in the cellar of the planning commission office “in the bottom of a locked filing cabinet stuck in a disused lavatory with a sign on the door saying ‘Beware of the leopard.” The policy creates the illusion that “others” have agreed to the assignment. I may as well post in a side yard that if you park in my driveway, I own your car. The demand runs against the idea of a contract, of a meeting of minds, of acceptance.
What a policy such as this does is to authorize university officials to make ownership of intellectual property an express requirement in any dealings with non-employees over access to “significant” university resources. It is in those dealings that an agreement must be made, if it is to be made. That agreement cannot be made as a statement of policy. That is pure wish-lust. That ASU administrators cannot see this is another sign of the dysfunction surrounding university intellectual property management.
Employee Includes Non-Employee
Now consider how “employee” is managed in the policy. “Employee” is extended (or is it defined?) by way of a parenthetical addition. The parenthetical lists three groups–“visiting faculty, researchers, and scientists.” Now, does “visiting” modify all three of these groups–visiting faculty, visiting researchers, and visiting scientists? Perhaps. Does “visiting” mean faculty (and others) visiting ASU? Or does it mean ASU employees visiting other places? Or might it mean both visitors to and visitors from? The ASU visitors to reading would make sense–“even when ASU faculty or some non-faculty employees go visiting other places, they still must disclose their inventions to ASU.” But then there’s no reason to call them out as if they are no longer employees.
Pretending that visitors to ASU have by virtue of the existence of a policy statement already assigned their intellectual property to the Board is understandable in the context of a grasping, clueless university, but makes no sense in light of either patent or copyright law or practice. Under patent law there is no obligation to assign inventions even for using an employer’s facilities, let alone using a non-employer’s facilities. Under copyright, use of facilities has next to no bearing on the disposition of copyright. Even in work made for hire settings, use of the employer’s facilities is only one test of agency among a number of tests. The policy requirement is laughable. Except it is of course not a laughing matter. University administrators are clearly quite serious about it. Perhaps they are not insane, but they have created a university corporation that is insane.
The reading that the policy intends to take intellectual property from visitors to ASU nonchalantly extends the definition of employee to include non-employees, as if extending obligations from employees to non-employees can be done simply by assertion, not by, say, contract or statute. The claim on visitors as if they were employees requires that “employee” must be read to mean also “non-employee.” But anything that’s a “condition of employment” simply is not such a condition for non-employees. It may be some other condition, but it is surely not one of employment. Making “employee” mean also “non-employee” makes reading the policy next to impossible. One might argue it is a drafting move intended to deceive–or has that effect. One might also argue that this policy was written assuming that any state judge would side with the state in the interpretation of the policy and not rule the policy so defective as to lack authority to force anyone to assign their intellectual property to the Board, to a for-profit company, or to anyone else.
Now, about the three groups that are listed in the parenthetical, even if we don’t know whether they are visiting ASU or visiting from ASU–if we assume they are meant to be different groups–visiting faculty are distinguished from visiting researchers. A researcher might not be faculty somewhere else. And faculty and researchers are not scientists. Some researchers, no doubt, are not scientists–humanists, perhaps, or technicians, or quacks. A visiting technician, then, who is not doing “research” would appear not to be included in this listing of groups included under “employee.” One could add more group descriptors–technicians, investigators, post-docs, inventors, engineers, doctors, gadgeteers…. But these descriptors are left out–the parenthetical uses “including”–not “by way of illustration.” The “including” appears to mean “extended as well to include some visitors who aren’t employees” (because, again, if they *were* employees, there would no need to call them out).
“Employee” also gets a formal definition at the end of the policy statement:
“Employee” means faculty, staff, administrators, student employees, visiting faculty and researchers paid by the Board or by a university governed by the Board.
Again we see the ambiguity of “visiting faculty and researchers.” Omitted is the reference to “scientists” but added is a tag “paid by the Board or by a university governed by the Board.” Here again we find bad drafting. Does this final tag modify just “researchers” or “visiting faculty and researchers” or the entire list–faculty, staff, administrators, student employees, and [others] paid by the Board”? That is, is the burden of the definition to make clear that employees are some people paid by the Board but not others (such as independent contractors)? Why not just use a definition of employee in Arizona state law, such as:
3. “Employee”:
(a) Means any person who provides services or labor for an employer in this state for wages or other remuneration.
(b) Does not include an independent contractor.
6. “Employee” means any person performing services for an employer, including any person defined as an employee pursuant to section 23-901, except employees engaged in household domestic labor.
Section 23-901 is a long list of folks involved in work that might be subject to workers’ compensation rules–search and rescue personnel, volunteer firefighters, and the like. Three of the definitions appear useful:
(a) Every person in the service of the state or a county, city, town, municipal corporation or school district, including regular members of lawfully constituted police and fire departments of cities and towns, whether by election, appointment or contract of hire.
(b) Every person in the service of any employer subject to this chapter, including aliens and minors legally or illegally permitted to work for hire, but not including a person whose employment is both:
(i) Casual.
(ii) Not in the usual course of the trade, business or occupation of the employer.
(p) Every person employed pursuant to a professional employer agreement.
“Employee” might then be defined by the Board as “Every person who provides services or labor to the Board or to a university governed by the Board for wages or other remuneration, but not independent contractors.”
Eight words into the policy requirement on disclosure, there’s no way to know what the extension of the term “employee” is supposed to mean–visitors to ASU, visitors from ASU, researchers and scientists but then not scientists, but only if paid by the Board and the like. “Paid” is left as obvious, but we might ask whether independent contractors are not paid by the Board, whether students on scholarships are not paid by the Board, and whether visiting speakers receiving an honorarium are not paid by the Board. Surely they are–it’s just that the definition given in the Board’s intellectual policy ignores the distinction between the provision of money by the Board in recognition of some activity (a talk) or as an obligation undertaken by the Board (such as, to be the trustee of scholarship funds, say) and the provision of money in return for services provided to the Board.
Scope and Course of Employment
If an employee provides services to the Board (or to a university governed by the Board), then we begin to have a scope for what intellectual property the Board has reason to claim. It is not all activities an employee might engage in, but only those that involve performing services due the Board. The Board policy tries in a way to get at this issue, but ends up making an even greater hash of it all. The Board policy makes two separate claims on “intellectual property”–stuff made by employees “in the scope and course of their employment” and stuff “created with significant use of Board or university resources.” I use “stuff” instead of “intellectual property” because the policy has a special definition of “intellectual property” for which “stuff” is a better term. We will get to that. So in the general case, the Board claims ownership of stuff in various ways and people who make stuff or supervise the making of stuff in those various ways are required to disclose the stuff. “Employee” really has nothing to do with the Board’s claim at this point. Perhaps “employee” should have something to do with it, but that’s not how things are set up in policy.
The words “scope and course of employment” appear to be imported from liability law. “Scope” and “course” refer to two distinct concepts. “Scope” pertains to
Activities of an employee that are in furtherance of duties that are owed to an employer and where the employer is, or could be, exercising some control, directly or indirectly, over the activities of the employee.
As set forth in Workers’ Compensation acts, the time, place, and conditions under which an on-the-job accident occurs. The performance of an act that an employee might prudently do while in the appropriate area during working hours.
An employer may be liable for the actions of an employee engaged in the scope (the bounds–what is owed the employer and what the employer does or is entitled to control) and course (the actions–how the employee carries out the duties within the scope) of employment. So an employee driving (course: how the employee accomplishes a duty) to get donuts for a meeting (scope: assist in event preparation) has an accident. The scope of employment need not include “driving” but the course of employment involves driving, so the employer may be liable. For exposure to workman’s compensation claims, the standard can be even broader. The “course” of employment may include, for instance, an employer-sponsored recreational event–clearly not within “scope of employment.”
But such an expanded view of employer liability–expanded to benefit claims by those damaged and to prevent an employer from requiring duties and then bailing on liability–runs against the expectations of patent and copyright law, which take a narrow view of the employer’s rights to the intellectual property of the worker as a matter of employment. Copyright law defines a “work made for hire” as one “prepared by an employee within the scope of his or her employment.” Copyright work for hire does not include the idea of the “course” of employment. The Board policy then makes a claim of Board ownership to work prepared outside the scope of employment but somehow still within the course of employment. The Board goes further and claims, in
Except as set forth in Article I, Section B, copyrightable works created by an employee in the course and scope of employment are considered to be works made for hire under U.S. Copyright Law, with ownership vested in the Board.
A few clarifications. There is no Article I, Section B in the policy. Works are not “copyrightable”–copyright vests in all works that meet the definition of federal copyright law. The issue is not whether a copyright may be sought, but rather who the owner of the copyright is. And US copyright law does not include the term “course of employment”–just scope of employment. Finally, there is nothing in US copyright law that permits the Board (or any impersonal whomever) to “consider” whether or not works made by an employee within the scope of employment are works made for hire–they are, by federal law. And works that do not meet this definition are not works made for hire (unless they meet the second prong of the federal definition, which involves work “specially ordered or commissioned”–and that is not what is happening here–and for which the parties (here, the Board and a contractor) agree in writing to “consider” the works to be made for hire.) The Board has no authority to “consider” unilaterally such works to be works made for hire under US copyright law anyway, just because it decides for convenience to do so. The Board is just making things up that sound good in the moment.
The Board also includes a definition of “scope and course of employment” in the policy–but the definition does not make clear just what it is doing. Here, see:
“Course and Scope of Employment” shall include any activity that is listed or described in the employee’s job description or is within the employee’s field of employment, including research, instruction, or any activities assigned to the employee that involve the creation of intellectual property.
Before, in the definition of “employee” the use of “include” appeared to extend the definition. Here, the word “include” appears to start a list of things that the definition comprises. There are three elements in this list:
- any activity “that is listed or described in the employee’s job description”
- any activity that “is within the employee’s field of employment”
- any activities “assigned to the employee that involve the creation of intellectual property”
One would think that these items would be separated by “and”–but no, they are separated by “or”–so the definition suggests that one item, not all three, forms the definition in any given circumstance. Odd. The use of “shall” is also odd. It is as if the drafters of the policy imagined that they are writing a contract, or perhaps they just copied the definition from a contract. But they are writing a policy. So who is the “shall” directed at? In any case, the definition here goes way beyond what one would consider for liability purposes. In particular, what is a “field of employment”? If one is a professor of chemistry, it would appear that one’s “field” is “chemistry”–if so, it would appear that the claim made by the definition is that anything one does in the “field” of chemistry is owned by the Board, even if one’s professing involves, say, thin-film chemistry and one does other work, not for or at the university involving, say, the chemistry of cement. The “field” claim functions as a non-compete restriction.
A recent Arizona law case suggests that the Board has made its definition overbroad:
Under Arizona law, restrictive covenants that “tend to prevent an employee from pursuing a similar vocation after termination of employment are disfavored” and are strictly construed against the employer. Amex Distrib. Co., Inc. v. Mascari, 150 Ariz. 510, 724 P.2d 596 (App. 1986). A restrictive covenant is unreasonable and will not be enforced “(1) if the restraint is greater than necessary to protect the employer’s legitimate interest; or (2) if that interest is outweighed by the hardship to the employee and the likely injury to the public.” Valley Med. Specialist v. Farber, 194 Ariz. 363, 369 ¶ 20, 982 P.2d 1277, 1283 (1999).
Including “field” in the definition of “scope and course of employment” has the effect of claiming everything that a person does that could be categorized under “field” whether the person has been trained for it or hired for it or expected to be knowledgeable in it. In the Arizona case of Orca v Noder, the court found that a confidentiality clause functioned as a non-compete restriction, and then found further that the non-compete restriction was overbroad:
the provision prevented Noder from “pursuing any type of work in the public relations industry, even work that would be based on her skill and talents and not merely on confidential information or customer relationships.”
The inclusion of “field” in the definition of “scope and course of employment” does pretty much the same thing–preventing faculty (and staff employees) from doing anything outside their university work, whether for pay or otherwise. The Board’s treatment of consulting makes this clear:
If the employee’s obligations under this policy conflict with the employee’s obligations to the consulting entity, the obligations under this policy will take precedence.
No wonder the Board “encourages” outside consulting–it doesn’t have to pay for the work, but claims to own whatever is done in the same “field” as the employee’s work for the university. Why would faculty expect to be hired as consultants outside the field of their expertise? And why would the Board wish to encourage them to work as consultants outside the field of their expertise? It makes no sense from a public policy standpoint, other than where the public policy is to prevent faculty from outside consulting.
Significant Use of Resources
We have covered the “course and scope” prong of the Board’s claim on ownership of intellectual property. We turn now to the second prog, the “use of resources” prong. The Board claims to own all intellectual property “created with the significant use of Board or university resources.” The Board allows that it or a university governed by the Board can authorize exceptions to this claim. The clever drafting trick is to claim everything and release only what has been documented to be released. This is a symptom of folks who don’t know what they want (but they want a lot of it) or folks who believe servile relationships are the best approach to management (and therefore, the best approach to working with university faculty).
“Significant use of resources” also gets a definition at the end of the policy. No point, I guess, in placing the definition where the term gets formally used. That would make the policy, ahem, readable. Well, actually it wouldn’t improve the readability of the policy much, given that the definition of “significant use of resources” is a laundry list of what’s dirty and what’s clean:
“Significant Use of Board or University Resources” includes but is not limited to any of the following: use of research funding; use of funding allocated for asynchronous or distance learning programs; use of university-paid time within the employment period other than during sabbaticals or consulting as permitted under Board and university policies or except in the creation of scholarly works; assistance of support staff; use of telecommunication services beyond ordinary telephone services; use of university central computing resources; use of instructional design or media production services; access to and use of research equipment and facilities, or production facilities. The Board does not construe the use of office space, library resources, personal workstations, or personal computers as constituting significant use of university resources.
This is the first part of the definition. The remainder has to do instructional stuff and use of “electronic blackboards.” Our definition starts with legalese–“includes but is not limited to”–so what is the principle that governs inclusion in the list? We get nothing by way of a definition–just the list. “Research funding” appears to be a “significant use of resources” regardless of whether it is $10 or $100,000. Perhaps the drafters have conflated “significant use of resources” (which ought to provide a dollar amount) and “use of significant resources” (research funding, say, as a category of resource). As it is, the definition does damage to the idea of “significant use”–a use that rises beyond the normal.
In the olden days of simple, direct university patent policies, “significant” was part of establishing equities between inventors and their universities. It was reasonable that a significant use of resources would involve some request or special authorization, and in that action expectations could be established for equitable treatment of the university in recognition for those “significant” resources. It was reasonable that if the university provided “significant” resources to assist in the development of an invention, that the university ought to have a claim to a return on those resources–reimbursement, a share of income, a joint-ownership position, or perhaps a full ownership position. Many university copyright policies retain this sort of language. But then university copyright policies were not disrupted by the same folks who ripped through patent policies following the passage of Bayh-Dole, claiming that Bayh-Dole required changes in patent policy (it didn’t, but they got their way anyway).
Here in the Arizona policy, however, all that reasonable review of equities has been abandoned. If a named resource is used, it is by definition “significant.” “Use of significant resources” would suggest any “resource” that the university administration decided (“including but not limited to…”) was “significant” even if the use of that resource was not “significant” (by some common sense of the word). Thus, the definition tosses out library “resources” as a “significant use,” though one could imagine a “creator” making substantial and costly use of those resources.
For our purposes, we might focus on the significant resource described as “access to and use of research equipment and facilities, or production facilities.” Note here that mere “access” to such resources is defined as a “significant use” of those resources. It appears (again, this stuff does not offer much clarity) that “access” is used with the clever idea that if someone (one of those “others,” perhaps) gains access to a university lab and observes what is going on, the condition of “access” brings that observer within the “significant use of resources” and simply by observing work in a lab, the visitor has agreed to assign (and has assigned) all intellectual property to the Board. That’s clever, but I would hope that a court, anyway, would toss it all as an abuse of state authority and non-binding on “others” at least. Just as with “research funding,” any use of “research equipment and facilities” becomes a “significant use” by definition. What makes equipment “research equipment”? Is that 3d printer “research equipment” because it can be used for “research”? Or does the 3d printer have to be formally dedicated to “research” (and not also used for, say, instruction or used in a shop to support anyone showing up with a need for just-in-time bespoke fabrication, as in a university shop)? Or is it enough that administrators can put an adjective in front of any equipment now and turn it into “research equipment”?
The silly notion here is that inventions get made using equipment. Perhaps, if one is working on improving a piece of equipment. But equipment may not have much to do with an inventive act. One might conceive of an invention, while using equipment, that does not involve that equipment at all. That invention is not made with the “use of research equipment” but rather made with the “use of one’s mind to do something that doesn’t involve the research equipment.” It’s difficult to see how, in the particular, beyond the general expectation that the Board claims whatever it is one is doing (under this definition or another one or another one), that the definition of “significant use” meaningfully gets at how any use results in intellectual property. That is, the drafting is conveniently “loose” to end up being as broad as administrators may want to make it. The implication is that the policy is supposed to mean whatever administrators later says it means.
The Administrative Drafting Mindset
This style of drafting typifies another way in which administrators think when they are drafting policy. In addition to not knowing what they are talking about, really, when it comes to inventions and the like, and not knowing what future situations might arise (and often realizing that), and wanting to make sure nothing “escapes out the back door,” administrators also like to set up the “legal burden” to be on everyone else, not the administration. They do this, as well, in contract negotiations. Put in everything one can think of, and make someone else overcome it. In a policy statement, the expectation is that it will take a lawsuit to prevent administrators from making up whatever they please about the Board’s claims, so the bet is that most employees (and others) won’t have the time, energy, or $200,000 minimum to bring a lawsuit over the wording of policy. In this, of course, lies a darker kind of abuse of power, a kind of corruption as it were, in that a university with unlimited access to a legal budget relative to its employees, students, and mere citizens already has the “upper hand” in any negotiation over what a term might mean, and what obligations are required (by contract, say, rather than merely the threat of force) by that meaning.
A fun provision, which public university administrators would surely fight tooth and nail, would be to limit the university’s legal spending on a dispute over policy to no more than what the opposing party spends. An even better provision would be to provide university employees with financial support for legal challenges to policy requirements–employees should get the same access to university legal support that administrators do. Level the playing field for public institutions. Don’t reward incompetent, clueless, power-abusing policies and their administrative drafters. Don’t let them use the resources of the state to maintain their nests of political power.
Through all of this second prong, it is not clear how “significant use” receives any definition whatsoever. All we get is a list, and the list has nothing to do with how anything in the list ends up being “significant.” Some things are. Some things aren’t. No reason why, no principle. No dollar amount. No special authorization for access or use. The effect of the definition is, essentially, to do away with any common meaning of “significant.” The mere “use” of resources appears to be the meaning of “significant,” or in keeping with typical university policy usage, “significant use includes non-significant use, which for the purpose of the policy shall be considered to be significant use,” just as “employee” is defined to include “non-employee.” Why use a word with its common meaning when one can expand the word’s scope by including as well the complement of the word’s common meaning?
From the list of significant use, to be sure, one can see where the Board makes its claim to own intellectual property. But it is not so clear how it comes to be that the Board can sustain that claim as a matter of public policy when it comes to patentable inventions. The Supreme Court in Stanford v Roche reaffirmed that employment is not sufficient to establish an employer’s claim to inventions. The same is true for use of resources. The mere use of resources, even the use of an employer’s resources by employees, does not create any equitable employer right to ownership of the inventions made by the employees. There has to be something more–and that more is not merely an employer’s policy statement asserting that employees have to comply with the employer’s view of the law rather than the court’s view of the law. The something more involves an agreement other than employment, though it may be a requirement of employment. That is, the something more cannot be a policy statement. This is not where the obligation can possibly arise. If it were, then any company could easily circumvent court decisions involving patentable inventions simply by declaring in a magical policy statement that those decisions don’t apply–that the company claims whatever employees or non-employees do that the company may have an interest in. One might see such an attitude as at least contemptuous of court.
One might argue, as well, that the Arizona Board of Regents policy claim to own intellectual property made using Board research equipment or research funds is contrary to public policy, void, and unenforceable (if not an unconstitutional taking of private property under eminent domain). Of course, university administrators will be swift to point out that the policy is indeed “enforceable”–since they enforce it all the time. But that enforcement depends on abuse of power–on threats against employment, career, livelihood, reputation, opportunity, time and effort. Threat, not agreement and not due process, is the foundation of the Board’s claim on intellectual property as the policy is drafted. If the faculty had free access to legal counsel, no doubt the policy would be revised significantly.
Intellectual Property Includes Non-Intellectual Property
We have yet one more step in the process of sizing up when to disclose–the definition of “intellectual property.” Now in common practice, intellectual property means patents, copyrights, and trademarks. Sometimes, trade secrets are also included, though trade secrets are technically not statutory intellectual property. Beyond that, there are plenty of intangible assets (call them non-IP intangible assets) that might have some attributes of intellectual property but lack a key property–they can’t be owned. There is no theory of title for them. They cannot be property, so they certainly can’t be intellectual property. Consider, for instance, “expertise” or “know how.” Not ownable, though the technical information involved might be claimed as a trade secret. But all this doesn’t much matter once we look at the special Board definition of “intellectual property”
“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. Examples include (1) hybridoma or clonal cell lines that produce monoclonal antibodies or recombinant proteins, (2) plants protected by the Plant Variety Protection Act, (3) non-patented drugs protected by the Orphan Drug Act, (4) prototype instrumentation or devices and (5) research records and documentation.
Let’s work this definition for a bit. I’m sorry if some readers might find doing so tedious. The upshot is that the definition conflates intellectual property and non-intellectual property, makes an ownership claim on all of it, even where such an ownership claim can’t exist, except as a policy fiction. Skip on down a bit if you’re persuaded. If not, here’s some stuff to consider.
First, we get a definition that includes the defined term. That’s always a bad sign. Intellectual property, we are told, “includes” “legally recognized” intellectual property. Nothing is added, of course, by “legally recognized” and further, of course, the words aren’t needed because the definition then goes into list mode and “includes” (within an “including”) statutory forms of intellectual property plus trade secrets and plant variety protection. But the policy then cannot help itself and having listed the “legally recognized” forms of intellectual property goes on to add stuff that apparently isn’t “legally recognized” (or it would be in the first list!): “any associated or supporting technology or know-how.”
That’s about as strange a “together with” that one might find. How does a technology “support” a patent or copyright? How does “know-how” “support” a patent or copyright? What makes either technology or know-how “associated” with a patent or copyright? Is it the ability to think or write? Is it knowing how to conceive and reduce to practice, or to author? Is it what is taught in the patent or work of authorship, as distinct from the rights of ownership in a patent or copyright? For trademarks, the association of technology or know-how is stranger still. If a trademark is used to designate a service, is the Board then claiming it also then must own the service itself, the know-how of the people providing the service, and “technology” that “supports” the service? Is a car a “technology”? Is a privately owned car used in a trademarked delivery service then owned by the Board? Bah. This is stupid (except, of course, it’s not because the university is rich enough to afford lawyers who will, for the money, argue pretty much anything). Dobermen. Doberwomen. Attack dogs.
But the Board is not done yet. Having claimed legally recognized IP and also what’s not legally recognized (but now designated as IP, even if there’s next to nothing to guide the scoping of the claim), the Board now also includes tangible property “used or produced in the course of university research projects.” So if one brings in one’s personal laptop computer, and uses it in a university research project, it would appear that the Board claims it under the expanded definition of “intellectual property.” More overreaching absurdity. It would appear that anything used in a “university research project” is subject to confiscation by the state. These tangible properties do not have to support or be associated in any way with the “legally recognized” intellectual property, as do “technology and know-how.” It’s just a free-riding addition to the definition, whenever something is used or produced in a “university research project.” Perhaps “project” represents a limitation, but here “project” would appear to have about the same register as “activity” or “field” or “research”–whatever administrators later say they meant (and summon the Doberpersons).
The ownership theories for patents, copyrights, and trademarks are well established. The ownership theory for trade secrets in a public university is not so well established. Faculty and students have no contractual obligation to secrecy–quite the opposite. If they were under obligation to secrecy, then the university would instantly be in material violation of federal law governing exports and university research would not meet the definition of “fundamental” in the export administration regulations. So it is unclear just what trade secrets the university might hold, and how in any event those trade secrets get “made,” to use the wording of the Board’s claim on intellectual property. In the normal everyday world of companies, trade secrets are “made” by a promise not to disclose them. But that promise is exactly what is missing in university employment agreements with faculty. A faculty member might create a trade secret by not disclosing to anyone some economically valuable thing not generally known to the public and introducing this thing into a company setting. But it’s a stretch to argue that because faculty have to disclose intellectual property to the IP Official, and intellectual property includes the faculty’s trade secrets, that these trade secrets now become the trade secrets of the Board, and the faculty cannot disclose them to others without the Board’s action and approval. That means not only that there’s no academic freedom despite this policy bit in the ASU Academic Affairs Manual:
Institutions of higher education exist for the common good, and the common good depends on academic freedom: the free search for, and the free exposition of, truth. Academic freedom applies in both research and teaching. Freedom in research is essential for the true advancement of knowledge; academic freedom in teaching is essential for the protection of the rights of both the teacher and the student in the free interchange of ideas.
Academic freedom is the right of every faculty member, academic professional, and other employees and students while engaged in teaching and/or research. These freedoms include:
- Freedom in research and in the publication of results.
This freedom does not relieve the individual of the responsibility for carrying out other duties of the position.
Apparently the “duties of the position” means the disclosure of “intellectual property” and that means that the Board owns faculty know-how–that is, expertise–and whatever it is that faculty have not published, and all that stuff is owned by the Board, either as intellectual property or as non-intellectual property or as tangible research property, or as a trade secret of the Board. Either there’s academic freedom or there’s not. ASU can’t have both policies and mean it. One of these policies is a farce. I’d say it is the intellectual property policy, which is incompetently drafted, overreaching, inconsistent, and foolish (among other descriptors). An appropriate action would be for the Board to apologize for having put the intellectual property policy out there–acknowledge it is an embarrassment–and write up policy that’s clear and helpful.
What About Inventions?
Now consider one last thing: the definition of intellectual property ignores inventions and works of authorship. The point of disclosure is usually of inventions. In a patent policy, it is the disclosure of inventions that are or may be patentable. And yet there’s nothing here. An employee (or other) is required to disclose intellectual property–patents “and any associated or supporting know-how.” The clear statement of policy is that an employee is to disclose a patent, not an invention that might be patentable. That’s the formal obligation, with a demand that the patent be disclosed “promptly” and “in writing.” There is no stated obligation to disclose inventions, even though that’s what one might expect in a technology licensing operation–unless those doing the drafting are incompetents.
Oh, I know, it’s a technicality, or it’s implied, or “since you ‘know what we mean’ it really doesn’t matter what we write.” If it doesn’t matter what gets written, then we have a couple of problems. One, the policy statement is worthless because it amounts to “employees and others must obey administrators” and that’s not enough to get the Board the “intellectual property” it apparently so wish-lusts. Two, if the words don’t so much matter, why all the ludicrous definitions and over-drafting and legal-sounding gyrations. Why not something simple, such as:
The Board authorizes the universities it governs to accept assignment to the Board of inventions that are or may be patentable and made by their employees. The universities and their employees may enter into agreements that provide for such ownership by the Board, and in such agreements, the universities shall require that employees promptly disclose in writing any such inventions.
One could then deal with issues pertaining to assistance in obtaining a patent, copyrights (or permissions) in supporting or associated works of authorship, and what to do about expertise related to a patentable invention. If an assignment is voluntary, then one would expect good faith on the part of the inventor to assist. But if an assignment is compulsory, then one may also have to compel assistance (why should assignment be forced, but assistance expected to be granted willingly?).
Nothing here requires obtuse definitions regarding employees or significant use of resources or intellectual property. All that’s needed is an authorization for the Board’s universities to own patents and copyrights, to enter into agreements to obtain inventions and works of authorship, and to expect in those agreements that inventions and works of authorship are promptly reported when they are made. What is so frickin’ difficult about doing this? University patent policies from the 1960s could do it. What brain-fizzing effect has Bayh-Dole had on university administrators and their legal counsel that they can’t for the life of them draft a coherent statement of what it is they want.
Under the Arizona intellectual property policy, employees and others are required to disclose patents and copyrights, not inventions and works of authorship. And they are required to disclose technology and know-how that supports or is associated with patents and copyrights. And they are required to disclose tangible research property regardless of whether that property has anything to do with patents or copyrights or the supporting or associated technology or know-how. And they must do all this “promptly.” But promptly from when? When a patent issues? When a patent application is filed? When work of authorship is fixed in a tangible medium of expression? There’s no help at all in policy about what is meant by “prompt”–any reasonable time period will work.
Comparison with Bayh-Dole
Here’s the rub. If the policy were focused on inventions that are or may be patentable, then “prompt” has a much clearer meaning–before the right to file a patent application is barred. Bayh-Dole uses “reasonable time” for the reporting period of subject inventions by universities to the federal agency providing the funding. That’s a “reasonable time after it [a subject invention, an invention acquired by a contractor] becomes known to contractor personnel responsible for the administration of patent matters.” The standard patent rights clause authorized by Bayh-Dole specifies “two months” (37 CFR 401.14(c)(1)) for this reporting. The standard patent rights clause further requires universities to provide instruction to employees “on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars” (37 CFR 401.14(f)(2)). Again, that’s pretty clear. The standard patent rights clause goes one step further, and requires universities to delegate certain obligations to potential employee-inventors. These folk are to be required to make a written agreement to protect the government’s interest that includes the obligation to “disclose promptly in writing…each subject invention…in order that the contractor can comply with the disclosure provisions….” Again, that’s pretty clear–disclose with sufficient time for the university to report the invention to the government and allow the government to file a patent application if the university decides not to.
It appears that the Board has lifted the standard patent rights clause language for its policy statement, and then bungled it up. Here’s the full sentence without the ellipses from the standard patent rights clause (with added emphasis) [NIST has since revised this clause to include–stupidly–a requirement to assign to the contractor any subject invention–but an invention becomes subject only after it has been assigned to a contractor–yes, that stupid]:
The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.
The Board’s policy uses “promptly and fully disclose in writing” “to the IP [O]fficial” (“the individual or the intellectual property management entity designated by the university to manage university intellectual property”), “any intellectual property” (that would be, a subject invention) “made by that person” “in which the [B]oard may have an interest.” If the standard patent rights clause is the template for the Board’s requirement, someone sure made a mess of it. Where the standard patent rights clause uses definitions to create a clear statement of scope–in inventions that are or may be patentable (or otherwise protectable under the patent laws–namely, plant variety protection and anything else Congress sticks in there), owned by the contractor, and conceived or first actually reduced to practice in the performance of work under a specific contract that sets out the “planned and committed activities of a government-funded project.” The claim to an interest in certain inventions is made by the government upfront, as part of a template clause to be inserted into each funding agreement, but that clause then operates within the scope of each funding agreement, using its statement of work to set the bounds of the government’s interest. The inventions are those that may be protected by patent laws, a further restriction, so we are not concerned with folk definitions of “invention” or “intellectual property,” and the inventions are ones that the university (as a contractor under the patent rights clause) has acquired from the inventors (however that happens–voluntarily or by threat of force, administrators get to choose what they serve).
By contrast, in the Board policy, inventions that are or may be patentable is expanded to any form of intellectual property, including non-intellectual property. There goes the working definition of “promptly” from the standard patent rights clause. Disclosure makes sense in the context of patentable inventions–it is by means of disclosure that one obtains a constructive reduction to practice suitable for filing as part of a patent application. But for stuff involving copyright or trademark, disclosure means sending along a copy of the work of authorship or the mark that’s being used (or intended to be used) in commerce. But a mark that’s used in commerce acquires common law trademark status without additional formalities, and a copyright vests in each original work of authorship when fixed in any tangible medium of expression, without additional formalities, so there’s no pending bar date to secure these forms of intellectual property. “Prompt” has little meaning for these, or at least not the particular urgency associated with patentable inventions in a first-to-file system.
Similarly, while the scope of government interest is carefully laid out in definitions and their use, requiring no more than what the government has bargained for in writing, funding agreement by funding agreement, the Arizona Board of Regents attempts to claim most everything, expecting “creators” will have claw back whatever has been taken beyond reason or law. Employees get expanded to include non-employees; substantial use gets redefined as any use, substantial or not, of resources listed as “substantial”; intellectual property gets defined to include non-intellectual property and property not legally recognizable as intellectual property, or property for that matter. It’s a policy hack’s heaven, because apparently there are no standards of drafting or review at Arizona’s Board that might check for consistency, logic, conformity to law and practice, reasonableness, clarity, appropriate authorizations and delegations, and administration. Instead, it’s a jumbled mess. It only reads nicely at a great mental distance, or preferably, without one’s mind operating at all, or with only one’s clueless, uninformed mind operating. Not with one’s mind expecting to find sense and a meeting of minds.
The Upshot
Worst, for all the verbiage, all the legal posing, all the definitional apparatus, all the lists, all the formality, the Arizona Board of Regents intellectual property policy fails to state a claim on patentable inventions and fails to require prompt disclosure of such inventions. The policy restricts itself to its definition of intellectual property–and thus, to what it states as its concern, and in the case of inventions, it states patents, not patentable inventions. Thus, one should disclose a patent to ASU promptly–sometime after one has filed a patent application and, say, within a few months after the patent has issued. It is worth noting that patent applications are now published, so ASU can obtain a complete disclosure of each patent application filed by creators at ASU simply by monitoring the US Patent Office’s publication of applications. For ASU or other Arizona public universities to comply with the standard patent rights clause authorized by Bayh-Dole requires the implementation of the (f)(2) agreement. Relying on the Board’s policy fails to create the obligations necessary to comply with the standard patent rights clause, as the Board’s policy claim is directed at the wrong thing–the patent, and not the patentable invention.
Puck. Captain of our fairy band,
Helena is here at hand,
And the youth, mistook by me,
Pleading for a lover’s fee.
Shall we their fond pageant see?
Lord, what fools these mortals be!