Recently, I have worked through intellectual property policies at Michigan and Texas. No university administrator is willing to write “We demand to own your work to try to make money, preferably by partnering with monopolist speculators.” That would violate the first principle of modern university IP policy writing: never write directly what can be buried in an abstraction or hidden in a list.
Consider. Here are the first six sentences of the UNLV Intellectual Property Policy. Let’s work through them to see how it operates. Each sentence of the preamble presents a coordinate list–often multiple such lists. But in intent and practice, one item in each list matters way more than the others. They are not coordinate elements at all. They are, shall we call it, “disprioritized” lists. Drafting by dispriortized list is a basic method of obfuscation. Please, if you want to write modern university intellectual property policy preamble, read on and learn.
1. The Nevada System of Higher Education (NSHE) and its member institutions which include the University of Nevada, Las Vegas (UNLV) are dedicated to teaching, research, and public service. The personnel at UNLV recognize as two of their major objectives the creation of new knowledge and the dissemination of both old and new knowledge. A byproduct of these objectives is the development of new and useful products and processes and the publication of scholarly works. Such activities: (1) contribute to the professional development of the individuals involved, (2) enhance the reputation of the institutions concerned, (3) provide additional educational opportunities for participating students and (4) promote the general welfare of the public at large.
2. Inventions and Copyrighted Works that are conceived, created and produced by UNLV personnel, students and others are often aided in whole or in part by the use of Significant University Resources. The intent of this policy is to: (1) define the rights, privileges and incentives of inventors and authors; (2) to ensure that these inventors and authors are further encouraged and supported in their creative activities; and (3) to facilitate the commercialization and utilization of UNLV inventions and creative works for the public good.
Disprioritzed lists helpfully mask administrative intent, cover for any lack of administrative knowledge, remedy a fear of liability or of missing something, conveniently simplify drafting while reserving future opportunities for institutionally favorable readings, and reward the love of high-sounding language. The result is language that is understandable primarily only if one already knows what practices are going to be instituted with reference to the language. That is, preambles are preambles to establish the priority of administrative interpretation, not simply statements of conditions and intent. Don’t expect logic, consistency, or anything close to direct statements.
1. The Nevada System of Higher Education (NSHE) and its member institutions which include the University of Nevada, Las Vegas (UNLV) are dedicated to teaching, research, and public service.
Since the policy establishes a mandate and conditions for licensing of “intellectual property” for money, this activity must be considered to be within the category of “public service.” There’s no need to mention teaching and research, as they aren’t relevant to an IP policy that claims ownership of most everything and ends with a royalty-sharing schedule. The implicit claim of the preamble, then, is that licensing for money is a public service. That’s something more of a definition than a statement of fact. It is a policy requirement that the personnel at UNLV are required to accept. Otherwise, there is no need to place this statement in policy, here. But perhaps licensing patents for money is not a public service. That’s an open question, outside UNLV–but not as a matter of UNLV policy. It can just declare what is and isn’t a public service.
IP management in teaching and research has little to do with the policy that follows, which concerns ownership, commercialization, and the allocation of licensing money (see Section 6, where everything comes together). IP in teaching and research is mostly concerned with fair use, obtaining permissions, coordinating multiple authors and collaborators, and dealing with student and sponsor IP positions. The present policy merely asserts institutional ownership of what gets created and ignores (except for the bizzaro assertion of Section 5.5) whatever is received, what is shared, and what ought to be made available without a claim of ownership, personal or institutional. Some universities creatively add “economic development” as a fourth mission of the university–another abstraction asserted by policy as fact under which to park patent licensing.
The personnel at UNLV recognize as two of their major objectives the creation of new knowledge and the dissemination of both old and new knowledge.
Notice that these two objectives are placed within the class of “all major objectives–there could many such major objectives, and there could even be another class of objectives that are more important than “major” objectives. It’s further odd that personnel would “recognize” these major objectives–it’s as if the assertion is that personnel, if shown the objectives, would acknowledge they understand what they are. True, no doubt. But not relevant to this policy statement.
The reason for patent policies at universities was to address the problem of the patent, which in private hands created monopolies endorsed by the U.S. Constitution and federal law to promote progress of the useful arts, but at a university ran against norms of service to all, collaboration in research, rapid publication, and a disinterest in commerce confirmed by the paying of sufficient stipends to faculty that they could focus on their work and not have to grub for money to supplement their incomes. Cottrell solved the patent problem one way–by creating a national organization that would represent academic inventor interests and coordinate with industry by having strong industry representation on its board. Any royalties after expenses were to be used to support research nationally. Patents, then, would leave the university and be managed for public good independent of the direct involvement of either academics or administrators. Scores of research foundations were set up on the model of Research Corporation.
Compton solved the patent problem another way–by taking institutional ownership of patent rights and directing the university to make money for the support of research at the university. What is invented at the university should make money for the university. At first, the university itself used external agents to do the licensing, but took the money directly and shared some of it with inventors, keeping most for itself. The institutional approach insured that the university would get money from licensing, where in the Cottrell scheme what a host university received was up to the inventor and universities had to try to “claw back” a share by reviewing the circumstances of invention for any sign that the institution deserved an “equitable” share. It was not sufficient that somewhere university researchers might benefit from the success of a patent–the administrators wanted the university that hosted the work to gain the greater share of any such income. With the institutional approach, nor worry an inventor would not patent, nor altruism that someone deserving would benefit, nor clawing back to get a share was required–one simply took ownership outright, shared back some portion with inventors, and divided up the rest after covering the costs of the operation.
In many ways, the Bayh-Dole Act was the turning point in the competition between the Cottrell and Compton approaches to universities and patents. The university-affiliated research foundations found themselves in competition with Research Corporation, Battelle Memorial Institute, and other national invention management agents. As the research foundations built their own licensing capacities, they ended their relationships with the national agents–to keep more licensing revenue, if not to do a better job (so they might think). But once the licensing was in-house next to a university, university administrators began to do think about doing their own licensing–first at MIT, the University of California, and Stanford (with a few others), and then more broadly.
Bayh-Dole tipped the balance. It made it appear (created in the minds of administrators a “presumption”) that universities were to own patents on inventions made with federal money. According to this mindset, university-hosted inventors were prohibited by federal law from choosing an invention management agent. Patents would be owned by universities. They could assign to research foundations, but did not have to. Money after costs would be used for scientific research or education, with a presumption (again, not supported by the Act) that the spending would take place at the university that owned the patents. If there is one thing that Bayh-Dole was said to do (but didn’t), it was to prohibit for once and all academic inventors from deciding whether to patent or who to work with if they did believe a patent was indicated. All inventions would go to the host university to decide on management matters–whether to patent, with what claims, who to involve in marketing the invention, what terms to require, whether licenses should be exclusive or non-exclusive, when to enforce the terms of the licenses or settle, when to sue for infringement.
In short, the claim was that Bayh-Dole cut the inventors out of all the key decisions. This claim is not true, but it has persisted for 35 years in the university community. The university administrator horror (and the horror of patent attorneys making their feast off university patent work) over the Stanford v Roche decisions was not some abstract “title uncertainty” but rather that inventors might regain control over their work. The administrative misreading of Bayh-Dole has turned those university faculty and graduate students who still have personal initiative, and who would have thrived under the Cottrell approach, into all-but-criminals and unethical violators of an administrator-imposed requirement that public service in matters of invention must mean handing all patentable inventions over to the university administration. Whatever the rationalizations, the requirement is at its heart simple institutional self-interest–meaning, administrator self-interest. Over time, university administrators expanded their claims from patentable inventions to most anything, whether patentable or not, intellectual property or not, ownable or not–so long as it could be called (for policy purposes) an “invention” or otherwise looked as if it could be treated as an invention–that is, to be held back from the public and by being held back then licensed for money to a speculator.
“Knowledge” here in the policy under consideration is an abstraction that covers among other things “invention” and “works of authorship” and “know-how” and “tangible research property” (from the definition of “intellectual property”–which is made to mean a list of “intangible assets” which in turn includes assets which are not “intangible”–call them “inintangibles.” Copyrights, however, don’t have anything specific to do with new knowledge–a work of authorship is a matter of original expression, not new knowledge. Yet this university policy here claims all copyrights, not just copyrights in works expressing new knowledge. May as well grab that “old knowledge” as well. No mention of “middle” knowledge–stuff neither old nor new.
“Old” knowledge then might mean, in reality, just all the stuff not claimable by the university–not invented or authored at the university or for which an institutional controlling position is not available. One way to disseminate “new knowledge” of course is by the exclusive licensing of patents or otherwise, for which there’s an institutional ownership claim and a royalty-sharing schedule. Other ways of disseminating knowledge–teaching, conferences, consulting, visits, graduating students, mailing out samples–gain no benefit from institutional ownership.
A byproduct of these objectives is the development of new and useful products and processes and the publication of scholarly works.
This preamble reads like the funnel paragraph of a five-paragraph theme, but without ever getting to a sentence with specifics. It’s just sub-abstractions with abstractions. Publication of scholarly works is made to be parallel with “development” of products. But these are not parallel. Publication of scholarly works includes announcing inventions and the like. The point of commonality is the action that makes the public aware of new possibilities. “Development” is something one does after learning of a new possibility.
But here, something else is going on. A university, so the claim goes, has major objectives to create new knowledge and to disseminate new knowledge. But now we find that publication is merely a byproduct of dissemination, not the embodiment of it. Similarly, the point of publishing something new is that others gain the benefit of that something–not merely receive notice that something has been discovered or made, but the benefit of using the new information. Use is therefore caught up in the act of scholarly publication.
But not for this policy. Here, development is made to be an unintended consequence of creating and disseminating knowledge, as is scholarly publication. By declaring development and scholarly publication to be byproducts, the policy isolates these activities from the work of the university and therefore can claim them as objects of administrative control, not faculty or student control. If development and publication were the major objectives of the faculty, then administrators could at best only offer resources to support the faculty. But if development and publication are incidental, then administrators can take property to feed to their licensing machine, rather than to offer the use of their machine to creative folk, to use at their discretion.
Within “development” of course lies “commercialization” and within “commercialization is the idea that holding a patent right may dictate who may or may not commercialize (or develop) a new and useful product or process–so that the patent right not only reflects an opportunity to invest in making a commercial product, but also the value of keeping others from doing so. For everyone who does not get that exclusive license, their effort is to design around the university work–to make that work irrelevant!
“Commercialization” broadly means effort to create a product for sale. The particular emphasis is to create a product for sale where previously work was done by artisans. Thus, one commercializes the production of pottery or textile goods by building the equipment to supply a market with many items, produced at less cost and in less time than any artisan potter or weaver could do. And also, one commercializes the production of research discoveries where one can find an application, or can build a research tool (instrument, software, dataset) faster and more cheaply or better. That is, one commercializes to insert something new into a market, or transform an existing market, or to create a new market. Commercialization, then, is not so much a matter of making product from something new as using that position to change the nature of a market, and in doing so, realize a return on investment (to put a capitalist spin on it all).
Development for use does not require commercialization, does not require patenting, does not require, even a financial return on investment. A doctor, for instance, may use a new technique to save a patient’s life without having to first ascertain that her financial investment will see a sufficient return to justify the attempt. An engineer, similarly, may try a new technique to see what it does, without having to cost-justify the effort, for the pure whimsy of it. Such exploration is at the root of much innovation–noodling, not supervised by capitalist investors.
The buried intent of this policy, however–the intent the policy permits–is that the university (that is, administrators acting in the name of the university and controlling policy and practice) claim that it is in the public interest to prevent private use of such “new knowledge”; that development necessitates institutional ownership, and ownership positions are taken to generate royalties from the sale of new products. This is the “no noodling will be allowed” provision–not even by academics at other institutions.
(In one case, when I was working at the University of Washington, we asked another (major, private) university if they would sue us for infringement if we noodled around with their patented work on 3d printing cement–and they refused to say they wouldn’t sue. They had licensed exclusively to a startup, hadn’t reserved rights for other universities, and apparently the deal required them to join any litigation the startup wanted to protect its rights–and those are typical terms for an exclusive patent license offered by a university). No noodling allowed.
Such activities: (1) contribute to the professional development of the individuals involved, (2) enhance the reputation of the institutions concerned, (3) provide additional educational opportunities for participating students and (4) promote the general welfare of the public at large.
The list appears to be incomplete, as the point of licensing patents for money, beyond funding the licensing program itself, is to create more research funding. That’s not even on the list. But perhaps it is buried in “promote the general welfare” because if the university has more money, then it can do more research and ask for less money from taxpayers. Or perhaps by making money from patent licenses, the university’s reputation is enhanced–and having an enhanced, enviable reputation (however obtained) clearly is a top public concern in supporting universities.
But this is a policy statement. It is defining what activities do, not merely selectively reporting them. These four items are the complete list. This is all that a university need accomplish by owning and licensing whatever it claims from the faculty, staff, students, visitors, whomever. The university does not have to make money. Does not have to see that there is “development” (or even practical application, to use the Bayh-Dole term). The university does not have to promote the particular welfare of any public group, not even the beneficiaries identified in a federally funded project. Only the general public welfare is indicated. Read this way, this bit of policy absolves the university of having to make any money from licensing, declares the only benefit to inventors and authors to be professional development, and for students, opportunities to learn (by watching, apparently). The institution’s declared benefit is enhancing its reputation. The policy’s claim, then, is that the technology licensing program is a success if the university becomes known for it, for advertising its successes. How very odd.
Surely, of course, administrators do not want the policy to be read in this manner. They want it to be read to say, “from time to time patentable inventions get made in university work, even if that’s not a usual objective, and when they do, we want to be sure that if a patent would assist in the practical application of the invention to do something useful in the world, that our inventors have the support of the university to pursue patents, to be managed only for this purpose. If people want to pay us money in the process, we recover our costs, share some with inventors in return for their assignment of rights, and use the rest equally for research and instruction.” But that is not what they do, nor what they intend–and that’s why the policy is written in the abstract, and has to be read in the abstract, to find the authority for the program the university does have.
2. Inventions and Copyrighted Works that are conceived, created and produced by UNLV personnel, students and others are often aided in whole or in part by the use of Significant University Resources.
Many lists to cover for administrative intent. But first, a wonderful abstraction,”Significant University Resources.” both a defined term and one that turns out to mean “any resources at all, except for ‘normal use’ of an office, library, or computer.” The resources are neither “significant” nor used to a “significant” degree. It’s a misleading term, unless it is to be read as a pure abstraction, as a token that stands for “all resources except the normal use of three listed resources.” Please, no abynormal uses of those university resources, now.
Despite a definition of Significant University Resources, the policy later (Section 4.2.a) elaborates by example with another list: “such as facilities, materials, equipment, Personnel, or funds, or other resources that are under the control of or administered by UNLV.” The final element in the list gives the general case: Significant University Resources is anything controlled or administrated (to control not being to administrate, apparently–one might “administrate” and yet fail to control, perhaps–so what does “administrate” mean to an administrator?) That is, most anything except offices, libraries, and computers (except when the computers are used to produce software).
“Personnel” (lower-cased in the passage) is actually also a defined term–it means UNLV “employees.” Why one term is used but defined by the substitution of a more definite term is odd enough, though consistent with the drafting technique. But the preamble here lays the groundwork for an expansive scope of claim to ownership, suggesting that the policy might apply not just to employees, but also to students and, in a master stroke, “others.” (Later, in Section 3.1, “others” becomes “anyone” who uses “Significant University Resources.” In 4.2, it’s “any person.” Not just employees. The preamble intends to make claims on people whether they know it or not, have agreed to it or not, have any formal relationship with UNLV or not.)
Note as well in the preamble passage above the list “conceived, created and produced.” This list is perhaps meant to stand for all the possible past participles that might describe the creation of new knowledge–but it all we get is a list with no indication of what it does in policy. One could as easily think that the list illustrates the casual, even sloppy, mindset behind the policy–that it doesn’t much matter how Inventions and Copyrighted Works come about. But here, grammatically, this list acts as a set of restrictive qualifiers that in turn, brilliantly, by being themselves indefinite, expand the implied scope of the nouns they modify.
Inventions and Copyrighted Works that come about in these three ways may use Significant University Resources. Other inventions and works apparently lie outside the scope of policy interest. (Of course, works aren’t copyrighted–copyright vests in them when they meet the federal definition, as a right of authorship, not by application to the approval of the state. Again, it’s casual language here that suggests administrators are merely repeating what sounds good.
Since policy sets out a definition for “Copyrighted Works,” administrators can make the designation stand for anything they want, in the abstract. But what they do in the policy is to copy verbatim the statement of what “copyright protection subsists” in from the U.S. Copyright Act. Nothing is changed except removing the enumeration and adding the odd naming convention of “Copyrighted” that transfers the scope of protection to the works that have that protection. The appropriate role of policy at this point would not be to repeat the definition of copyright, but rather to provide guidance regarding what copyrights the university claims and how administrators are to go about getting those copyrights. For that, there are two questions: first, what is the scope of employment in an academic environment?; and second, for work not made for hire, under what circumstances will the university require assignment of copyright? The policy never sorts these matters out, though there is an attempt at it).
“Conceived” is a term of art from patent law–one step in what makes an invention patentable–the others being that the invention is reduced to practice, that it is new, useful, and non-obvious, that it comes within the scope of things regarded as patentable (not an algorithm or law of nature or a perpetual motion machine), and that the inventor recognizes the invention as inventive).
To use “conceived” independent of a patentable invention is to suggest any idea, not just patentable ones. “Made” would be a more appropriate usage. Cf the MPEP 2138.02: “An invention is made when there is a conception and a reduction to practice. Dunn v. Ragin, 50 USPQ 472, 474 (Bd. Pat. Inter. 1941)” or Bayh-Dole: “(g) The term “made” when used in relation to any invention means the conception or first actual reduction to practice of such invention”–where an invention already must, to be patentable, have been conceived and reduced to practice–for Bayh-Dole, “made” can refer to one or the other of the two key steps to determine whether an invention is a subject invention, but only after both of these steps exist.
Of course, it may be that the preamble expects the university to claim only those inventions in which the conception has been aided by university resources, but where actual reduction to practice has. Since conception is much harder to pin on the use of resources, one might think that here there is a mix-up–that actual reduction to practice might be the activity that most warrants a look at the use of university resources. But no.
“Created” is a definition in the Copyright Act. A work is created when it is fixed in a tangible medium. A work protected by copyright necessarily has been created, but it has also been authored, and is also original. Works may be created that are not original works of authorship. The use of “created” here allows for a broader claim of interest than that of copyright, despite the definition of Copyrighted Works.
“Produced” has no direct connection to either patent or copyright law. Inventions and works of authorship are only “produced” in a generic, folksy sense. Even if we substituted “made” for “conceived” and “authored” for “created,” there is no apparent purpose for “produced” other than to suggest that there may be Inventions or Copyrighted Works that are neither conceived or created, made or authored.
The intent of this policy is to: (1) define the rights, privileges and incentives of inventors and authors;
Actually, the policy defines the obligations of inventors and authors to assign work to the university. Their actual right is to own stuff that is beyond the broad claims of university administration–rights they have anyway. There are no rights granted to inventors and authors under the policy that are not premised by the prior taking away rights. The idea that rights are defined rather than granted or acknowledged or protected is more administrative fiat. Rights in inventions and works of authorship are established by federal law. Absent any policy whatsoever, things would work out pretty well. Stuff that’s work made for hire would be owned by the university. Stuff that the university otherwise contracted for, above and beyond employment, the university could own by promise of assignment. Stuff that the university and faculty agreed could be owned by a sponsor of research under contract, could be owned in that way. All without any policy on the matter at all. But instead, the preamble proposes that rights of inventors and authors--not the university–be defined.
Now add in the “privileges” and “incentives”–again, of the inventors and authors. The policy actually establishes the privileges of the university–for instance, to take what it wants when any thing has been produced by “anyone” with Significant University Resources. “Incentives” must mean the generous (60% of net) royalty-sharing schedule. That is, the preamble decrees that the incentive defined by the university for its inventors and authors is monetary. Not the joy of finding things out, not the opportunity to take responsibility for encouraging the use of new things by others, not the satisfaction in helping others or seeing valuable things become widely available. Just a share of the money–if the university ever makes any. But that’s policy for you.
(2) to ensure that these inventors and authors are further encouraged and supported in their creative activities;
That’s the part of the royalty-sharing schedule that tracks 25% of net to the inventor or author’s academic unit. Again, if the inventor or author maintained ownership of the patent or copyright, the money available to support his or her creative work might be even greater. But more so, if his or her creative work were broadly available, and not shopped first for “commercialization,” the inventor or author might become much more broadly recognized, opening up opportunities for collaboration, leadership, and new creative work–things often foreclosed once an institution takes control.
and (3) to facilitate the commercialization and utilization of UNLV inventions and creative works for the public good.
That is, license the property for the making of products. These licensing offices rarely even think to license work for “utilization”–that would necessarily (so they believe) reduce the chances of licensing exclusively for the development of commercial product. Notice here that “Copyrighted Works” has been replaced by “creative works” and “invention” is not used in its defined form (“Inventions”) but rather apparently in a common, folksy way. Perhaps such usage is to indicate that the policy intends to facilitate the commercialization of more than just patentable inventions and copyright works. But we won’t know–or have any standing to guess–until university administrators explain the mystery of their wording.
In the end, with a preamble of abstractions assembled in this way, no one but administrators has a right to read the policy at all. Any careful reading, as I have done here, produces strangeness and unpleasant prospects. The policy preamble stands, rather, for administrative privilege. It is not something that one can make proper sense of. It uses abstractions and lists to permit future expansion of administrative privilege as it suits future administrators. This is the sort of prose written by folks looking out after their best interests, not folks concerned about how innovation works in the presence of institutional apparatus. Perhaps such preambles, then, are actually written as if by an invisible hand which guides administrators to what they take to be the best and brightest of all possible university economies, ones based on obfuscation and misdirection that locate the exercise of power with impunity with, of course, administrators!