There are alternatives to compulsory invention assignment practice–there’s still a voluntary aspect to nearly all university patent policies, already there, built-in–on the administrative side. There are often two mechanisms in policy by which patent administrators can implement a voluntary program of assignment, even within a policy that makes assignment mandatory:
- decline to assert ownership
- assign back to the inventors if assignment is required by policy.
We have looked at how such a practice can exist within patent policy at the University of California and at the University of Iowa. Now let’s look at the University of Kansas.
University of Kansas
Here’s a piece of the KU Board of Regents Intellectual Property policy, making a claim for university ownership.
Patents obtained on inventions or the ownership of copyrightable software with an actual or projected market value in excess of $10,000 annually resulting from institutionally sponsored research shall be retained by the institution or may be assigned to an organization (hereinafter called the Organization) independent of the institution and created for the purpose of obtaining patents on inventions, receiving gifts, administering or disposing of such patents, and promoting research and the development of intellectual property at the institution by every proper means.
University patent policy style manuals must insist on convoluted language. The subject of the claim is apparently (i) patents on inventions resulting from institutionally sponsored research and (ii) software resulting from institutionally sponsored research and with an actual or projected market value in excess of $10,000 annually–not inventions and software with a market value over $10,000 annually that arises from institutionally sponsored research. The idea of “institutional sponsorship” is an interesting one. Sponsorship suggests an express relationship, different from “support” and different still from “use of institutional resources.” An institution sponsors with an express action, supports with a combination of express actions and acquiescence, and gets used without necessarily any awareness by university administrators of the fact. Thus, what is at issue in the use of “institutionally sponsored research” is whether university administrators have approved of the research, not simply that they are aware of it, or not. But such a reading, while reasonable, takes an effort to sustain–it is easier for an administrator to argue that “institutionally sponsored research” means any activity involving university funds, facilities, resources, employment, appointment, auspices, or encouragement. But the wording doesn’t support such an expansive claim.
The policy here uses the word “retain” rather than “be owned” or “become the property of.” “Retain” comes, apparently, from the wonderful misreading of the Bayh-Dole Act, which many university administrators came to believe granted them a federal right, if not mandate, to take title to inventions made with federal support merely by notifying the federal government that they “elected to retain title.” The implication in the usage is that title to patentable inventions vests outright in the university, and policy authorizes university officials to “retain” that title. Of course, title to inventions does not vest with the university, not as a result of employment nor use of funds nor use of facilities. Transfer of title requires a written assignment. Requiring an inventor to transfer title requires an enforceable contract to assign. Even then, priority of ownership of any resulting patent is subject to the federal requirements of federal patent law; namely, 35 USC 261, which addresses the situation of conflicting assignments.
The nice thing, then, about KU patent policy is that there is no express obligation to assign. The policy starts with ownership that KU has already obtained in some way, and authorizes the university to retain that ownership or assign it to an invention management organization. Implementing voluntary assignment practice, then, is as direct as acknowledging the limits of KU patent policy.
If the institution or the Organization decides that the invention does not warrant patenting, the inventor is free to patent it. In such case, however, the institution does not relinquish its right to publish any of the data obtained in the research project.
For an invention that has been reported to the university, the policy concerns itself with whether administrators make a decision to seek a patent. One can see that there’s a step missing–that of assignment. But for a voluntary assignment practice, that is not a problem. All the administrator has to do is decide that the invention “does not warrant patenting” by the university or the Organization. Clearly, the policy does not mean “does not warrant patenting” by anyone–say, because the invention is unpatentable, or because a patent would be adverse to the public interest, or that the university or Organization could not see a way to make enough money to make the patent worth the bother. The next sentence makes it clear that once the university decides something does not “warrant” patenting, the inventor can go file an application. So it’s only that the university decides not to seek a patent.
The only provision on the release of the (very implicit, unexpressed) university claim on inventions is that in deciding not to file a patent application, the university does not agree that research “data” (does that include the invention?) is a trade secret of the inventor. Thus, the waiver condition disclaims some aspects of trade secret and creates an expectation that data will be made public. If the invention is included in that data right, then the university’s right to publish creates a significant potential statutory bar to the inventor’s patent application.
All that’s needed to implement voluntary assignment in a KU-like setting is to add a check box to disclosure documents:
If you have not previously promised to assign this invention to KU and prefer not to assign the invention to KU, please check here: [ ]
When a disclosure comes in with the box checked, review the circumstances and if there are no prior arrangements that encumber the invention, decide that the invention does not warrant filing a patent application by the university. The check in the box is the basis. If the inventor does not want the university involved, and the university has no reason already in place to be involved, then that check in the box is a good reason not to insist on becoming involved. Of course, even if there is a prior promise to assign, if the university (or its Organization) declines to file a patent application, the invention can also be returned to the inventor(s). But return of inventions, once a bit soiled, is not the primary point of a voluntary assignment practice–the conditions on the initial assignment of ownership are what matter, and what transform invention management practice from one of accumulation to one of collaboration.
One could mess with an inventor’s psychological anchors by reversing the default:
If you would like KU or a KU-designated agent to manage your invention, please check here [ ]
Now the statement represents a request, an offer based on the published conditions on which KU takes on such work–including its statement of purpose and its royalty-sharing schedule. When a disclosure comes in, administrators must still review the disclosure for prior obligations–promises to assign, contractual obligations to get assignment, and the like–but one immediately has positive confirmation that someone wants KU’s involvement. That’s a good sign, one that’s suppressed by a compulsory assignment practice.