Now let’s consider the procedures by which an invention made by an employee (or non-employee, as the case may be) of the University of Missouri is to be reported. The university’s patent policy has changed over time. The original idea (from 1956) is that inventors report to the Patent Committee, routing the invention report through supervisor, head of department, and dean. “Obviously unpatentable” inventions are excluded from the reporting requirement. In the original patent policy, reports are to be made “as promptly as possible” but the policy goes on to recommend that inventors wait until they have reduced an invention to practice before reporting it. This recommendation is removed from later versions of the policy, changing the meaning of “as possible” without changing the actual wording–a delightful strategy administrators love to use. “We didn’t change the policy, we only clarified the policy.”
In current Missouri patent policy, invention reports are controlled by the Patent Committee (100.020.D.2.a.(1)):
The Patent Committee may prescribe the form and manner of execution of the Invention disclosure report, and such Invention reports shall be treated as restricted reports of the University.
The invention report then apparently goes to the Patent Administrator (F.2.b), but first the invention report is, apparently, routed to the “supervisor or department head”:
The supervisor or department head shall ascertain that the Invention or Plant Variety report and other papers are prepared in conformity with these regulations;
It is not clear what the “other papers” are, since the requirement is that all inventions must be reported. No doubt administrators must have had something in mind, but like good administrative drafters (meaning, crappy), the did not bother to mention these “other papers”–I think I know what these “other papers” are, but let’s leave that for now.
shall check its accuracy and completeness, especially with respect to the circumstances in which the Invention or Plant Variety was developed;
One would expect that circumstances would matter, regardless of whether an inventor had formed an opinion on the applicability of the university’s ownership claim. If an inventor has formed no opinion on ownership, then the inventor has no obligation to provide the additional information requested by policy–circumstances, official duties, and interest in dealing with the university. But the Patent Committee will need the circumstances, at least, so that the committee can make a determination with regard to the university’s ownership claim. Here, it is the supervisor’s or department head’s responsibility to ascertain the circumstances. Of course, if an invention was made entirely outside the workplace, the supervisor would have no particular information other than “it sure wasn’t made here.” That’s the problem with demanding evidence when all one needs is the absence of evidence. That is, if there’s no documentary record that an employee was assigned to an inquiry and had job duties that included research, then that *is* the evidence that the university has no ownership claim under condition (1). If there’s no documentary record that university resources (from the list in condition (2)) were used, let alone “in a substantial degree,” then again that absence *is* the evidence. But this is conveniently lost on most university administrators, despite our idealistic hopes.
and shall forward whatever comments he/she may deem to be necessary or desirable to the Patent Administrator.
Thus, the invention report reaches the Patent Administrator. Oddly, the supervisor or department head is also asked to comment on the value of the invention and foreign rights. So strange!
The supervisor or department head shall add to the file whatever information he/she may have concerning the governmental and commercial value of the Invention or Plant Variety, and the foreign countries in which it is likely that the Invention or Plant Variety would be the most useful and would have the greatest commercial value.
Finally, if the inventor does have the opinion that the university has no ownership interest by policy in an invention, the supervisor or department head is to provide a statement of conclusions on the matter (100.020.D.5.b):
If the Employee-inventor specifically requests that the University determine her/his rights in the Invention or Plant Variety, the head of the department shall state her/his conclusions with respect to such rights.
The Patent Administrator’s duties are set out by the patent policy (100.020.F.2). The Patent Administrator is to assist the faculty identifying “potentially patentable and commercially viable findings.” This is an odd restriction, since the obligation to report inventions has nothing to do with whether the inventions are “commercially viable.” And the use of “findings” is also strange–why not use “invention” here? The Patent Administrator helps inventors in filing invention reports, reviews these reports, and makes recommendations to the President with regard to inventions, except if an inventor has issues (100.020.F.2.c.)
The Patent Administrator shall refer to the Patent Committee all matters concerning the Employee-inventor(s) participation in the financial return from the patents, any conflicting claims to protectable findings, Employee-inventor claims to ownership to patent and Plant Variety rights and such other matters as he/she deems necessary to protect the interests or rights of the Employee-inventor and the University.
In other words, the Patent Administrator is a liaison with inventors and any issues of disagreement are referred to the Patent Committee. The Patent Administrator remains neutral, as a matter of policy, and must work to “protect the interests or rights” of both inventors and the university. The Patent Administrator, by policy, cannot choose sides. Again, that’s probably hopeless idealism, but that’s how the policy reads. Policy schmolicy, I know. But let’s keep at this hole–there’s sure to be a bone down here worth the effort, I promise.
Once a disclosure gets to the Patent Committee (because there’s an issue with regard to ownership), policy provides for additional procedures, culminating in a recommendation to the university president:
If an Employee-inventor shall claim an Invention or Plant Variety as her/his own, the Patent Administrator shall refer such claims to the Patent Committee.
Just as policy requires (100.020.F.2.c).
The Patent Committee shall afford the Employee-inventor the opportunity to appear before the committee to present such evidence relating thereto as he/she may have or the committee may desire and the committee may make an independent investigation of said claim.
Here’s the original wording of the 1956 patent policy:
If any employee-inventor shall claim an invention as his own the Patent Committee shall afford him the right to appear personally before the committee and present such evidence relating thereto as he may have, and the Patent Committee shall make independent investigation upon said claim.
The inventor in the 1956 policy does not present the evidence as part of an extended invention report, nor does a supervisor or department head have a specific obligation to comment on the inventor’s evidence or interest before the report reaches the Patent Committee. The really big change, however, is the shift from “shall” to “may”–under the original patent policy, the Patent Committee was obligated to make an independent investigation. Under current policy, the Patent Committee has no such obligation. What does this mean? One might think it means that the Patent Committee could accept the inventor’s evidence at face value and agree that the invention lies outside the university’s policy claims. Only if the Patent Committee suspects there’s more evidence might they make an independent investigation.
Instead, in current policy the inventor is obligated to present whatever evidence that the “committee may desire.” While the wording is pleasantly administrative, the idea that a committee might extract whatever evidence it desires from a petitioner sounds strangely like an inquisitorial power. Strangeness, at any rate. All this merely belabors the idea that the Patent Committee will review the circumstances reported for an invention and determine whether those circumstances meet either condition (1) or (2), and make a recommendation to the president with regard to the university’s ownership claim, and if there’s no claim to be had, then whatever other arrangements the inventor might agree to–the patenting costs for licensing deal, or a better share of royalties from licensing (if ever), and the like.
Based on these findings, the committee shall make appropriate recommendations in writing to the President of the University for appropriate action. The inventor shall be afforded a copy of the findings and recommendations of the Patent Committee and shall have an opportunity to review the findings of the committee by filing a written argument with the President.
Even after the Patent Committee makes its recommendation, the inventor has a further opportunity to comment (“filing a written argument”) before the president of the university decides.
The president of the university, then, may decide to waive, assign, or license the invention (100.020.D.1.f):
The patent rights and/or Certificate of Plant Variety Protection of the University provided under these regulations may be waived, assigned or licensed by the President of the University if the President is satisfied that the patent and Plant Variety provision will reasonably and substantially discharge the obligations of the University of Missouri consistent with the University’s interest.
The president is then given a long illustrative list (“including, but not limited to”) of “relevant factors” that the president “shall consider” in making a decision on any given invention. The overall point, however, is that any decision is made such that “the patent and Plant Variety provision will reasonably and substantially discharge the obligations of the University of Missouri consistent with the University’s interest.” This, my friends, is administrative bombastic style of the most wonderful execution. Let the words flow over you for their lack of meaning.
What is the “patent provision” of which the words speak? Is that CCR 100.020? Why should the president be concerned the the policy will discharge the obligations of the university? The policy states the obligations of the university. How could it not also discharge those obligations? Or is the point here that the president could ignore the policy in making a decision if the president? Or is this just mumble-speak for the idea that the president cannot make a decision that would cause the university to breach contractual or legal obligations? What is the distinction between “reasonable” and “substantial”? Could a decision “substantially” discharge obligations and not be “reasonable”? Be “reasonable” and yet not “substantially” discharge obligations? And what does it mean to discharge obligations consistent with the University’s interest? What happens to obligations that are not consistent with the University’s interest? These are still obligations, after all. What is a poor president to do about those obligations?
Is it not the president’s role to decide the university’s interest? It’s administrative bombast style, meaning absolutely nothing–other than the president decides whether to waive, assign, or license patent rights that the university’s policy “provides” for the university. That is, if the university’s policy gives the university an ownership claim in patentable inventions, the president decides whether the university should make the claim or not (“waive”), and if the claim is made, whether to assign the rights (such as to a patent management organization, as in the 1956 policy) or license the rights. There does not appear to be an option to sit on the rights unlicensed until a patent expires–however, that does appear to be the primary outcome of most university patent operations. The intent is to license, but in actual practice, most inventions are not licensed–and so the action of a university in obtaining patents results in the wholesale exclusion of all others in practicing inventions for the life of the patents. This, however, according to advocates of Bayh-Dole, is the very best way to encourage innovation.