Best practices in university invention management, 1

Things get complicated that don’t have to be complicated when it comes to university ownership of inventions. Administrators make things complicated, then argue for lots of money to pay for the talent to navigate those complications, and then more money for lawyers to try to make the complications stand up. In this, folks offer advice about “best practices” to navigate the ugly situation administrators have created for themselves. It’s all a crock, really.

Take a look, for instance, at this entry by B. Jean Weidemier in the “ipHandbook of Best Practices.” The article dates in its revised ipHandbook form from 2007–before Stanford v Roche (2011). So we have to cut it at least a bit of slack for any misrepresentation of Bayh-Dole–but the article does so much more. In fact, one might see in this article the reasoning why so many university patent administrators misunderstand Bayh-Dole and went over the cliff of Stanford v Roche.

The ipHandbook of Best Practices asserts”best practices.” By doing so its title makes a rhetorical claim that we will consider from time to time.  Weidemier’s article in the ipHandbook is titled “Ownership of University Inventions: Practical Considerations.” The implication is that this article also recites best practices. Let’s have a look.

We might note the fundamental ambiguity of what constitutes a “university” invention. Is it an invention that a university claims, as in university’s invention? Or is just an invention made at a university? Or made by someone who is affiliated with a university? The implication of the article will be that all university inventions are university inventions, or could be if administrators used best practices to “protect” their university.

There are other ways of looking at the situation. Consider–what is the purpose of a best practice regarding invention ownership? Is it how to wrest an invention from its inventors? Or is best practice something else–especially for a university–such as how to help an inventor position an invention to provide a benefit to others? And if so, might not that help include *not asserting an ownership position* in an invention. Yes, of course it might. Hold that thought.

The article explores in reasonable fashion the various issues involved in parsing an ownership claim to an invention, followed by a set of “examples” in which various university inventors resist claims of institutional ownership only to be beaten down by policy, agreements, and lawyering.

The core “best practice” advice is this:

Therefore, in addition to implementing clearly delineated policies, it is critically important for a university to absolutely require all employees and visitors to sign invention assignment agreements (IAAs) on their date of arrival. It is unwise to rely on policy statements to determine whether or not a university employee owns his or her invention: universities should always obtain signed (express) agreements, and both the employee and the technology transfer office should retain copies.

Yes, it is unwise to rely on university patent policy statements. Most university patent policies are horribly drafted–contradictory, ambiguous, clueless with regard to law, overreaching, and obtuse (using definitions such as “invention” to mean “invention and non-invention” and “employee” to mean “employee and non-employee”–just try to navigate that sort of usage.)

This best practice advice depends on a university patent policy that asserts an institutional claim to ownership of inventions. Let’s look at Weidemier’s reasonable workup of the issues with such a claim. The starting point:

Who owns an idea? A prototype? A patent? To a free-thinking university researcher, assigning inventions to an employer could seem illogical. So what can a university administrator do to minimize friction, between an employer and an employee, related to patent ownership? When is the law black and white? When gray?

Immediately the situation is cast as one of an employer and employee relationship. We have already blown past the commitment to academic freedom–including freedom of research and freedom of publication–that is a cornerstone of almost all research university policy statements. Instead, the “university researcher” is called “free-thinking” rather than a faculty member who is assured of the freedom to choose what to study and how and with whom and with what support and with what outcomes published as the faculty member may choose. The reality is that universities as a general practice give up any claim to have a right to assign faculty to conduct research. Faculty, indeed, request to be released from university duties in order to conduct extramurally funded research. While research activity may figure in a faculty member’s promotion and tenure review, the university has no right to assign any faculty member to any given research project. So “free-thinking researcher” here is already well down a pathway to repudiate university policy on academic freedom in favor of a university policy claiming ownership of patents.

This is fundamental. A university cannot claim ownership of faculty inventions without repudiating academic freedom to publish. A patent is a publication. Publication of inventions is a foundation of the patent system. If a university’s patent policy requires faculty inventors to publish in the patent literature, putting their name on patent applications drafted by attorneys working under university direction, they are being forced to publish, and forced to publish in a forum not of their choosing, under threat of discipline for not cooperating.

We may also add that the freedoms of research and publication are not mere idealism. They frame the “free play of free intellects” in the search for discovery of knowledge. In a world in which institutional interests dominate research–corporate, government, foundation–and where unaffiliated researchers are viewed as loonies and kooks (unless they are garage-based entrepreneurs)–the idea of providing institutional scale resources to free-thinking researchers is inspired. But doing so comes with a critical concern–that the institution does not come to dominate the researcher, dictating what must be studied, and how, and with what outcomes.

It’s seductive to imagine that research will be so much the better if it is managed by administrators, who can organize research and deal with the publication of results, the protection and monetizing of results–to generate more money for research, of course. But it’s a crock, really. This is one of those cases where imagining something turns out in practice not to work. It’s like imagining that one of those houses in an architectural drawing is going to look like that for the next fifty years. It just won’t. And if one tries to make it stay looking like that, the living conditions become intolerable. So the idea of administrative management of research–discovery research, research to expand the frontiers of science–is a conceptual illusion, rhetorical talking points, but unproductive in practice and smelling of elderberries and totalitarianism.

Weidemeier then lays out the issues clearly and concisely:

The starting point of the law is that individuals own their inventions, except: (1) where there is an express agreement providing for assignment of inventions to an employer; and (2) where an implied agreement to assign is found because the employee:

(a) was hired or assigned to invent

(b) was hired or assigned to solve a specific problem

(c) served the employer in a fiduciary (president of a commercial company, for example)

Where no written agreement exists and no implied contract to assign is found, the inventor will own the invention, subject to the employer’s “shop right” to use the invention if the invention was made with the employer’s resources or facilities.

If we were talking only employers and employees, we would be done. But we aren’t. We are talking appointed faculty at universities, who for their research are not subject to a master-servant relationship, are not the agents of their employer, cannot be assigned to any given research project. It’s weird even to call faculty “employees.” That can only be a term of convenience–but not one from which one can reason when it comes to their research, their creative work, their scholarship. Faculty may indeed be “hired to invent,” but only if they accept a specific work assignment and agree to give up their academic freedom. “Hired to invent” does not taken in the broader idea of “hired to do research that discovers” for the benefit of science, or society–not to advance the business interests of a university (or whomever a university might assign an invention to).

We are also talking students. Most companies don’t have personnel running about who have paid for the privilege of gaining access to whatever the company is doing, learning as much as they can, and then skipping out with a big fat endorsement about how well they have done. Students, furthermore, are generally not hired to invent for the university, even when the university manages money that pays for research or teaching positions for students, and even when the students organize a union to deal with a university’s problems of handling benefits and working conditions.

And we are also talking university staff employees, who may work at the direction of the university, but who also may be directed to work at the direction of faculty or students, providing programming help or perhaps working in a machine shop to fabricate parts or helping with layout and design. These staff employees, while receiving their pay from through the university, work as it were on behalf of faculty and students. In a copyright sense, they are editors or production assistants. To what extent are they working for the university when they invent as part of a faculty-led or student-led project? Complicated–but only if one has started with the premise that a university must own inventions–that somehow it is only right that a university insist on owning inventions.

Of course, university administrators may assert that the research is for the benefit of the university. The indirect costs from extramural research pay administrative salaries and fund facilities maintenance. Licensing income creates an additional 1% or 2% income on top of extramural funds. But even if it were so that the university expects to benefit from inventions, it’s still not the case that faculty are hired to invent for the university. Faculty would have to agree they didn’t really have the freedom to publish. If a university controls inventions, then it controls the use of the patent system, and it therefore controls publication–and for central findings, not merely peripheral ones.

Even with Weidenmeier’s perfectly clear account of the situation, there are two elements left out. First, a university may own an invention because the inventor chooses to assign the invention to the university, and the university agrees to accept assignment. With voluntary, negotiated assignment, there is no need to look further to worry contracts that force an inventor to assign and set limits to what a university “employer” might claim.

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