Best practices in university invention management, 3

We are working through ipHandbook’s discussion of best practices in university ownership of inventions. After a clear discussion of invention ownership–inventors own their inventions unless they have agreed to assign them or it is equitable to find that circumstances imply they agreed to assign (such as if they are hired to invent).

Here’s the fantasy university patent policy used in a series of examples created to illustrate the problems with university policy, invention assignment agreements, and those pesky things call circumstances (my emphasis):

It is the policy of the university that individuals, through their employment by university, or by participating in a sponsored research project, or using university-administered funds or facilities, thereby accept the principles of ownership of technology as stated in this policy. In furthering such undertaking, all participants will sign invention assignment agreements …

In typically sneaky fashion, this fantasy patent policy attempts to construct an implied contract between “individuals” and the university. If you use university resources, say, our policy asserts that you agree to our “principles of ownership.” The policy cannot even state directly the ownership claim and the basis for the claim–it just asserts “principles” apply. But as we will see, the fantasy policy does not even set out principles.

Why such subterfuge? Universities generally assert that their policies apply to everyone at the university, and university employment offers routinely make the offer conditioned on acceptance of university policy. Patent policy, however, routinely asserts that the policy is a condition of employment, as if the other parts of university policy aren’t. And there’s more. A university patent policy that requires assignment is not directed just to employment: it demands that employees give up ownership of personal property–and inventions are personal property. But no, a university patent policy typically also demands that non-employees give up ownership of personal property. And for faculty, it demands that they give up ownership of personal property even when the university does not act as their employer–such as any inventions “related” to their field of expertise–not even to their personal expertise. What could possibly be equitable about such a demand? Right! Nothing.

The only way such a policy looks even remotely proper is if it is represented as required by law–Bayh-Dole (utter nonsense), say, or state conflict of interest law (for public universities–more utter nonsense). “You have to give up ownership of your inventions or you break the law.” Once the policy is in place–this is the clever part–the rationale for the policy can be dropped. The policy now dangles free from any need for justification. It just is. “You have to give up ownership of your inventions or you violate policy.” And if you violate policy, university officials have the freedom, apparently, to threaten you, ruin your reputation, fire you, sue you.

So why should the patent policy condition its application only on employment, participation in sponsored research, or use of resources? And if the policy already cites employment, then what is added by participating in sponsored research? Ah, someone might not be employed who participates in sponsored research. But “participate” is broad–it doesn’t mean only that someone has been hired to conduct sponsored research (“employed,” “hired to invent”). One could have a chat at a conference about someone’s research project and that chat might be construed as “participating” in the research. Just saying.

The same analysis applies to use of university resources. Any number of people might use university facilities–a library, a cafeteria–and invent, and never be employees. How does a university policy buried in a handbook put such people on notice that the university claims their inventions. I could have a piece of paper in my file cabinet at home that asserts that I own all cars that park in my driveway. But who in their right mind would believe that parking in my driveway would cause the forfeiture of their car’s title. But it’s my policy! You get the idea. Just because a university patent policy doesn’t announce that it is the most stupid thing around doesn’t mean it isn’t the most stupid thing around.

“individuals” furthermore buries the special privileges of faculty appointees in an abstraction–one cannot reason from the abstraction to the special privileges of faculty, including academic freedom and tenure.

“through their employment” fails to establish what “through” means–is it merely the fact that the faculty-university relationship is labeled “employment” or does “through” apply only to those aspects of a faculty member’s work that the university has the right to assign and control? In the latter case, the conduct of research would not be within the scope of employment, even if the university approved of a faculty member’s research and gave the faculty member release time to conduct that research.

“by participating in a sponsored project” runs directly against Bayh-Dole’s standard patent rights clause, which forbids a prime contractor from having an interest in the inventions made by any subcontractor as consideration for the subcontract, and the (f)(2) written agreement requires the contractor to subcontract certain portions of the standard patent rights clause. For federally supported work, the university cannot make a claim to ownership based on a faculty member (or anyone else) participating in a federally sponsored project–to do so is to be in breach of its federal contract. Oh, wait, only unreasonable inventors can make a university breach its federal contract. Sucks to be an inventor at a university, doesn’t it?

using university-administered funds or facilities” has the same defect with regard to federal funding–the university agrees to provide the facilities necessary to perform federally supported work, and accepts compensation for doing so. In essence, the federal government leases faculty, staff, and facilities, and compensates the university for these and for direct expenses. The university has no equitable claim on inventions made in federal work, and is forbidden by the patent rights clause from asserting such a claim anyway. But no, it’s the inventor that’s unreasonable–especially since the university failed to follow its own policy and obtain an invention assignment agreement that would have violated its federal contract. Is this stuff complicated or what? And what is the source of that complication? It sure as heck is not the inventor.

The patent policy also stipulates that inventors/authors will own inventions/materials if they are (1) not developed in the course of or pursuant to a sponsored research or other agreement; (2) not created as a work-for-hire by operation of copyright law and not created pursuant to a written agreement with the university providing for a transfer of copyright or ownership to university; and (3) not developed with the significant use of funds or facilities administered by university.

More fantasy. But a policy that excludes claims does not mean that everything not excluded is claimed or can be claimed. A sponsored research agreement can require disposition of ownership other than owned by the university or inventors–the sponsor might own (as in clinical trials with sponsor-supplied protocol) or the sponsor might insist on public domain (as in the case of some open innovation software or hardware). University research policies routinely assert that the terms of a research contract take precedence over policy. So it’s nonsense rhetoric in a patent policy to set up exclusions to a broad claim and think that covers everything.

Consider, just by way of example to pound this home, the use of “significant”–“not developed with the significant use of funds or facilities . . . .”

Just before, our model university policy has stated that inventors will recognize the principles of the patent policy with regard to inventions made while the inventors are

using university-administered funds or facilities

The fact that someone uses university-administered facilities does not mean that a given invention was conceived using those facilities. An inventor might work in those facilities toward a particular result and entirely outside of that work realize a different way to achieve the result. The work in the facilities might be made irrelevant by the realization, but the realization–an invention, say–was not made in the facility or using the facility. The invention arises *while* the facilities are also being used. That’s it. To claim such an invention is to assert a non-compete claim, and that too runs against academic freedom.

But now look–the model patent policy asserts that the only use of facilities that matters for a university claim is a “significant” use. Well, define significant. Let’s say that a university is fully compensated for the use of facilities. How can the use then be “significant” with regard to the university? Furthermore, are we talking extensive use of space over time or are we talking about a key action in the line of development, such as a day’s use of a specialized instrument generally not otherwise available? The point is–significant is totally ambiguous here. If the term means anything a university official says is significant, then we are back to a secret requirement to agree to agree. It’s the totalitarian fantasy, of course, of the submissive and efficient worker. But it’s also nonsense by way of contracting in a reasonable world expecting equal treatment under the law.

If a faculty inventor has the privilege to interpret “significant,” then a reasonable interpretation might be “resources provided above those otherwise generally made available to faculty, with a special written agreement that in consideration of these special resources, any invention will come within the university’s right to claim ownership.” No special written agreement–it could not possibly have been a significant use of facilities because no university official cared at the time–and can’t suddenly decide to care later, when an invention happens to have been made.

In still other words–the fact that an invention is made cannot possibly be the trigger for a determination of whether the use of a facility is significant. Imagine a faculty member using a university theater and equipment to have students make a short film. The short film becomes hugely popular and the students and faculty member (as co-authors) license the film into distribution, where it makes a shitload of money, at least by student and faculty standards. No university work for hire. Not a “significant” use of the university’s facilities–no university out of pocket expenses, no special requirements on the use of the facility. But if there happened to also be an invention–the faculty member and a student design a new lens to achieve a special effect–then does the use somehow become “significant”? No, it cannot be.

It’s furthermore odd that copyright shows up in a patent policy. That’s typical of the dumbest sort of university administrators–but of course being dumb cannot possibly imply being unreasonable, can it?

From there the examples fantasy runs down the rabbit hole of a poor selection of case law. Shaw, for instance, isn’t there. Mostly cases that don’t involve faculty, don’t bring in university policy on academic freedom, don’t properly deal with Bayh-Dole (post Stanford v Roche). And for all that–just look at the complications. Pennsylvania law is unclear, etc. All of this arises because a university attempts to control faculty inventions by means of an invention assignment contract tied to a policy statement. Mind-numbing, all in the name of public benefit.

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2 Responses to Best practices in university invention management, 3

  1. Lori Walker says:

    I have had this discussion with friends and colleagues. This This along with NCAA athletes inability to participate in team gear profits seems like thievery. Is the institution in theory
    “patenting” a players name to make millions on team gear without recoprical compensation?

    • Gerald Barnett says:

      Sort of, but in a roundabout way. The universities (and NCAA) co-opt players’ publicity rights, which the universities may then exploit for income. Money from team gear sales goes back into the sports program, so perhaps instead of exploitation we could call it compulsory generosity. I doubt any university makes all that much from sale of stuff with players’ names on it. School emblematic wear–without any names–surely must account for most income. And all that surely pales in comparison with television contracts. In a way, the television contracts exploit players’ publicity rights as well, but universities don’t share a “royalty” with the players for doing so. Perhaps they should think in terms of “royalties” rather than the current movement to “pay” players for playing, as if they were employed to do so.

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