Best practices in university invention management, 4

We are working through examples from the ipHandbook‘s advice on best practices for university ownership of inventions. All the examples feature a professor who finds ways to stick it to the university and wise words about how university officials could have stuck it to the professor if only they had been vigilant and pro-active. Yes, best practice is to stick before getting stuck. Ownership of inventions is assumed to be the goal. Why on earth would ownership be the goal, and not something more interesting, like public benefit, or widespread use of the invention, or, heh, making money?

Saturday afternoon conception at home. This one sounds like fun!

Ownership, in this case, would depend on the exact wording of the IAA. As a matter of policy, each university must decide what is fair and what is beyond the scope of the IAA.

Ah, snap. Not what I thought.

The analysis here stumbles. If the university must decide, then the inventor assignment agreement cannot be a contract. It is more like a statement of inventor’s submission to whatever the university decides. If the “principles of ownership” set out in the patent policy are so unclear that magical wording is needed in an IAA, then all hope of clarity is lost, and the contract fails for lack of specificity. “We made it certain that you agreed to something–we just haven’t decided what.” Oh, geez. This is best practice?

A faculty member invents at home, rolling in the hay with, er, an idea. If only magically precise language in an invention assignment contract can determine the outcome, the policy has already failed. If an invention is a deliverable under a sponsored research contract, then it is the terms of that contract that control, not some university policy statement. If the invention is not a deliverable, then what is the university’s basis for a claim? Nothing equitable, that’s for sure.

But in fantasy land, university inventors are fools:

As a practical matter, most likely Professor Z will return to work at the university on Monday morning, will revamp her work schedule and list of priorities toward the goal of making Saturday’s idea into a working prototype, and will assign three graduate students to start implementing the idea. Professor Z is now clearly using university-administered funds and facilities to develop the invention, and the university would own the patent rights, under the hypothetical IAA in Box 1.

But furthermore, even if a faculty inventor does “assign” graduate students to working on a prototype, there’s nothing presented that says that the graduate students are also employed by the university and that in their employment they are hired to invent or to develop inventions for the university. If the graduate students are working on the invention, they are not inventing, but perhaps reducing the invention to practice. Professor Z is not using any university facilities–the graduate students are doing the work, and there’s no indication that they are making significant use of university facilities. They could do the development work as part of a course. Nothing would appear to require Professor Z to give up ownership of the invention with these facts.

The eclectic inventor. Inventors are all weird in university invention management. It is not that inventors are weird. It is that university policy makes inventors appear weird.

Professor Z, instead of inventing a solar light bulb, as a diversion from her solar projects instead develops a remarkable new fertilizer for tulip bulbs, after borrowing a colleague’s lab in the botany department and two research assistants on Tuesday afternoons. A frantic search of the records is futile; Professor Z never signed the IAA.

After the usual references to court cases far removed from faculty privileges under typical university policies, we arrive at this:

These court decisions are all good news for Professor Z. She would probably own her tulip bulb invention; the university would have a royalty-free, nonassignable right to practice it.

“probably” is rich. Professor Z clearly owns her invention. That’s patent law. The issue is not ownership. The issue is whether Professor Z has promised to assign the invention to the university or whether absent such a promise the university has an equitable right to claim the invention. There’s no such promise to assign. So it’s a matter of whether the university has an equitable claim. Hardly. Now, the punch line:

The controversy could have been avoided, had the personnel clerk been able to handle Professor Z’s paperwork.

What controversy? Where’s the controversy? If there is a controversy, it is one manufactured by university officials trying to reach to things they have no business in. One might say, abuse of authority. Besides, really cleverly awful university patent policies stipulate that the policy applies even if not patent agreement has been signed.

If Professor Z had duly executed the hypothetical IAA, the university would have owned the tulip bulb invention, because the significant use of university-administered funds and facilities was covered in the standard agreement.

Not really. The university would have had whatever standing to claim ownership as provided by the invention assignment agreement interpreted against the circumstances. Using a lab for a few days with the help of graduate students–to do what? test the fertilizer on tulip bulbs?–is hardly significant to either the conception or reduction to practice of the invention. A test might demonstrate reduction to practice, but the university’s provision of facilities (again, no out of pocket expenses, not sufficiently important for anyone at the university to require a written agreement for access) is not significant, nor is there any indication of a use of funds. Were the graduate students employed? Ah, it’s all fantasy. Upshot: the only controversy here is what university officials make–regardless of whether the paperwork has been signed.

While we are dabbling in fantasy, consider this variant. A tulip farmer shows up at the botany lab with a new fertilizer and graduate students offer to test it. Every Tuesday, the farmer shows up to have a look at the tulip growth with the fertilizer against control groups. After ten weeks, everyone goes, “Oh, wow–looky at that!” Does the university have an equitable claim to own the invention? Screw off. The university provides a subvention–assistance to an individual as a public service. Agricultural extension services do such things all the time. The graduate students could do the same tests at the farmer’s site, west of Mount Vernon, Washington, say. Same result–no promise to assign the invention to the university, no equitable claim to title.

The precocious undergrad. Only odd people cause problems. Anyone who invents is odd. Undergraduate asks crucial question for faculty member’s research and demonstrates an inventive effect. Faculty member then allows undergraduate to use her university lab to develop the invention.

When Professor Z filed an invention disclosure with the university licensing office citing the federal research support and naming herself and Jane as co-inventors, problems arose. Jane refused to assign her invention to the university and denied that Professor Z was a co-inventor. Professor Z ultimately conceded this issue after the university’s patent counsel defined inventorship for her, and all agreed that Jane was sole inventor.

But Jane the undergraduate did not receive any federal support and the invention is not the university’s–so not a subject invention when invented. Whether both were inventors is a question of fact and law, not mutual agreement. Moreover, inventorship depends on who has contributed to at least one claim of the claimed invention–the invention as set forth and claimed in a patent application. Much depends, then, on how a patent application is drafted–one is not required to state all the claims that might be made for an invention. And Jane isn’t working for the university, then Jane also is not the university’s patent counsel client. For that matter, neither is Professor Z.

Full disclosure. My father experienced pretty much this fact situation as a graduate student. The professor was a co-inventor–whatever. Invention was assigned to Research Corporation. Made a story in the New York Times. Sort of cool. Easier days.

In this case, as in University Patents, there is no signed IAA, and the university is relying solely on its patent policy. Under the hypothetical policy described in Example 2, the university would own Jane’s invention because of her use of significant funds and facilities, regardless of the lack of a signed IAA.

Total nonsense. University officials might make a demand to own, but we are back to whether they have any standing to make that demand. There’s no promise to assign, and federal funding does not require assignment (even with the NIST’s hairball new assignment clause for inventions a contractor already owns). We are back to an ownership demand based on equitable title. Hardly. But honestly–why would university officials demand ownership of such an invention? What bees do they have up their arses? Whatever their policy demand–and however significant might be interpreted–we are back to the reality that they have no equitable claim and whatever they do amounts to legal bullying with the idea that the student will cave in. Think of it this way: university officials abuse their authority in an attempt to shake down a student for her right to apply for a patent. We might argue that university officials have no authority under policy to state a demand that the university own personal property (such as inventions) unless there a clear, unambiguous promise by the inventor to assign that property to the university. A policy assertion is not sufficient to give such standing.

In a court battle, had Jane the financial resources to fight it, the university would have had an uphill battle to prevail.

And university attorneys play all sorts of evil tricks to snooker judges. Here, the commentary all but admits that the university has no equitable title, but may have the financial resources to beat the living daylights (legally speaking) out of the student, and may that be a lesson to you all, especially folks at Yale and Missouri.

If Jane had signed the IAA, the result would be different; most likely the university would own the invention because of her significant use of funds and facilities.

[expletive]. Even in model IAA’s and fantasy hypotheticals, folks cannot even state a definite outcome: “most likely”–what utter nonsense! We are talking about how university officials behave based on ghastly drafting of invention assignment agreements in academic rather than corporate contexts. Invention assignment agreements are good for company dealings. They are crap for academic dealings. Proposing using IAAs in university settings–other than for dedicated institutional research operations, which are essentially corporate labs–is like bringing a dead rat to a picnic. It can be done. It will have an effect. And everyone will hate you for it, even good people. Even taxidermists.

The better-late-than-never agreement. 

Professor Z did not sign the IAA on her first day of work. She invented the solar light bulb five years later, and coincidentally two weeks after the discovery received an IAA form, as part of a university licensing office clean-up project, and she signed it.

“The courts are divided. . . . ” But it’s not a matter of courts–it is a matter of the meeting of minds in a contract tied to a university patent policy, and who has standing to offer a controlling interpretation of that agreement. If Professor Z understood the university’s IAA form to apply to her invention, she would have no problem with a promise to assign that invention, and if she reasonably did not have a reason to think that the IAA applied–such as that she reasonably did not judge the use of facilities to be “significant”–then the university has no business making a huge fuss out of it. Or is it in the job descriptions of university patent folks to make everyone bitter about inventing? Yes, that must be it.

The university can take some steps to protect itself from situations where the IAA is not signed on the first day of employment, or for inventions not reported by employees who leave the university.

This is just bizarre. What is it that the university is protecting itself from? What is the university victimized by? Inventors owning their inventions? (that’s federal law). Failing to draft clear policy? (that’s a given for universities–what utter nincompoops). Failing to overreach in drafting an IAA that ties down their stupid-ass overreaching and ambiguous policy to a contract that then gets interpreted against the drafting party or falls apart as unenforceable as an agreement to agree? (point being–look at the source of the complexity. It is not the inventor or the law–it is the university pigpen official who brings the complexity with her malpractice and incompetence.)

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