Best practices in university invention management, 5

More fun examples from the ipHandbook to demonstrate, ahem, best practices in university ownership of inventions.

The visiting scientist. Professor from another university visits and invents.

He is compensated through funds from Professor Z’s federal contract.

That is, if he is “compensated” with federal funds, then he has signed paperwork that adds him as a party to the funding agreement–either via a subcontract to his university or as a paid independent consultant. End of example. But, of course, not in administrative fantasy land, where nothing can be done properly. Here the complication is two non-compliant, incompetent, and overreaching universities! Plenty of room for complexity!

He reduces his idea to practice that summer, and the invention is clearly novel and patentable. But he did not sign the visiting scientist IAA from Professor Z’s university. His university is claiming ownership and produces a valid, unambiguous IAA, which covers all inventions made during his period of employment, regardless of where conceived or reduced to practice.

Two universities fight over what is neither’s. What assholes a mess! It’s pretty broad to claim ownership of inventions merely because they are made “during” employment–but not with university resources, not in university-sponsored research, not within assigned duties. Utterly hopeless. It’s worth considering such scenarios because they do happen. University patent administrators are often assholes unaware of the technical and ethical requirements involved in making claims on faculty inventions, and their legal advisors are fine with helping them to become better assholes limit the damage of their conflicting, complexity-creating policies. Complications follow, of course.

Again, the university is in a bit of trouble under its federal contract because this researcher did not sign an IAA.

Nonsense. No university I know of has been required to comply with the (f)(2) agreement requirement. There is no penalty in Bayh-Dole for a failure to comply, for that matter. And the IAA is entirely distinct from the (f)(2) written agreement. These are entirely different instruments. In fact, the (f)(2) agreement knocks out scope of any IAA, and federal funding does not require any IAA, and creates no special privilege for a contractor to acquire inventions under an IAA.

An IAA is entirely a private agreement between an employer and employee.

An (f)(2) agreement makes an inventor a party to a federal funding agreement, takes precedence over any IAA with conflicting claims, makes an inventor’s inventions subject inventions when they are invented, and places these inventions under an inventor’s patent rights clause, treating the inventor as a small business contractor.

The IAA, if one exists, anywhere it is not preempted by the (f)(2) agreement. But no one does the (f)(2) thing, so it is silly for lawyers to create a fuss about compliance.

No case law was discovered relevant to this situation, but most likely Professor Xcaliber’s university would own the invention, with Professor Z’s university getting a shop right. This might be a good case to negotiate for joint ownership by the universities.

Huh? Two non-compliant, incompetent, overreaching universities settle their malpractice by agreeing to jointly strip inventors of their inventions. That’s bravado. Most likely, Professor X owns his invention. That invention is not a subject invention–failure by the university to comply with (f)(2)–and neither university has a right to claim the invention within the scope of federally funded work–whether planned and committed or distracting or diminishing. At best, 37 CFR 401.9 controls–if the (f)(2) written agreement is understood to be an implied, “virtual” written agreement. The matter is between the federal agency and the inventor. The screwed up universities, by failing to comply, are out on their ears.

The inventor who does not play well with others. Of course–especially the inventor who does not tolerate well the insanity of university officials who misrepresent law and draft cleverly incompetent policies and forms. It’s never reasonable inventors dealing with bozo administrators. That could never happen.

Professor Z was not asked to sign the IAA on her first day of work but, instead, five years later during the licensing office’s clean-up project. She replied, “My ideas and thoughts are not for sale.”

Makes perfect sense. And it makes sense even with an IAA in place. Faculty have freedom of research and publication. And those freedoms are anchored deeper in university policy than any patent policy. Those freedoms take precedence. Thus, a faculty member has the authority, under express university policy, to decide when work is undertaken for the university and when not, even when university resources are used, even when work is within the scope of one’s professional expertise, even when an invention is made “during” one’s employment. That’s because–and this is the totally core point–unlike other employment, a university faculty member, in matters of research, decides when they are employed by the university, decides when to give up control of research to the university in exchange for some thing of value. That’s it. University attorneys generally do not give a rat’s ass about academic freedom–you might say they are tasked by administrators to find any way they can to undermine academic freedom. Termites, constantly gnawing at the foundations of each university.

Fearing that Professor Z may be upset, the department head and administration instruct the license office not to insist on the signing.

Har! Har! If only this were to happen. And it has nothing to do with Professor Z’s potential lack of poise. The problem has to do with the standing of a university “license office” to send out a demand for a form agreement that the license office has no authority to demand.

Without upper-level pressure on the matter of Professor Z’s job security, the licensing office can only argue that:

Merde sacre! We are talking tenure here. “Without the administration threatening to fire Professor Z in violation of policy on tenure . . . .”

  • The patent policy applies in any event, and Professor Z should sign the IAA merely to affirm.

Bullshit. If the patent policy applies, then the IAA is bureaucratic waste from the get-go. Get rid of the IAA and all the expense of trying to make everyone sign it, file all the paper records, and then get new signatures each time the patent policy gets changed. What nonsense.

A university patent policy on its own can state the conditions under which university officials are authorized to receive ownership of inventions, and may furthermore authorize those officials to enter into agreements with faculty and others to secure university ownership of inventions when circumstances indicate that it is equitable that the university rather than an inventor own a given invention. A patent policy is not a license to hunt inventions. It is a document made for the benefit of inventors, so that they know the limits of any university equitable claim. Or, perhaps we should say these are what a well formed, “best practice” university patent policy would do–and most such policies used to do. But times change, and B’s hire C’s, and shit happens. And lawyers come along and make it appear that law will clean up the shit, but end up even in hypotheticals with model shit policies and agreements, with “most likely” as the outcome. Clearly dealing with inventions in a university context is just too difficult for these people. It is beyond their abilities. But there’s good money in making chronic messes and then trying to clean them up.

  • Licensing of inventions would be blocked by the potential of future ownership disputes between Professor Z and the university.

But the public domain wouldn’t be if Professor Z in spite (and reasonably) simply publishes the invention and blows the patent rights. And if licensing is blocked, how does the university in creating the potential for dispute advance the public interest? Why is a university’s claim to own an invention so much more important than that invention becomes developed and used? It’s not. It’s just administrative bullshit–the recommended leverage is that university administrators threaten to shoot the invention–to act against the public interest in the name of, um, the public interest. How screwed up is that?

  • The university would take legal steps to pursue its ownership rights to inventions made by Professor Z falling within the patent policy.

That is, abuse and harass Professor Z with a nearly unlimited legal budget. This option has been used by university administrators. It’s cruel. But why not attack university professors, over inventions? Isn’t that what university research is about–fighting over who may profit from inventions, with the claim being that university bureaucrats are better at “extracting value” from inventions than screwball, uncooperative, precocious, eclectic, anti-social inventors? Don’t let the law review writing style put you to sleep over the consequences of the advice being handed out by the ipHandbook. Best practice: screw over those university inventors. Do it with form agreements, and if those don’t work then assert that policy applies anyway, and write that policy so you can claim most anything, and if inventors object, destroy their opportunities, threaten to fire them, and sue them silly. Yes, this is best practice invention management in a university context. Ready to attribute it to Bayh-Dole, the monster?

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