Best practices in university invention management, 7

Let’s have a look, then, at the invention assignment agreement that ipHandbook recommends that universities should use with their faculty. We start with the “consideration”:

In consideration of the sum of One Dollar ($1.00) and:

  • my past, present, and/or future employment at UNIVERSITY; and/or

Skip the one dollar part for now. The big idea here is that the assignment agreement appears to assert that a faculty member’s employment depends on assigning inventions. That is–the university repudiates tenure. Check the university’s policies on tenure (we can’t of course, for the university of this “model” agreement–it’s a fantasy). You will find that refusal to assign inventions is not a condition for termination.

But the worser thing is the “and/or”–the assignment agreement cannot even state whether future employment is or is not a “consideration” for the assignment. That is, if this is a contract and the inventor assigns, then the university’s offer of “future employment” has been accepted. Well, that’s a big blank check. But wait–the university has hedged that offer with “and/or,” so perhaps nothing has been offered here at all.

And there’s another “and/or” at the end, so we have more hedging to come:

  • my past, present, and/or future participation in research at UNIVERSITY; and/or

The university repudiates freedom of research. The research “participation” is not restricted to extramurally sponsored research (which would be a problem anyway)–any thing that’s “participation” and anything that’s “research”–one may participate in research by having discussions with people doing research. The point–neither this “consideration” nor the preceding “consideration” can possibly be the consideration that the university can offer.

A university is not a corporate employer; faculty have freedom of research and publication; a university does not have a master-servant relationship with faculty with regard to their research or any scholarship; a university may employ faculty, but the university is not their employer for matters of their research unless they expressly agree to give up control of research to the university. Reason from the circumstances, not from the names things are given.

We might go so far as to argue that an attorney presenting such a document to a university for its use is malpracticing–utterly failing to recognize the existing policy and contractual commitments that exist between a university and its faculty, and recommending that a university breach those commitments because, well, because it just might be able to get away with it.

  • opportunities that have been made or will be made available to me to make significant use of UNIVERSITY-administered funds or facilities; and/or

Even this condition is weaseled. If the inventor has made use of “significant” university funds or facilities, then in any reasonable policy (and this was the case for many years for inventions and still is in many universities for copyrights) there will be an agreement identifying the resources, agreeing that these resources are significant and not otherwise available, and that in exchange, those benefiting from access to the resources agree to assign any inventions made or developed with the resources to the university. The IAA then would follow from that agreement, and there would be no need to invoke any other “consideration” for the promise to assign.

We will pause here to ignore the argument raised at public universities that the university cannot have business dealings with its employees. That the university cannot act as an agent for the disposition of inventions assigned to it, nor are faculty in any capacity agents of the university. There’s a bunch of crap that flows around this argument with varying degrees of subtlety, but ignore it all. There’s another hole to chase down, but nothing comes of it. The logic gives out and we are left with merely an assertion of right–with nothing to support it but the willingness to abuse one’s authority (which is a kind of logic, isn’t it?). This is a typical administrative rhetorical form–produce an argument that fails but is sufficiently tangled in technical details that people give up before they recognize it’s bullshit. The purpose of the argument is not to persuade but to exhaust, to preclude action, to create a doubt of action. In this form of rhetoric, one does not have to be right–one merely has to avoid being challenged.

And one more “and/or”:

  • opportunities to share in royalties and other inventors’/authors’ rights outlined in the “Guide to the Ownership, Distribution and Commercial Development of UNIVERSITY Technology,”

This one is interesting. For federal funding, the patent rights clause for nonprofits is clear–the university must share royalties with inventors for the inventions made with federal support that the university has acquired. There is nothing in the patent rights clause that premises that sharing on an invention assignment agreement. The university acquires an invention in some fashion. For $1 and/or perhaps whatever else. Doesn’t matter. Under the patent rights clause, the university must also share royalties. Senator Bayh–who was wrong about almost everything essential to Bayh-Dole–argued that inventors had a right to negotiate royalties, which would imply that inventors had a right to withhold their assignment if a university’s offer was not acceptable, which would imply that inventors had no obligation under the patent rights clause to assign, which would further mean that the patent rights clause conferred a protection on inventors so that they were not obliged to assign inventions to nonprofits and thus were not obliged by the patent system (of which Bayh-Dole is a part) to use the patent system. Gosh, Senator Bayh could have been right about something had he only recognized how Bayh-Dole actually works. But no.

More generally, if an inventor has a “right” to “share in royalties” as consideration for assignment of an invention, then we might also expect that the university has a positive obligation to obtain those royalties. The reality of course is that universities fail to license–even at top universities, only 20% of inventions are licensed at all, and that includes the royalty-free licenses made up front in sponsored research agreements and research consortia. Many inventions of the few that are licensed don’t generate royalties–just repayment of patenting costs and a signing fee. Nothing really to share, especially for those university royalty schedules that deduct expenses before sharing anything.

Look then at the weaselity of the assignment agreement. The consideration is not the royalties; it is merely the “opportunities to share in royalties.” That is, the consideration is an opportunity, not anything real. “We take your car, and if we ever lease the car to someone else for more than it costs us to lease it, we will share that income with you, but we don’t have to lease it, ever.” Now that’s a sweet deal! Where do I sign up!

There’s also the enigmatic opportunity to share in “the other inventors’/authors’ rights.” Again, how strange, that the university, in assuring faculty of their freedom of research and publication, might make such assurances contingent on faculty giving up those rights precisely in matters where their reliance on those rights might be the greatest. A patent is a publication that carries the names of the inventors as applicants–as authors. If a faculty member must assign an invention, that faculty member has given up the freedom of publication. The faculty member must cede the decision of how to publish (in the patent literature) and what to publish (the university controls the drafting of the patent application). If a faculty member is required to sign this IAA at employment, then the best practice advice offered here is that the university should repudiate its assurance of freedom of research and publication right up front and have each faculty member agree that the faculty handbook is just an idealistic work of fluffery and that they and the university agree to ignore it for anything remotely inventive (given that “invention” is routinely defined in university patent policies to include “all inventions and all non-inventions”).

Apparently, then, the “other inventors’ rights” in the university patent policy are that the inventors have no rights unless they give up ownership of their inventions. And once they give up ownership of their inventions, beyond the $1, everything else is “and/or” with no obligation by the university to perform in any way. That is, there are no definite obligations–the university may or may not continue employment, may or may not allow the faculty member to participate in research, the university may or may not seek to license the invention or if the invention is licensed may or may not choose to enforce the license agreement and in any case may or may not ever have royalties to share. We might say, the IAA offers no consideration beyond $1, and even there, according to the claim that the patent policy might apply anyway, regardless of whether an IAA is signed, the $1 is merely for show. There is, in effect, no consideration for this assignment. There’s no contract. It’s crap. It’s clever, but it’s crap. Er, “best practice.” Make the connection, then, between best practices and crap.

We might observe that the repeated “and/or” construction is not one that generalizes to cover many situations–it does the opposite. It shows that the university has absolutely no idea what the consideration, beyond $1, might be for the assignment of any invention. And the university has not provided the $1 at the point that the assignment agreement is offered for signing, so there is in effect nothing that forces anyone to sign the agreement. The only firm offer is $1. A pot of lentils for your birthright. It can be done, especially under duress. But it’s a nasty business to be in.

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