A non-compliant Bayh-Dole written agreement at Yale-5

We are working through Yale’s “Patent Policy Acknowledgement & Agreement.” We have been looking at Paragraph 6 of the Yale patent policy to try to make sense of what inventions Yale really does assert an interest in. Paragraph 6 demands all inventions be reported when Paragraph 1 demands only the inventions made under University auspices must be reported. Which is it? Paragraph 6 will get into it by taking on inventions made in faculty consulting. But before it does so, it leaves us with one last thing:

All inventions made or conceived under circumstances involving University facilities or personnel are the property of the University.

This assertion is at odds with the procedure set out in Paragraph 3 of the Patent Policy. In Paragraph 3, inventions made under auspices are reported, initially screened for auspices and Yale interests, some are then given detailed evaluation, and based on that evaluation, Yale or its partner may make a decision to file a patent application. Only then does Yale’s procedure provide for Yale to request assignment of the invention. Only then does an invention become “the property of the University.” But here in Paragraph 6, inventions become the property of Yale without any of the procedure in Paragraph 3. So which is it? Is it really so difficult that someone drafting this policy cannot bounce back and forth between paragraphs all of two pages apart and get things right? And why the different wording? In Paragraph 1, it’s “inventions which result from . . . intellectual activity performed under University auspices.” In Paragraph 3, it’s “inventions of the kind referred to in paragraph 1”–has no one heard of definitions? In Paragraph 6, though, it’s “involving” or “using” rather than “resulting from.”

Yale’s patent policy then launches into inventions made in faculty consulting. Much of this is unnecessary bother. Here’s part of the fussiness:

All inventions made by Yale faculty members in the course of consulting, and any assignments of rights to such inventions, must be reported promptly to the Office of Cooperative Research. That Office will agree to abide by reasonable confidentiality restrictions for disclosures of inventions and assignments made in the course of consulting.

This bit of policy conflicts with the general statement regarding disclosure–that Yale requires the disclosure of inventions arising from intellectual activity performed under University auspices. Now we see that Yale also requires the disclosure of inventions not made under University auspices. Why is that? One might expect it is so that Yale can challenge the claim that something represented as invented outside Yale auspices really was invented under those auspices, and therefore Yale could interfere in the consulting relationship, claim ownership, and rake off additional payment for a license from the company the faculty member was dealing with. Perhaps that’s not it and all Yale wants is to be sure that the company develops the invention in the public interest, per Yale’s policy statement on the matter.

But why disclose? How does disclosure of the invention–how it works, uses, novelty and advantages–have anything to do with determining anything about Yale’s auspices? Nothing in Yale’s invention disclosure form addresses auspices. Nothing about the disclosure has anything to do with determining Yale’s interest based on its policy standards. If an invention were made in consulting, a faculty inventor, having clearly decided that such work was not going to be under Yale’s auspices, would state there was no use of Yale facilities or personnel and that would be the end of it. Yale would have to produce records to show that there was use of Yale’s facilities or personnel and that use came within the definition of “auspices” in Yale’s patent policy. Given that patent applications are published, Yale can get most of the invention disclosure it might want from reading the patent literature. Information in a patent application is published under oath, so Yale might go ahead and start with the respectful assumption that that information in patent applications is true. Beyond that, perhaps there will be a rare case of faculty conversion or fraud–but even then, if the invention gets developed and the public benefits–Yale’s stated purposes in getting involved in patenting–then how is Yale at all damaged by not gaining ownership and spending its own money on patenting?

Again, this stuff can be made direct and even honest:

Patent Policy

Yale makes no claim to inventions that are not patentable, inventions that do not arise from assigned duties, and inventions that are not within the scope of a contract to which Yale is a party. Yale furthermore has no claim on inventions that it reviews and determines it has no interest in or will not file a patent application on.

Yale does have a claim to inventions that are or may be patentable and that (i) arise from assigned duties, or (ii) make use of Yale facilities or personnel, or (iii) are within the scope of a contract to which Yale is a party.

Disclose to the Office for Cooperative Research each invention that Yale has a claim to. They will do an initial screen to determine that Yale indeed does have a claim, and if Yale does have claim, they will do a detailed evaluation and then decide whether to file a patent application. For all this they can do the work themselves or contract it out. If Yale decides to file a patent application, then Yale will request assignment of the invention. If Yale decide not to file a patent application, then Yale will waive its claim.

Patent Agreement

I agree to disclose to the Office of Cooperative Research each invention I make to which Yale has a claim and agree to assign to Yale upon request, following Yale’s detailed evaluation, each invention for which Yale decides to file a patent application. For those inventions for which Yale decides to file a patent application, I agree to sign paperwork to permit patent applications to be filed.

The policy version here, of course, omits the non-patentable inventions, because that stuff shouldn’t be included, given the procedure in Paragraph 3 is focused on patent applications. And I have left off all the stuff about royalty sharing and the like. That’s a whole nother discussion about where the valuable consideration for assignment of inventions shows up, and to deal with 35 USC 261’s requirements, especially where the assignment involves an invention where the inventor has not been expressly hired to invent.

The Yale approach is to claim everything and release what’s not wanted. That’s the approach of no-nothings who worry about getting things wrong. So they opt for administrative fascism–a nanny state that must make all decisions for a populace that cannot be expected to make decisions for themselves and besides decisions for themselves is implicitly bad when the important decisions should be made on behalf of everyone, and only administrative experts are qualified to make such decisions.

The better approach is to claim only what is necessary to claim. Deal in those things that everyone can see is in Yale’s equitable interest based on circumstances. Anchor any specific situation with a participation agreement that makes clear the local issues and gives people the choice to opt out rather than get surprised later that some administrator wants to slip the meaning of the words. This better approach also means way less reporting of inventions that Yale does not need to see, screen, or evaluate. This better approach also does not turn everyone automatically into a non-complier because they are not reporting every non-patentable invention, too. Less volume of meaningless stuff means Yale could focus more attention on the stuff that ought to matter–for compliance, for money-making, and hey even in the public interest.

Now when it comes to extramural research agreements, Yale might use a participation agreement. The purpose is to be clear and specific, not general and vague. So there has to be a participation agreement for each award, for each person who will participate in the work. For that, attaching the participation agreement to the paperwork someone has to sign in order to get paid from the sponsored research account. For volunteers, make signing the participation agreement a condition of involvement. The Patent Agreement covers the general situation. If Yale has an interest, then disclose and cooperate. The Participation Agreement provides specific information with regard to the scope of invention deliverables and leaves off the guessing around about what administrators might want.

Participation Agreement for Federal Awards

[Here, the written agreement required by 37 CFR 401.14(f)(2). Start with the template helpfully provided by Research Enterprise.]

This (f)(2) agreement is not just another patent agreement where Yale claims more stuff for itself. The (f)(2) written agreement links potential inventors with federal agency interests. 37 CFR 401.14(f) requires Yale to make these potential inventors parties to the funding agreement–and therefore contractors with their own standing–so that if they invent, their inventions become subject inventions owned by the inventors and subject to the inventor patent rights clause at 37 CFR 401.9 not the nonprofit patent rights clause that Yale operates under at 37 CFR 401.14. Once an inventor is a contractor, then 37 CFR 401.9 stipulates that the inventor is to be considered as a small business contractor, and thus has the right to elect to retain title under 35 USC 202(a). Yale does not have any say in the matter, within the framework of Bayh-Dole and the nonprofit patent rights clause. And this (f)(2) written agreement preempts any other participation agreement that Yale might try to impose–federal contracts take precedence over other contracts.

A participation agreement may operate anywhere Yale wants to be clear on the scope of Yale’s interest. That may be in sponsored research or in Yale-funded work (money or special access to equipment or facilities, such as to do development work) or in any project in which the leader of the project determines that Yale should be the proprietor of any inventions that arise (and so reduce issues having to do with split ownership or opportunism and the like). These sorts of arrangement cannot be generic to all such agreements–by the time all possible variants are generalized, the wording is so vague as to be useless in securing compliance. It’s paperwork for the sake of administrative showing off, not paperwork that does a real job.

Where are we, then? Yale’s Patent Policy Acknowledgement & Agreement does not comply with Bayh-Dole’s standard patent rights clause requirement for a written agreement to protect the government’s interest. Yale’s agreement does not even do a coherent job of protecting Yale’s interest. The real means of enforcement is not the words on the page but the threat of administrative discipline (including termination and/or litigation) for refusal to accept whatever an administrators says the words of the agreement are intended to mean. Why hide raw assertion of administrative power in the poor wording of a inadequate instrument? Yale administrative folks should have more courage and assert outright the servility of faculty that’s implicit in their awkwardly drafted policy instruments. As one senior university administrator–not at Yale–once told me, “the university owns everything faculty do, we just don’t bother to tell them most of the time.” So why not come right out and write that into policy? Maybe, because (i) it’s not true and (ii) it’s against public policy and (iii) it’s against the very things that makes university research enterprise valuable to the public.

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