Most university patent policies don’t specify exactly when to disclose an invention. “Promptly” is the recurrent–and meaningless–requirement. Here’s Northwestern University:
to protect academic priority as well as commercial priority, any Inventor making any Invention or Discovery subject to this policy is encouraged to report it promptly in writing and in reasonable detail to the Innovation and New Ventures Office (INVO) via the University’s disclosure web site preferably within 30 days of making the Invention or Discovery.
This requirement is made in the context of potential loss of patent rights in foreign countries for public disclosure prior to filing a patent application–though the policy does not bother to make that clear. The policy also makes the absurd claim that patenting is necessary to “protect academic priority.” That’s just nuts. Publication “protects” academic priority. In the U.S. and most other countries, being first to file “protects” patent rights. While there may be an implied requirement to report inventions, the wording “is encouraged to report it promptly” makes the timing discretionary. Report whenever, but report. The “is encouraged” weakens everything that follows: is encouraged to report, is encouraged to report promptly, is encouraged to report in reasonable detail, is encouraged to report to the INVO, preferably within 30 days. And what does it mean to “make” an invention? For obsolete patent purposes, an invention is “made” when it is both conceived and reduced to practice either by a patent application or by testing to demonstrate that it performs in every element as conceived.
So no guidance on when to disclose, but sometime. The express preference is for after the invention has been made–and so, after filing a patent application or completing testing to demonstrate everything works as conceived. Not, apparently: when you have an idea, or have made a sketch of something that hasn’t been built, or prior to completion of full testing.
Before intellectual property owned by the Board of Regents is disclosed to any party outside the U. T. System, to the public generally, or for commercial purposes, and before publishing same, the creator shall submit a reasonably complete and detailed invention disclosure of such intellectual property to the president (or designee) of his or her institution for determination of the Board of Regents’ interest.
The Texas policy goes out of its way to assert that the Board of Regents “automatically owns the intellectual property created by individuals subject to this Rule, yet recognizes the importance of discovery commercialization.” This is big time nonsense but you will regret it if you don’t take it seriously. “Intellectual property” means everything that can be owned and everything else. Here, look:
For purposes of this Rule, intellectual property includes, but is not limited to, any invention, discovery, creation, know-how, trade secret, technology, scientific or technological development, research data, work of authorship and software, regardless of whether subject to protection under patent, trademark, copyright, or other laws.
Pretty awful drafting–“we own even stuff that can’t be owned.”
There’s an exception for the intellectual property the Board doesn’t claim–“Intellectual Property Not Subject to this Rule”–stuff not created within scope of employment or with Texas support, facilities, or resources (these are all different apparently). But that’s all skew. The basic policy claim is that individuals are subject to the Rule, not the intellectual property. Otherwise, we would have the Board of Regents “automatically owns intellectual property subject to this Rule” and there would be no need to include a reference to individuals at all. In any event, disclosure is not necessary until there’s a public disclosure, except just before that. There’s no guidance about this “before”–it could be ten minutes before, I suppose. But that’s missing the point, as the point of early disclosure is to have enough time to file a patent application. The policy here doesn’t bother with that.
If only U.S. patent rights matter, Texas has a year from public disclosure to file a patent application, so what’s the “before” doing here? Ah, it’s interfering with academic freedom–freedom to publish, freedom even to talk about one’s research. Such a crap, having to work at a University of Texas campus, and finding out you work for a patent licensing underling.
There’s no such thing as “automatically owning” an invention. Federal patent law provides that inventors own their inventions. That’s the basis of the Constitutional power for Congress to secure to inventors exclusive rights in their inventions. Texas policy aims to pre-empt that right. Perhaps Texas construes its policy as a sort of state law that does not have to go through the Texas legislature. The University of California claims this standing for its patent policy–why not Texas? Texas policy doesn’t even believe its own assertion, burying later in policy a section 12.6 “Cooperation with Necessary Assignments” which however lacking in semantic meaning–people don’t cooperate with assignments”–to the extent that “assignments” here means “written instruments to convey title in intellectual property” rather than “work to do at home to turn in for course credit,” there would be no assignment necessary if the Board really did own everything automatically. Perhaps the policy aims to have the Board pretend to own things automatically so that inventors will think that’s the case, and cooperating with necessary assignments then is just a form of play acting required by, say, the federal government that doesn’t acknowledge the play acting the Board.
Here’s the Texas Rule 31004 on “Rights and Responsibilities of Faculty Members”:
Sec. 1 Freedom in Research. Faculty members are entitled to full freedom in research and in the publication of the results.
Here’s the UT Austin president’s statement on the matter, in 2018:
The academic freedom of our faculty to express, learn, teach and discover is at the very foundation of The University of Texas at Austin’s mission. Faculty members’ rights to academic freedom are well established in higher education, and the rights that we recognize at UT Austin are consistent with those norms, including AAU’s statement on academic freedom. Individual faculty members have these rights under the UT System Board of Regents rules.
There is no way to reconcile this statement of freedom to publish–“at the very foundation” of the university’s mission–with a requirement that the university owns everything you do at the university and you cannot publish it without first disclosing it to the university’s president or designee. If the designee decides it’s the Board’s, then the designee gets “to decide how, when, and where the intellectual property is to be protected and commercialized.” If you are faculty at the University of Texas, you either have the freedom to publish or you have to submit to a designee. I expect that the designee has an unlimited legal budget to grind you down if you opt for the freedom to publish as the very foundation of the university’s mission.
In any event, at the University of Texas you don’t have to disclose an invention to the university if you don’t make it public. Otherwise, you must disclose before–even just before–you go public. And the Board owns the invention automatically until they say they don’t, even if the intellectual property cannot be owned. Go figure. It’s pompous nonsense as policy and should be burned up.
Covered persons are required to notify the University’s Office of Technology Development (“OTD”) of each Supported Invention and Incidental Invention through a disclosure document as prescribed by OTD, except as otherwise provided in Section III regarding Sponsored Software Inventions.
No specification of when to notify. Just a free standing demand. Harvard’s definition of invention uses terminology drawn from federal contracting and patent interferences–“conceived or reduced to practice”–but drops the “first actually” through the usual sloppiness. The policy implies that disclosure must take place before any patent application is filed, since the policy insists that the OTD is “solely responsible” for deciding whether to file an application. The use of patent interference wording suggests that the scope is inventions that are patentable–that is, have been both conceived and actually reduced to practice, with at least one of conception or actual reduction to practice having taken place within the claims of the policy. But the definition of invention is broader:
Invention. Shall mean any patentable or potentially patentable idea, discovery or know-how and any associated or supporting technology that is required for development or application of the idea, discovery or know-how.
So an invention is not just what’s patentable (or potentially patentable) but also “any associated or supporting technology that is required for development or application.” That’s broad, and in its way bizarre. One might expect that the claim would be directed to anything required to practice the invention–not to develop it or apply it. “Potentially” patentable also is fraught with the unknown. In one sense, there’s the old aphorism that most anything has a 50-50 chance to be patented–that the decision of patentability rests with the patent office. In another sense, “potentially” indicates that there may be prior art that will defeat a patent application, so disclose anyway. In yet another sense, “potentially” is a legal opinion of a patent attorney, who having reviewed a report of an invention and the prior art, determines that there’s a 50-50 chance or better that the patent office will grant a patent. An invention is not “patentable” in any certified way until a patent office has allowed claims.
In simpler times, back when university patent policies were largely effective, the point was only that if an inventor chose to seek a patent, then at that point report the invention to the university. But not now, in these enlightened times, at universities with so much money they can draft needlessly complicated, ambiguous, and ineffective policies and make a total hash of it all.
At best, inventors are required to report inventions some time after reducing an invention to practice (testing to show that it performs all functions as conceived) and before a decision is made by the OTD to file a patent application.
All potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources, shall be disclosed on a timely basis to the University.
And for good measure:
Inventors must prepare and submit on a timely basis an invention disclosure for each potentially patentable invention conceived or first actually reduced to practice in whole or in part in the course of their University responsibilities or with more than incidental use of University resources.
Stanford allows inventors to place their inventions in the public domain, but they still have to disclose and Stanford still claims “title” to these inventions, though it’s not clear what that “title” is in the absence of patent rights. Collecting Cheshire Cat grins, apparently. We see the same “potentially patentable” and “conceived or first actually reduced to practice” wording as in Harvard, but not as sloppy as Harvard with the inclusion of “first actually.” Still, all this wording on scope is obsolete, like demanding proper placement of the ice box in the age of electric refrigerators. Likely, the wording derives from Bayh-Dole, which gets the wording from the Federal Procurement Regulation and the Institutional Patent Agreement, which get the wording from federal procurement contracting in use as early as the 1940s. The Bayh-Dole scope is, however, different in all sorts of substantial ways–though subtle to the point of inducing adiaphora in university administrators–distinctions they don’t care to bother with, even if substantive in practice.
Disclose “timely.” Timely for what? Prior to publication that loses foreign patent rights? Prior to a patent bar date in the United States? With enough time that Stanford can prepare and file a patent application without being in crisis mode? Soon after the invention has been made? Soon after the invention has been thought about as an invention even before it has been practiced and tested? It’s just a free-standing “timely” that sounds good but means next to nothing. It’s like a requirement that Stanford doesn’t really care about. Why is it so hard to write: “Inventors shall disclose within 30 days each invention that the inventor decides is worth filing a patent application on or that the inventor has otherwise agreed to disclose as a condition of funding”? But no, it’s “promptly.”
Utah, in all its ghastliness:
Each full or part-time faculty member, non-faculty academic employee, staff member and student-employee, and each student participating in University research or making non-incidental use of University resources, is expected to inform promptly the director of TCO concerning all inventions created within his or her area of expertise, in the course of University research, or the non-incidental use of University resources as applicable;
The subject is so long–all these categories of people–that it is not clear whether the trailing restrictive modifiers apply to all elements or only the last element–a common mistake in naive drafting. Anyone participating in extramural research or using university resources more than “non-incidentally” is encouraged to inform promptly. Sounds like a Stasi proclamation. The sentence then opens out on something completely different. If you participate in research, then you must inform on inventions in one’s area of expertise–apparently even if those inventions are not ones you have made, even if they have nothing to do with the research you participate in. And for all that, for all the strident detail about scope, the obligation ends up as a form of encouragement. May as well write: “Anyone who invents something that they think the university should review may disclose it to the TCO.” But no. Utah wants people to “inform promptly” on inventions. Life with invention whisper campaigns.
Members of the Boston University Community shall disclose any potentially patentable invention that they make to the Technology Development office promptly and in reasonable detail through a centralized online system.
Same deal–“promptly” but only after “making.” To have “reasonable detail” one will have to have more than an idea or part of the conception. And what makes details “reasonable”? For what purpose? At least the non-Bayh-Dole disclosure requirement in Bayh-Dole’s patent rights clause has this:
The disclosure to the agency shall be in the form of a written report and . . . shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.
That sounds like the core of a patent application’s “specification” section. “In reasonable detail,” by contrast, is mealy mouthed. So, no guidance on when an invention is made, what it means to be prompt, or even what should be included to comply. It is gesturing for “You will comply with what we tell you to do.”
You see the pattern–lots of worry about scope–who and what–and lots of waffle and ambiguity on when or even if a disclosure is required at all.
Now, if you are an inventor at a university, your obligations will be controlled by the policy in place at your university–patent policy, appointment letter, research policy, policy on academic freedom, consulting policy, conflict of interest policy, any specific agreements covering research funding or release time. Other than research contracts in which you have tacitly agreed (if not expressly) to report what you do, it’s likely that your obligation to disclose inventions to your university kicks in after you decide to seek a patent on a given invention and before you file a patent application. If you do not recognize a given thing as inventive, then it is not patentable, and not even potentially patentable, unless “potentially” means “could be patentable after a people who make their living on getting things patented persuade you they could get a patent, maybe, for your work, too.”
In practice, however, the requirement to disclose means “if we find out about it, and insist that you disclose, then you had better do so.” Unless there is a research contract with a company sponsor, if you don’t disclose and just publish, nothing happens. No one reviews your publications to see if you have reported a potentially patentable invention. No one then shows up and demands that you fill out a disclosure form or you will be disciplined. It’s rather like Stanford’s policy, which is at least retains enough decency (from their past policy that was much more decent) to make it clear that inventors can publish their inventions to the public domain unless they have agreed with someone other than the university not to do so.
The Stanford gesture that permits inventors not to bother with patenting, made primary, is at the core of voluntary participation in a university’s patent licensing program. If you want to just publish your work and don’t want a patent, then the university won’t force you to publish in the patent literature. The crux comes when you do want a patent, and don’t want the university to take control of the patent. In the past, universities addressed this by requiring the inventor to use a patent management agent (or leave the university, or in some cases, with medical patents, faculty insisted that the inventor not seek a patent). At least with the choice of a patent agent, some degree of the patent activity–ownership, financials, patenting details, business dealings, suing for infringement, liability–were with the agent and not the university inventor. There’s something to be said for that approach, given that otherwise the university is bound to be drawn in to anything that goes awry, as the “deep pockets.”
Even Bayh-Dole does not force inventors to patent, or force inventors to give up their inventions made in federally supported work to contractors who can then force them to patent. Bayh-Dole does not even require inventors to disclose inventions. It’s not there. There’s a disclosure requirement for contractors in Bayh-Dole, but that only kicks in when an invention has “become known” to a contractor’s designated patent personnel. Yes, the standard patent rights clause introduces a requirement not in Bayh-Dole–that contractors must require inventors to make a written agreement to protect the government’s interest. But that written agreement–a required delegation of rights by the contractor–pertains only to subject inventions, which are inventions that the contractor has acquired. “If you acquire an invention from an inventor, then you must also delegate to the inventor the requirement that the inventor disclose the invention, assign the invention, and if the inventor doesn’t assign, then establish the government’s rights in the invention (assign or license rights). But if you don’t acquire the invention, then the inventor doesn’t have to disclose it to you.”
If the written agreement requirement makes a contractor’s inventors parties to the funding agreement, then those inventors are also independent contractors for the purposes of the funding agreement. The inventors have their own patent rights clause–37 CFR 401.9–and they have standing as small business contractors. Think sole proprietorships existing only for the sake of holding an inventor’s patent rights in inventions made under federal contract. If that’s the case, then when inventors make inventions under contract, those inventions are owned by a contractor (the inventor) and so are subject inventions. If the inventor does not disclose the invention to the federal government within the time specified–two months after disclosing it in writing to patent counsel or agent–then the federal government can take ownership of the invention. But if the inventor blows the patent rights by publishing, then there’s nothing for the federal government to own. And if the inventor does not go to patent counsel with the invention, then there’s no disclosure obligation and no basis for the federal government to take ownership. Even if the inventor does disclose the invention to the federal government, the inventor has no obligation under 37 CFR 401.9 to file a patent application, unlike a university–if a university acquires ownership of the invention, it must file a patent application or allow a federal agency to take title to the invention.
All this to say that inventors of inventions made in federally funded work don’t have to file patent applications and don’t have to disclose their inventions to anyone under Bayh-Dole. If, however, an inventor assigns an invention made in federally funded work to the institution that hosted the federal work, and the invention becomes known to that institution’s patent personnel, then the inventor has an obligation (if the inventor has made the (f)(2) written agreement) to disclose the invention in writing to the institution so it can meet its disclosure obligations to the federal government.
There you have it. Many universities have a patent policy that makes a hash of requiring disclosure of inventions. Promptly but when? University patent policies are a form of adhesion contract, so where there’s ambiguity, inventors get to decide anything reasonable. I’d say reasonable is when (i) an inventor has fully made an invention–imagined it, made it, demonstrated it does what it is supposed to and (ii) the inventor decides that this invention is worth seeking a patent. Then disclose, and kiss that sucker good-bye.