Research Enterprise

There are alternatives to compulsory invention assignment practice–there’s still a voluntary aspect to nearly all university patent policies, already there, built-in–on the administrative side. There are often two mechanisms in policy by which patent administrators can implement a voluntary program of assignment, even within a policy that makes assignment mandatory:

• decline to assert ownership
• assign back to the inventors if assignment is required by policy.

We have looked at how such a practice can exist within patent policy at California, Iowa, and Kansas. Now we turn to the University of Florida. It will take more effort to work through the policy here. Not only are there multiple layers, including a collective bargaining agreement with faculty unions, but also we will examine how the policy plays out in sponsored research agreements and exclusive licenses. Even with the inconsistencies across these practices (and the attendant absurdities of inept drafting), a voluntary assignment practice is still very doable. It requires only the will to implement it.

University of Florida

The University of Florida patent situation involves state law, which authorizes the university to acquire patents, a university regulation (“Works and Inventions”), which lays out the implementation of the state law, and an “Intellectual Property Policy” that implements the university regulation and looks like a friendly informational marketing piece. There is also an intellectual property section in the faculty’s collective bargaining agreement which adds a few choice bits but mostly repeats the intellectual property policy.

I find the Florida policy amusing for the way someone worked in their creationist viewpoint to a formal university policy and got away with it. The Florida policy statement, not content with using terms of art, such as inventor and author, instead conflates and generalizes these into a new defined term, a “creator.” We thus get section titles such as this:

Continue reading →

There are alternatives to compulsory invention assignment practice–there’s still a voluntary aspect to nearly all university patent policies, already there, built-in–on the administrative side. There are often two mechanisms in policy by which patent administrators can implement a voluntary program of assignment, even within a policy that makes assignment mandatory:

• decline to assert ownership
• assign back to the inventors if assignment is required by policy.

We have looked at how such a practice can exist within patent policy at the University of California and at the University of Iowa. Now let’s look at the University of Kansas.

University of Kansas

Here’s a piece of the KU Board of Regents Intellectual Property policy, making a claim for university ownership.

Patents obtained on inventions or the ownership of copyrightable software with an actual or projected market value in excess of $10,000 annually resulting from institutionally sponsored research shall be retained by the institution or may be assigned to an organization (hereinafter called the Organization) independent of the institution and created for the purpose of obtaining patents on inventions, receiving gifts, administering or disposing of such patents, and promoting research and the development of intellectual property at the institution by every proper means.   

University patent policy style manuals must insist on convoluted language. Continue reading →

There are alternatives to compulsory invention assignment practice–there’s still a voluntary aspect to nearly all university patent policies, already there, built-in–on the administrative side. There are often two mechanisms in policy by which patent administrators can implement a voluntary program of assignment, even within a policy that makes assignment mandatory:

• decline to assert ownership
• assign back to the inventors if assignment is required by policy.

We have looked at how such a practice can exist within the University of California patent policy. It’s not difficult. It just takes courage to stand up to the folks within the system that think the patent policy is their gift to institutional control, and that somehow that institutional control is the best thing for the diffusion of inventions, for university research, for public benefit, and even for university finances.

Let’s return to the University of Iowa and take a look at how voluntary assignment practice can be implemented there, again without any change in formal patent policy.

University of Iowa

In the case of the University of Iowa, whose patent policy we have used to illustrate various options, the university uses a research foundation, which it controls by placing a majority of university officials on its board. So, in a way, the foundation is also an instrument of the state, but functions as a workaround to state requirements for hiring, contracting, public records, and the like. One might think that such things would be made illegal–that when a university that is an instrument of the state creates “special purpose entities” to move transactions outside state regulatory oversight, then the university should have no involvement in the management of that entity. However, I suppose the operating rule is that university administrators can do any clever thing until the state stops them (the state stopping the state), or gets stopped by the federal government, or by a court–which takes a lawsuit, and money. Continue reading →

Here’s some bits from the Wake Forest University patent policy. The upshot is that the Wake Forest patent policy mandates making the most money possible from the sale of whatever administrators decide to treat as “property.”

First, the statement of purpose:

The Inventions and Patent Policy of Wake Forest University is intended to:

1.1 Encourage research and the development of ideas and inventions by rewarding the developers of inventions, assisting them in implementing their ideas, and by providing a system for the encouragement of research;

This bit is silly. Faculty at universities don’t appear to need any incentives from patenting to conduct research or have ideas or invent. (Note again how policy drafters cannot include a simple plain statement–things come in dyads and triads.) The US patent system’s stated objective is “to promote the progress of the useful arts”–where “progress” means the diffusion or spread of knowledge about how to do something useful. It might make sense for a university to confirm in policy that its inventors may participate in this federal system. But the patent policy itself is puffing someone’s ego to think that university faculty need the encouragement of patents in order to do research or invent.

1.2 Serve the public interest by providing means through which inventions and discoveries which arise in the course of the University’s research may be made available to the public through established channels of commerce; and

Here we get a statement referencing the public interest, but oddly limited to a specific means of service. Continue reading →

Restoring voluntary assignment for university inventors is the first step in reconditioning university invention management–and putting that management on a road of development consistent with university mores and roles. Voluntary assignment can be accomplished a number of ways. I will outline a few here.

1. correct interpretation of policy–often policies are drafted with a narrow scope on claims but that scope has been expanded by administrative interpretation
2. change policy–often the change does not have to involve dramatic redrafting
3. change acceptance practice in the IP office
4. implement (f)(2) properly for subject inventions
5. change state law (for public universities)

We have looked at making correct interpretations of policy, using the University of Iowa’s patent policy as an example. Just read the policy carefully and–hey–it’s actually a voluntary assignment policy, cloaked in administrative junk verbiage. While reading carefully to cut through the bombast and goofiness does work, it requires administrators capable and willing to do the same. Much better is to revise the policy to make clear the voluntary nature of assignment of inventions.

Consider how such revisions work with the University of Iowa policy. Here are the operative sentences again:

Through its designee, the University of Iowa Research Foundation (UIRF), the University will assume ownership of patents on qualifying inventions made by its employees and appointees. In a limited number of situations, the University, through its designee, will assume ownership of patents on qualifying inventions made by students and institutional visitors.

There are number of ways to go about revising this statement to make clear the voluntary foundation of the policy.

Change the Verbs

One direction changes the verbs. And doing so requires other changes in the apparatus. Here’s the start: Continue reading →