University patent policies these days typically contain a definition of “invention.” Often they try to conflate copyright and patent matters and introduce a new definition, such as “discovery” or “intellectual property” in an attempt at administrative convenience. These new definitions in turn add yet another layer of confusion into the mix. It would be so much better to use the definitions of federal patent law, but no.
One thing that has happened over the years is that policies requiring disclosure for the purpose of ascertaining the equities of those involved have been turned into ownership policies. The scope for disclosure under an equity approach might be necessarily broad. Openness permits evaluation. However, institutional claims of ownership were narrow, limited to work done in official duties, or when required by a sponsor of research, or when an agreement had been made with faculty regarding extraordinary commitment of institutional resources. As policies moved toward ownership as an institutional solution to equity discussions, and especially after Bayh-Dole gave administrators a plausible front to require assignment of inventions made with federal support, the scope of claim came to be the scope of disclosure. With this convergence has come some unexpected consequences.
A disclosure obligation may be very general. It may apply to patentable inventions and to other intangible assets that may be created. It may apply to everyone working in a university environment, whether an officer, appointee, employee, student, visitor, or volunteer. A disclosure obligation carries with it no assumption of ownership, no premise of commercialization, no review for value, and no implicit request that the university take title. A disclosure merely provides everyone notice of an asset’s existence, with an opportunity for anyone who has contributed and has not been acknowledged to come forward and get any concerns they may have addressed. Disclosure is a way of keeping everyone together within a diverse community. It’s sort of like knowing where the kid has been with the family car or who has put what in the lunch room fridge. It’s that basic rule of working in a band, that band members bring in their new music ideas for consideration. Disclosure is, in a way, fundamental to the function of a “household” or “commons”. Thus, disclosure expectations can be broad. It’s no big deal in a commons.
However, as the scope of disclosure comes to be conflated with the scope of ownership claim, strange things happen. Continue reading