Research Enterprise

We have thus far established the conditions upon which the University of Missouri patent policy asserts an ownership position for the university in inventions made by employees. For the claim to be made, an invention must meet either condition (1) [relevant to the general field of an assigned inquiry] or condition (2) [used university resources in a substantial degree]. Inventors must report all inventions they make.

If an inventor believes an invention is outside the university’s ownership claim, the inventor adds information on the circumstances, the inventor’s official duties, and the interest the inventor has in dealing with the university anyway. The invention report goes to the inventor’s supervisor or department head, who reviews especially the circumstances and makes a recommendation with regard to the inventor’s claim. The report then goes to the Patent Administrator, who forwards it to the Patent Committee since it involves an inventor’s claim of ownership. The Patent Committee hears from the inventor and may investigate on its own, and makes a recommendation to the university president.

If the university has no ownership claim by policy, then there’s nothing for the president to do–the president’s official actions are limited to waiver, assignment, and licensing but only with respect to patent rights that the university does have a claim to. Thus, if the university has no claim to patent rights, policy gives the university president nothing to do. Of course, if an invention is within the university’s policy claims, then the president may choose to waive the university’s claim–the university does not have to take ownership, even if an invention is within the scope of its policy claim. Continue reading →

Now let’s consider the procedures by which an invention made by an employee (or non-employee, as the case may be) of the University of Missouri is to be reported. The university’s patent policy has changed over time. The original idea (from 1956) is that inventors report to the Patent Committee, routing the invention report through supervisor, head of department, and dean. “Obviously unpatentable” inventions are excluded from the reporting requirement. In the original patent policy, reports are to be made “as promptly as possible” but the policy goes on to recommend that inventors wait until they have reduced an invention to practice before reporting it. This recommendation is removed from later versions of the policy, changing the meaning of “as possible” without changing the actual wording–a delightful strategy administrators love to use. “We didn’t change the policy, we only clarified the policy.”

In current Missouri patent policy, invention reports are controlled by the Patent Committee (100.020.D.2.a.(1)):

The Patent Committee may prescribe the form and manner of execution of the Invention disclosure report, and such Invention reports shall be treated as restricted reports of the University.

The invention report then apparently goes to the Patent Administrator (F.2.b), but first the invention report is, apparently, routed to the “supervisor or department head”:

The supervisor or department head shall ascertain that the Invention or Plant Variety report and other papers are prepared in conformity with these regulations;

It is not clear what the “other papers” are, since the requirement is that all inventions must be reported. No doubt administrators must have had something in mind, but like good administrative drafters (meaning, crappy), the did not bother to mention these “other papers”–I think I know what these “other papers” are, but let’s leave that for now. Continue reading →

The distinction in the University of Missouri patent policy between the broad scope of activities that a faculty member might properly undertake in the freedom of the university and the narrow scope of claims under which the university by policy might claim ownership of inventions frames the requirement for disclosure of inventions, including the circumstances of invention, so a determination can be made whether the university’s limited conditions for asserting ownership have been met.

Here’s the university’s patent policy on disclosure of inventions (D.2.a.(1)):

Every Invention made by an Employee of the University shall be reported by such Employee to the President.

That is, every invention is to be reported, regardless of whether or not the invention meets the university’s conditions for claiming ownership. It is worth noting that the invention ownership conditions (1) and (2), the assurance that inventors own all inventions that don’t meet these two conditions, and the reporting requirement all date from 1956 and have been largely unchanged since, although the university has built up all sorts of apparatus around them, including messing with the definitions of invention and employee, and thus the introduction of capitalization. In short, employee is defined to include non-employees and invention is defined to include non-inventions. This is the usual cognitive dissonance found in university patent policies, making it all but impossible to have a normal conversation about inventions or employees. Continue reading →

We are considering this statement by the University Missouri in its information for inventors:

MU owns all intellectual property created utilizing University facilities by an employee or student of the University of Missouri.

If we turn to the University of Missouri’s copyright policy, we can see that the statement is untrue there, too. The copyright policy is in the Collected Rules and Regulations at 100.030.

The faculty will continue to hold copyright for traditionally accepted intellectual property that is developed in their roles as teachers and scholars subject to the provisions of section 2 herein. These include, but are not limited to such materials as books, workbooks, study guides, monographs, articles, and other works including music and performances, whether embodied in print, electronic format, or in other media.

So far, nothing about using university facilities enters into it. If a faculty member creates a study guide using university “time,” the university makes no claim on it. But let’s look at section 2 of the copyright policy to see what the university does claim. We will work through it bit by bit:

2. The University will own the copyright in materials that are:

a. commissioned for its use by the University; or

That is, when the university assigns someone to the task (“commissioned”) of making a work for use by the university. Here, commissioning does not depend on providing any additional funding. It’s rather like assigning someone to an inquiry.  Makes sense. Continue reading →