Does the UC patent amendment provide an opportunity for mischief?

About a month ago, I received an email with the subject “PLEASE SIGN NOW: UC Patent Amendment”. Being quite interested in issues of intellectual property in academia (as I will explain below, I think all IP arising from publicly funded work should be in the public domain) the combination of such insistent language along with the word “patent” caught my attention, and so I read the message, which read:

When you first joined the University of California, you signed a Patent Acknowledgment or Agreement (depending on when you joined UC) as a condition of employment or your ability to use UC research resources and facilities. Because of recent court decisions in the case Stanford v. Roche, it is necessary for you to sign an amendment to that document.

This amendment clarifies the original intent of the Patent Acknowledgment or Agreement you signed: to assign to the University rights to inventions and patents you may conceive or develop while employed by UC, using UC research facilities and/or resources, or using gift, grant or contract funds received through the University.

This is not a change in the Patent Policy; it is simply an amendment that clarifies the existing Acknowledgment or Agreement in light of the court decisions.

Your electronic signature on the Patent Acknowledgment/Agreement Amendment available here will ensure that the University is able to fulfill its intellectual property obligations to research sponsors, industrial partners, the federal government and others.

Several things about this email really pissed me off. First, nowhere in the email or on the page where we were supposed to sign the amendment could one find the actual text of the amendment! Whenever anyone asks me to sign something without actually seeing what I’m being asked to sign, I get a bit suspicious. I had to go to the FAQ to find the actual text of the amendment. Dodgy and weird.

But more importantly, I was astonished by their claim that this is not a change in patent policy. Where does the university’s “patent policy” reside if not in the previous excessively legalistic patent agreement I was forced to sign when I joined the university? And if courts interpret this document as meaning one thing, then that is what the university’s patent policy is. I understand that they didn’t mean it to mean that, and that they don’t want it to stay that way, but surely by asking compelling me to sign an amendment to a legal document in response to a Supreme Court decision, they are changing the university’s policy. And their claims to the contrary of totally deceitful.

Given my general hatred of IP in academia, and the exceptionally sleazy way this was all handled, my initial reaction was to simply say “NO FUCKING WAY” and refuse to sign. But, well, it turns out that I might be legally obliged to sign this thing (or, more precisely, UC says I am legally obliged to sign, but I am skeptical of this and am seeking a legal opinion), and I don’t really like to needlessly disobey the law

This got me thinking about an alterative, subversive way of exploiting this situation to further my ends. The Supreme Court case that led UC to amend their patent agreement – Roche v. Stanford – was complicated, but the relevant part rested on the justices deciding that a Stanford employee saying he “shall assign” intellectual property developed in the course of this employment at the university to Stanford was trumped by his having said he “hereby assigns” that same intellectual property to Roche.

I haven’t read the whole case, and I probably wouldn’t get the nuance even if I did, but it’s this distinction between “shall assign” and “hereby assign” that has sent the university IP people into a tizzy, as is clear from the amended text:

I acknowledge my obligation to assign, and do hereby assign, inventions and patents that I conceive or develop 1) within the course and scope of my University employment while employed by the University, 2) during the course of my utilization of any University research facilities or 3) through any connection with my use of gift, grant, or contract research funds received through the University.

As explained in the FAQ, the words, “and do hereby assign” were added to “provide a present assignment of invention and patent rights to UC, addressing the problem created by the Supreme Court decision”.

So… if the problem with the current patent agreement that I am currently operating under is that doesn’t provide a present assignment of invention rights to UC, and if the Supreme Court has found that present assignments trumps the obligation to assign in the future contained in the current UC patent agreement, then what would happen if – before I signed the new UC amendment (which I am told I have until February 29, 2012 to d0) – I made some kind of statement that “I hereby assign and inventions and patents I conceive as part of my employment with the University of California to the public domain”? I’m no lawyer, but the Supreme Court seems to have said this trumps my current agreement with UC, and, if I did that first, it seems like it might trump any future agreement I signed with UC – thereby accomplishing what is my ultimate goal – to make sure that any intellectual property I develop while working for a public university carrying out publicly funded research should be in the public domain – free for anyone to use as they see fit.

One final thought – I’m not even really sure how much this applies to me. Although I am a UC faculty, I am also an Investigator with HHMI, who during the term of my funding are my official employers. As such, I assume my primary IP obligations are the HHMI and not UC. I have not received any information from HHMI suggesting that its patent agreements require amendment.

Some other links about this UC Patent Amendment:

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2 Comments

  1. d.
    Posted December 26, 2011 at 4:35 pm | Permalink

    And moreover, what if – before Feb 29th – you ‘hearby assign’ your IP rights to yourself? Or to some Creative Commons group?????

    The possibilities are endless.

    And what if some hot-shot ‘idea’ that was under IP regulations arose from a grant that was PART from UC and PART from HHMI? How would you assign partial rights?

    And remember that The Law is partly decided on ‘precedents’ and not necessarily ‘logic’ as we scientists know it – so the first to get something decided can set the stage …….

    hmmmm.

    Interesting.

    d.

  2. Posted November 29, 2012 at 12:15 am | Permalink

    I have spent three years following the Stanford v Roche case, and worked for six years at UCSC doing IP management. UC has misrepresented the Stanford v Roche case, has made sloppy changes to its policy, and made much of the rest of its patent policy unintelligible.

    In Stanford v Roche, Stanford had a policy that inventors owned their inventions “whenever possible”. Thus, the promise to assign language was invoked only when Stanford had a legal obligation to obtain assignment. Stanford furthermore approved of the employee’s assignment arrangements with the company, thereby waiving claims that Stanford might otherwise make under its prior promise to assign agreement.

    Stanford relied on the consulting to obtain valuable technology and expertise from the company, which shared these assets in reliance on the assignment agreement it had made with Stanford’s employee. The employee returns to Stanford and almost immediately “invents” in the same area as the work conducted while the employee was at the company. This is precisely the kind of thing that companies are wary of, and why they use present assignments in such situations.

    The courts found that the invention was clearly within the company’s reasonable scope of claim. Stanford’s aim was to invalidate the employee’s assignment agreement so that its own assignment, obtained much later, would hold up and Stanford could successfully sue the company for a quarter billion dollars.

    About all one can say is that it is true that there was a promise to assign that didn’t operate as an assignment, a present assignment that did, and a later assignment (to Stanford) that was declared void because the employee had already assigned to the company. But there is no way that Stanford imposing a present assignment at employment would have changed the facts, since Stanford still had a policy that inventors own whenever possible, and would have waived the present assignment like it did the promise to assign to get at the the juicy PCR technology at the company (the employee’s supervisor at Stanford was on the company’s technical advisory board, even).

    The issue is about the *scope* of assignment, not the *method* by which assignment is obtained. The problem for Stanford was to find a clever way to invalidate an agreement that it later regretted. Stanford sought to turn the Bayh-Dole Act into a federal requirement that Stanford take ownership of inventions when even $1 of federal money touched the research. The Supreme Court tossed the argument. (Full disclosure: I worked on amicus briefs for IEEE , AAUP, and IP Advocate opposing the idea that Bayh-Dole is a “vesting statute”.) If Bayh-D0le didn’t strip inventors of their rights and hand them to the university, then Stanford’s “whenever possible” clause would operate and the inventor would legitimately own, could assign, and the assignment was valid. Of course, the inventor was out his share of the quarter billion Stanford hoped to make from the litigation, and I suppose that a product helping AIDS patients was on the market wasn’t success enough for Stanford administrators.

    As for UC, the proposed “amendment” or “clarification” is another in a line of attempts by UC to claim that it is revising its policy to state “what it really meant”. Take a look at how CA courts handled that argument in the Shaw case, which involved UC trying to change its royalty sharing provisions in the patent policy.

    http://law.justia.com/cases/california/caapp4th/58/44.html

    It’s pretty damning, and it is directed at UC’s patent policy:

    “Nothing in the patent agreement hints at what the University now claims was its long-held desire that the Patent Policy’s inventor royalty provision not be incorporated into the patent agreement. The true intent of a contracting party is irrelevant if it remains unexpressed.”

    “We find no merit in the University’s suggestion that, as a public employee who is employed pursuant to statute, not contract, Shaw has no vested contractual right in his terms of employment, such terms being subject to change by the University.”

    “When a public employer chooses instead to enter into a written contract with its employee (assuming the contract is not contrary to public policy), it cannot later deny the employee the means to enforce that agreement.”

    The UC patent policy anticipates a three-step process of disclosure and evaluation of inventions followed by a request for assignment or a release of rights. Assignment may be to UC or to a party designated by UC (such as a research sponsor). A present assignment voids the whole process and claims UC owns when an invention is made (or, er, “conceived or developed”–not “reduced to practice”–as I said, it is all very sloppy).

    Of course, if the present assignment only operates after disclosure and evaluation and UC determining it should have ownership, then it does nothing for the Stanford situation, and merely changes the form of assignment from a request for assignment to a notice that assignment has taken place per the present assignment agreement. Perfunctory, but no real savings in time. It’s not like one can say, now that we have reviewed the invention, we claim we owned it as of the date it was made–the present assignment doesn’t allow one to go back in time if there’s a review step in policy. And if there’s no review step, then it’s a change in policy.

    Have I flogged it enough? There’s lots more. It’s about as inept a document as one can have, but the amendment makes it even worse. And for all that, if it is merely a clarification, there’s nothing to sign. If it is a change in policy, it should go through the official protocols for changing policy. And if UC is trying to change a condition of your *employment contract* by inducing you to sign, well that’s up to you whether you are better off with change or not. I can’t see anything that suggests UC thinks you would be better off with the change! Perhaps if they offered a $5K signing bonus it would be more interesting to consider. As it is, it is bluster and foolishness, but from a source that has the ability to make things painful.