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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