Sample Language for my UC Friends

Sample Language for my UC Friends Posted on November 30, 2011 by Dr. Gerald Barnett

I worked for six years in the University of California system, dealing with IP and research contracts. Given the current changes to patent policy being sent out to policy under the “the Supreme Court made us change policy, but this is not a change in policy, so sign here” strategy, here’s what I would be writing back to the Powers That Be. While everyone has to make their own choices, perhaps what follows might be helpful to folks trying to make up their minds.

1. A contract requires a meeting of minds. The University patent policy is set out here. As a condition of employment, I signed a Patent Acknowledgment (or Patent Agreement) that confirms my knowledge of these policy statements. “Clarifying” the “intent” of the Patent Acknowledgment is a necessary, bilateral matter.

2. As a matter of interpretation, contracts are often interpreted against the drafting party, especially where the other party (myself) is not allowed to participate in the drafting. The proposed changes in the Patent Acknowledgment represent a substantial change in my understanding of the agreement I have made, not only in the wording of the Patent Acknowledgement but also in its function. The policy statements that I have previously acknowledged do not support these changes, nor am I aware of any formal process by which these proposed changes have been discussed by the faculty prior to implementation.

3. The proposed insertion of "and do hereby assign" in the Patent Acknowledgement makes nonsense of wording a few paragraphs later where I agree to assign inventions only after the University completes a review of inventions that I disclose and then requests assignment. It cannot be both ways. Either the new present assignment operates or it does not.

4. Therefore, I do not agree that the proposed wording is not a change in policy: it most definitely is. I also do not agree that the proposed wording "clarifies the intent" of the policy statements. It rather does damage to those statements by placing the assignment obligation ahead of university review for ownership, while using the scope of interest appropriate for reporting of inventions in which the university may have an interest to now claim outright ownership.

5. Furthermore, I see no basis for a need to alter University patent policy or the Patent Acknowledgment as a result of the Supreme Court ruling in Stanford v. Roche. That ruling found that the Bayh-Dole Act was not a vesting statute, and therefore universities, to obtain ownership, must have other means to do so. The University has such a means in its present policy and practice, which do not rely on the assumption that no assignment is necessary when an invention has been made with federal support. The claim that a change is necessary has no support in the Supreme Court ruling.

6. For these reasons, I decline to agree with the proposed changes. I object that the University misrepresents both the intent of the original policy and the effect of the proposed changes. I argue that the University does not have a valid reason to require the changes. I do not see that the University has presented the proposed changes to the proper forums for review and discussion, and thus the proposed change in policy lacks authority within University rules of governance.

7. Therefore, I will not sign this new document with regard to my rights to inventions or obligations to the University. I request that the University withdraw this demand for my signature and conduct an inquiry into how such a policy change could be implemented without competent wording, with deceptive and unsupportable claims, and lacking proper review and approvals.