The Curators of the University of Missouri (“University”) now requires all existing faculty, staff and new hires to execute a written invention assignment agreement for inventions that employees make within the scope of their University duties. As explained below, the written invention assignment agreement helps the University ensure that it can meet its obligations under its many sponsored research agreements, including federal grant awards that are subject to the Bayh-Dole Act. This document explains in more detail why we do this and the scope of the assignment for faculty and staff.
For more information not included below, contact um-research@missouri.edu.
#1: What is the Bayh-Dole Act?
The Bayh-Dole Act is a federal statute that created a uniform federal policy for the management of inventions and corresponding patents resulting from government-funded research. This policy is implemented through a standard clause that is inserted into federal funding agreements with universities. In general, under this clause, when the University receives a federal grant, the University may own the invention made under the award in preference to the government. In return for University ownership, the University must, among other things, grant rights to practice the invention to the federal government, handle licensing in prescribed ways, provide a portion of the royalties to the inventors, and report to the government on inventions.
#2:Why am I being asked to disclose and assign my Invention to the University via this process?
Inventions made by faculty and staff are governed by the University’s Collected Rule and Regulation (“CRR”) 100.020. Similar to other universities, CRR 100.020.D.2.(1) requires employees to disclose inventions to the University. Further, under CRR 100.020.D.1.a, our institution follows the tradition that an invention is owned by the University if made within the general scope of the employee’s duties for the University. This includes inventions made or developed with the use of University facilities or financing, and thus includes inventions made through external grants.
The University accepts both federal and non-federal grant money under contracts with the funding/sponsoring entity. These contracts often condition the funding support upon ownership provisions or upon the University’s handling of intellectual property rights for inventions in a certain manner. Importantly, changes in 2018 to the Bayh-Dole regulations for federally funded grants require institutions to have a written agreement in which certain employees (1) disclose promptly in writing to personnel identified as responsible for the administration of patent matters (which at the University is the campus technology transfer office) each invention made under the federal contract, (2) assign to the University the entire right, title and interest in and to each invention made under the federal contract, and (3) execute all papers necessary to file patent applications on inventions and to establish the government's rights in the inventions. Thus, the document you are being asked to sign helps ensure that the University can comply with its obligations to the federal government for such inventions.
Because employees are already required to disclose and assign inventions, the implementation of the written invention assignment agreement is largely one of timing.
#3: How does assignment relate to the Bayh-Dole Act?
Under the Bayh-Dole Act, institutions receiving federal awards are allowed to retain ownership of inventions upon the meeting of certain conditions. Assignment of the invention to the institution assures it can meet one of the conditions imposed by the Bayh-Dole Act in federally funded research agreements.
#4: What is the scope of the assignment?
The written assignment obligation applies only to inventions that faculty and staff are already required to assign to the University under CRR 100.020. This occurs whenever (1) your duties include research or investigation, and the invention arose in the course of such research or investigation and is relevant to the general field of an inquiry to which you have been assigned; or (2) the invention was in a substantial degree made or developed through the use of University facilities or financing, or on University time, or through the aid of University information not available to the public.
#5: Why does the written invention assignment agreement contain a “further assurances” clause?
The new Bayh-Dole regulations require persons working on the federal award “to execute all papers necessary to file patent applications on subject inventions and to establish the government's rights in the subject inventions.” This type of clause is called a “further assurances” clause because it is asking the person signing to do further acts – specifically execute papers – involving the invention patent filing. These types of documents may include oaths and declarations; however, it is difficult to provide a comprehensive list of documents that may be needed (especially if foreign patents are involved because the paperwork in each foreign country varies). The written invention assignment agreement contains a further assurances clause (clause (3)) in order to comply with the Bayh-Dole Act.
These types of clauses are common in invention assignment paperwork. For example, the University already includes a further assurances clause in the “Invention Disclosure Form” (a form that has been approved by the University’s Patent Committee), which states: “I hereby assign to The Curators of the University of Missouri all my rights in the invention disclosed herein, including any domestic and foreign patent applications related thereto, and I agree to sign such documents as may be required for this purpose, including but not limited to an assignment of the invention to the University in a form that may be recorded, a declaration as to inventorship, and power of attorney.” Likewise, the University requires inventors to provide further assurances in the patent assignment form that it records at the Patent Office.
That depends on the nature of the document being requested and the reasons for the inventor refusing to sign the document. However, it is important to understand all patentees, including the University, should not submit false or misleading information to the patent office. If a patentee does so, an infringer can challenge the patent and render it unenforceable under a legal doctrine known as “inequitable conduct.” Thus, if the University (typically through its outside patent attorney) asks an inventor to execute a document that the inventor believes is factually false or misleading (for example, the inventor believes the document does not properly state the results of an experiment), the inventor should contact the University technology transfer office and explain the issues with the document. The inventor, the technology transfer staff, and outside patent counsel can then work together to correct the document so that it is factually accurate.
#7: Why do I need to assign upon hire/at this time?
The requirement for University employees to assign their rights in inventions made within the scope of their duties to the University have been in place in CRR 100.020 for decades. However, recent changes to the Bayh-Dole regulations now effectively require a written assignment to be in place before conducting any work on a federally funded project. Thus, this written invention assignment agreement is an effort for University campuses to remain in compliance with its federally funded contracts and the Bayh-Dole regulations.
The written invention assignment agreement has the added benefit of avoiding problems other institutions have had with conflicting agreements that come about from faculty consulting agreements, material transfer agreements and non-disclosure agreements with other parties. Our faculty and staff are active with various collaborators, public and private, including those in industry. Sometimes those third parties will ask University employees to sign agreements that could be in conflict with their obligations to the institution or in conflict with the University’s obligations to sponsors of research. By having written assignments in place, the University reduces the problems that might occur when a researcher inadvertently assigns an invention by executing a non-disclosure agreement or consulting agreement that contains competing assignment language. If the University does not have a written invention assignment agreement in place, that might result in the University being unable to meet its obligations to the federal government under the Bayh-Dole Act, losing its rights to an invention, and the inventor losing his or her rights to royalties under University policies.
#8: Is our institution’s approach to requiring written invention assignment agreements unusual?
No. As the result of a Supreme Court case involving a major research university, most research institutions have followed a similar approach, or are in process of changing their procedures. See Stanford University v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011).
As noted above in FAQ 4, the University owns an invention whenever it is made within the general scope of the employee’s duties. This includes whenever the invention was in a substantial degree made or developed through the use of University facilities or financing, on University time, or through the aid of University information not available to the public. If the invention was conceived or first reduced to practice using federal funding, that would constitute University financing, among other things, such that the University should own the invention.
However, in some cases, ownership of an invention is less clear. If the inventor believes the invention was made outside the general scope of the employee’s duties, the inventor must first disclose the invention to the university, but may request that the Patent Committee determine the respective rights of the University under CRR 100.020.D.3. Under CRR 100.020.E.2.c, the Patent Administrator refers the claim to the Patent Committee, where the employee-inventor has the opportunity to appear before the committee to present evidence. The Patent Committee may also make an independent investigation of the claim. Based on these findings, the Patent Committee makes an appropriate recommendation in writing to the President of the University for appropriate action. Thus, the CRRs provide a mechanism to help resolve invention ownership disputes.
#10: What happens if I do not sign the written invention assignment form?
The University will evaluate the reasons for refusal on a case-by-case basis. Because CRR 100.020 forms a part of the employee’s employment contract with the University, the University would have contractual remedies available. Depending on the circumstances, the University would likely not permit the employee to work on a federally funded project until an appropriate written invention assignment agreement were in place.
Reviewed 2020-01-06