Penn State’s Protection Racket, 17: Academic Freedom

Posted on August 22, 2017 by Gerald Barnett

Here’s the opening of Penn State’s policy on academic freedom (HR 64):

Academic freedom refers to the environment provided by the University that permits faculty members to engage in their scholarly pursuits of teaching, research, and related activities at institutions of higher education.

This, then, is the “framework” that matters. The university provides an environment for faculty to do their work–including research and “related activities.”

Academic freedom thus embodies the conditions necessary for the University to fulfill its mission of creating new knowledge and of effectively communicating accumulated knowledge and understanding to students and to the community at large.

The university fulfills its mission when it provides academic freedom to its faculty. The university’s mission is fulfilled by faculty pursuing their teaching, research, and related activities.

With academic freedom comes “academic responsibility”:

Academic responsibility refers to the duty and obligation of all faculty to pursue their academic pursuits with forthrightness, recognizing that while all members of the University have the right to express their own views and to hear the views of others expressed, as well as the responsibility for according the same rights to others, they also have a duty to make it clear when they are not speaking for the institution in matters of public interest.

That is, the duty faculty have to the university is to pursue their work “with forthrightness.” Continue reading →

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Penn State’s Protection Racket, 16: Entrepreneurial Activity

Posted on August 21, 2017 by Gerald Barnett

We worked through Penn State IP policies past (1940, 1991) and current, looked as well at the weirdness that is the IP Agreement (from 1992 and current), and discovered that for all that apparatus–poorly conceived and drafted–the only formal requirements are that inventors disclose an ambiguously broad set of things they make and that they sign an IP Agreement that purports to assign all these things to the university outright, before they are made, except only “to the extent specified” by policy, and that is, exactly nothing because policy does not specify anything to be assigned.

The IP Agreement turns a policy requirement into a private contract and, as an adhesion contract, favors the non-drafting party in any ambiguities. Where there are ambiguities, it is what an inventor reasonably determines that she or he has agreed to that makes a “meeting of the minds” that in turn makes an agreement “legally binding.” That’s where the Shaw court went, at least.

If all the IP Agreement does is claim that each potential inventor has agreed to whatever administrators say they have agreed to, then the IP Agreement is not a contract. If the IP Agreement claims that potential inventors have agreed to whatever the university subsequently puts in policy (or procedures), again, that’s an agreement to agree and not generally enforceable (though the Fenn court decided otherwise). For all that, university policy already provides that faculty will follow “university regulations.” So what does an IP Agreement (thus drafted) do beyond what’s already in policy? Nothing but add ambiguity and limit the university’s ability to manage policy as a means of distributing administrative responsibilities. Continue reading →

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Penn State’s Protection Racket, 15: The Moloch Administrator

Posted on August 18, 2017 by Gerald Barnett

The current Penn State IP Agreement preserves many of the problems of the 1992 version, which we have previously discussed. Let’s look at the new, modern problems that the current IP Agreement adds to the mess.

PSU IP–The IP policy concerns with regard to disclosure and an IP agreement are specific to research intellectual property, for which it provides a definition. But the new IP Agreement conflates all forms of IP–research, instructional, and scholarly–and bundles these as “PSU IP,” for which the IP Agreement states an expansive claim of institutional ownership, even though this claim is itself outside of the IP policy’s authority. The substitution of PSU IP for RIP is particularly nasty, expanding the institutional claim of ownership far beyond what previous policy concerned itself with, namely, compliance with extramural research contracts.

In fact, the entire section of the 1992 IP Agreement pertaining to research contract compliance has been removed. For the 1992 IP Agreement, there were two drivers for institutional ownership. The first is whatever has been commissioned or otherwise expressly contracted for the by university. That part has no need of a generic IP Agreement. All that’s needed is for the policy to authorize the creation of a standard IP Agreement to be used in all such situations involving special commissioning of research work that might lead to inventions, where the inventions to be assigned are those that are deliverables of the commissioned project (“find a way to improve the air conditioning in the big lecture hall”). Rather than draft a generic IP Agreement with nebulous definitions and requirements, draft a base IP Agreement and supply the specifics at the time of commissioning, reducing the ambiguities, uncertainties, guesswork, and opportunities for administrative bombast and abuse of authority. Continue reading →

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Penn State’s Protection Racket, 14: Assignment and Present Assignment

Posted on August 17, 2017 by Gerald Barnett

Here’s Penn State’s current IP Agreement’s sort-of assignment clause:

In so agreeing, I especially acknowledge my responsibilities:

(1) to assign and do hereby assign to the University (or its designee) all rights which I have or may acquire in inventions, discoveries, rights of patent therein, software or courseware which are conceived, reduced-to-practice [sic], or authored by me to the extent specified in University policy: 

(a) with the use of University facilities or resources, or

(b) in the field of expertise and/or within the scope of responsibilities covered by my employment/appointment/ association with the University (hereafter PSU IP)

Especially. Where to start with this nasty mess? “Especially” is funny. Apparently though all responsibilities are required, some are “especial.” What is the difference? Continue reading →

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Penn State’s Protection Racket, 13: Condition or Consideration?

Posted on August 16, 2017 by Gerald Barnett

The Penn State IP policy makes signing the current IP Agreement a “condition of employment.” But the IP Agreement itself asserts that the agreement is “in consideration” of “employment/ appointment/association.” Somehow things are reversed. In a normal employment relationship, payment is consideration for work. That’s the fundamental deal–if you work, I will pay you. The pay is consideration that makes a contract, so that if you do work, then I will be required to pay you. But here, rather than making clear that work includes delivery of IP rights in work products, instead we are told that the agreement to “abide by” the IP policy is “in consideration” of “employment”: “we pay you to work for us, and you pay us to work for us, too.” Deeply strange.

Perhaps “in consideration” does not mean “as compensation offered to my employer for employing me.” Maybe it merely means “Taking into account my employment” or “In thinking about my employment” or something oddly contemplative, considering thing like that. But such a reading makes little sense. One may as well write “I agree to the IP policy.” That would be direct, though not a drafting style preferred by university administrators, especially ones that have adopted a clueless bombast style. Continue reading →

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Penn State’s Protection Racket, 12: Policy and Contract

Posted on August 15, 2017 by Gerald Barnett

Policy in a university distributes authority, identifies purposes, and establishes procedures. Policy, for instance, establishes the conditions for faculty appointments. But the actual appointment of a given faculty member requires an act by an administrator on behalf of the university. The policy does not replace the executive action–someone still must act on behalf of the university. The policy identifies who may act and in what ways. No one is appointed by rule, only by an executive action.

Similarly, IP policy may establish the authority of administrators to require assignment of patentable inventions, but the policy itself cannot simply take ownership of patentable inventions by rule. Administrators, if authorized to contract with individuals with regard to rights in patentable inventions in certain situations, must then negotiate such contracts to establish the university’s rights (or any other party’s rights). Absent such a contract, rights vest as provided by law (common law generally; some states have laws that appear to disrupt common law).

We might say, university IP policy then establishes a basis for changing by contract the defaults of patent and copyright laws.  The reasons for doing so, apparently, rest in arguments that public policy of patent and copyright law defaults is not acceptable, without modification, to the operation of the university, and that required changes to those defaults creates IP management more favorable to the public interest (or to the university, at least, as a stand-in for public interest). In this argument we see the outline for a claim to a public covenant that runs with patents and copyrights attached to work produced at a university. It’s just that the public covenant arises on the university policy side rather than on the federal patent law or federal copyright law side. Continue reading →

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Penn State’s Protection Racket, 11: The 1992 and current IP Agreements

Posted on August 14, 2017 by Gerald Barnett

We have been through a lot of Penn State policy now. We have looked at the 1940 IP policy, the 1991 IP policy, and the current IP policy. We have also looked at the 1992 IP Agreement and compared it with the 1991 IP policy, and the current IP Agreement in the context of current IP policy. Now we can look at how the IP Agreement has changed. We have touched on some of these changes already, but here we will work through the changes in detail.

Oh, I know, it likely doesn’t matter. No one at Penn State (I expect) will give a rat’s ass what the words say in their policy documents. It’s what administrators assert that matters, not what someone finds by carefully reading policy. Perhaps Penn State should have a policy requirement that personnel, if they read and understand policy, must not read carefully and must wait to have their understanding confirmed by administrators, who are expert in not reading carefully and so may guide others to an understanding that administrators will approve of.

In 1991 Penn State had an IP policy that required university personnel to sign an IP Agreement and stipulated that personnel had a “personal obligation” to disclose inventions (defined broadly and strangely to include non-inventions). The IP Agreement, in turn, required personnel to “abide by the terms” of the IP policy. Sort of stupid, but mostly harmless in its way. The part that wasn’t harmless, though, was that the IP Agreement produced the next year, in 1992, required personnel to assign all inventions to the university that were within the scope of what the IP policy required to be disclosed. Continue reading →

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Penn State’s IP Protection Racket, 10: Copyright

Posted on August 11, 2017 by Gerald Barnett

The new Penn State IP policy preserves the start of the 1991 policy paragraph that takes up copyright, but adds additional garbleness. No longer are authors “urged” to use university management services. Instead:

University-directed works are those created at the specific direction of a University unit for the University’s ownership and use.  Instructional Intellectual Property will be deemed a University-directed work if it is created pursuant to a written agreement between the faculty member or staff member and the University unit or if the work is considered University-directed by the standing policy of the unit.

This sounds nice, but it isn’t nice at all. The “University-directed” part is entirely usual in university copyright policies. Authors own what they do unless they enter into an agreement–voluntarily–that provides otherwise. That makes sense, especially in light of policies on academic freedom. But the second part means that any university “unit” can simply declare some works “directed” and thus comes to own those works by declaration. The policy here gives administrators the authority to expand the definition of “Instructional Intellectual Property” however they wish. Nasty. Continue reading →

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Penn State’s IP Protection Racket, 9: Rationalizations

Posted on August 10, 2017 by Gerald Barnett

Penn State’s new IP policy adds a “Note” that attempts to rationalize the requirements of the policy. The 1991 policy also had a “Note” in the same location, but that note was directed to an entirely different purpose, having to do with reporting requirements of the various listed “units” involved in the categories of personnel who must sign an IP Agreement. In the new IP policy, it’s an entirely different “Note,” discussing why anyone has to sign the IP Agreement. We will take it slow, bit by bit (the note is in italics in the policy, but that gets changed to regular font when I hit the WordPress quote function):

Please Note: The requirement to have individuals identified in item 2., above, sign an intellectual property agreement arises from: (1) the University’s obligations under the Federal Bayh-Dole Act to patent and effectively transfer inventions arising from Federally sponsored research results to industry for the public benefit and to grant the government a license to use such inventions for government purposes;

Item 2 concerns all those folk who signed the previous IP Agreement, which was created well after Bayh-Dole went into effect. It’s just that the university does not have any obligations under Bayh-Dole (which applies to federal agencies) that require the university to own inventions, nor under the standard patent rights clause. The standard patent rights clause does not require universities to own invention, does not require universities to patent inventions, does not require “effective technology transfer,” and does not require transfer to be to “industry.” Only if the university acquires an invention is it obligated to file a patent application, and even then there is no obligation for technology transfer–a university could develop the invention itself and be fully in compliance with the standard patent rights clause.

While there are provisions in Bayh-Dole that address “the public benefit” to make it clear that subject inventions are not ordinary inventions and the patent property rights in subject inventions are also not ordinary patent property rights, there’s nothing in Bayh-Dole that makes university ownership an obligation. Only when a university acquires ownership does Bayh-Dole kick in. One might say that under Bayh-Dole, the public interest must be protected because a university has acquired rights. In Bayh-Dole, uiversity ownership of inventions made with federal support is a threat to the public that must be mitigated by legislation. That many university administrators turn this into a virtue shows just how clueless they are. Continue reading →

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Penn State’s IP Protection Racket, 8: Disclosure

Posted on August 9, 2017 by Gerald Barnett

We are working through Penn State’s current IP policy. We have noted that the IP policy asserts that the IP Agreement, which many categories of people must sign, requires assignment of IP to the university, but the IP Agreement itself qualifies any such assignment by whatever it is that the IP policy “specifies,” and of course, look as we might, we don’t see that the IP policy specifies anything. An RIP loop, as it were.

After listing various offices that have various responsibilities for research and IP, we get this:

University personnel have an obligation to disclose promptly to the Office of Technology Management, through the cognizant University administrators, research intellectual property developed either with University Resources or within the fields of expertise and/or within the scope of employment for which the University retains them.

Now we deal with “University personnel”–why again was that big long hairy random list with all the categories included and then not used? What makes personnel “university” personnel? Gosh, who cares! It’s bombast style. The policy asserts that people have an obligation, but how does that obligation arise? No matter here. People must “disclose research intellectual property” to the Office of Technology Management–but not just any RIP, but only RIP “developed with University Resources” [for which there’s another definition, here marked by capitalization, unlike RIP, which is not capitalized in the policy] or “within fields of expertise” or “scope of employment” “for which the University retains them.”

We might note that the claim to reporting here expressly reaches beyond the scope of employment. The use of resources may have nothing to do with employment. (In which case, Penn State has a conflict of interest policy ready–for another time.) Continue reading →

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