We are looking at the Penn State IP Agreement in its 1992 form. Part (A) of the agreement sets out what appears on the surface to be a broad scope for inventions (and other stuff) to be assigned to the university, in two areas. The first area, (a), concerns the use of university resources. The second area, (b), is even more iffy and has to do with “field of expertise”:
I especially note the responsibilities set forth below. [no introductory element to the following sentence]
(1) to assign to the University (or its designee) all rights which I have or may acquire in inventions, discoveries, or rights of patent therein which are conceived or first actually reduced-to-practice by me . . .
(b) in the field of expertise and/or within the scope of responsibilities covered by my employment with the University;
Compare with IP policy to see the botch job. In the IP policy, this text pertains to the scope of what must be disclosed, not what must be assigned. But even then, folks can’t get the text the same. Is it that difficult?
within the fields of expertise and/or within the scope of employment for which they are retained by the University.
“Fields” becomes “field”; “scope of employment” becomes “scope of responsibilities covered by my employment”; and the terminal restriction “retained by the university” is simply dropped. The upshot is that the IP Agreement claims university ownership for a much broader scope of invention than the IP policy authorizes (and of course, the IP policy authorizes the scope only for disclosure, not assignment). It makes perfect sense that the scope of disclosure should be broad, to ensure the university has notice of all sorts of activity. And it makes perfect sense that the scope of assignment should be narrower than the scope of disclosure, because not all of what is disclosed ought to be claimed by the university. But perfect sense is not the standard in play here.
By introducing “responsibilities,” the IP Agreement changes “scope of employment” [scope of what the university may direct me to do and control what I do] into something more like “whatever activities I may take on of my own choosing and while continuing to be compensated by the university for whatever it asks me to do.” Lost altogether is the idea of “retaining” personnel for specific projects for which the university has a legitimate interest in ownership of resulting inventions.
Thus, the IP Agreement asserts an ownership claim that’s not authorized by IP policy, uses the scope of disclosure to be the scope of the university’s ownership claim, bungles the scope of assignment to be inconsistent with that of the IP policy’s scope of disclosure, and abandons the IP policy’s reliance on projects and “retaining” or “commissioning” work in which the university might expect to have a special interest in the results.
The second responsibility pertains to disclosure, and because of poor choice of sequence and definition, is forced to repeat the same bombastic scope:
to submit invention disclosures to the University following the completion of conception or the first reduction-to-practice of any invention or discovery which;
(a) made significant use of University facilities or resources, or
(b) is in the field of expertise and/or within the scope of responsibilities covered by my employment with the University;
The IP Agreement adds one new twist–the disclosure is to be “submitted” to the university only after an invention’s conception or reduction to practice has been “completed.” Since it is the inventor that decides when an invention’s conception or reduction to practice has been “completed,” disclosure is at the discretion of the inventor, provided that the inventor does not prepare and file a patent application (which would make it clear that the invention had been made–both conceived and reduced to practice).
If we consider the 1940 Penn State patent policy, we see that the roots of the IP policy are in the distinction between commissioning a project with a special employee contract (that is, the forerunner of the IP Agreement) and otherwise. If there’s no IP Agreement, even if the university sponsors the work, then the university has no ownership interest in any resulting invention. The 1940 policy’s “engaged or assigned” becomes the “retained” and “commissioned” in the 1992 IP policy. It’s just that administrators lusting after all the inventions they can get observe that the only way they can establish an institutional ownership claim is to support a project and require a special contract. In the flawed mind of the university administrator, this becomes the realization that any use of “resources” can be construed as university “financing” and therefore every employee must sign a special contract.
“Submit” in its way is disingenuous. “Submit” carries with it the idea of “submission of a manuscript for publication” or “submission of an invention for consideration by an invention management agent.” Submit, then, carries the idea of a voluntary professional action. But the IP Agreement itself has already gone rogue and asserted a general claim of university ownership to all inventions (patentable or not), so “submit” is the wrong word. “Report” or “disclose” is the proper term, as there is nothing to “submit,” nothing voluntary about the reporting, no question as to the claim of ownership made by university administrators (unauthorized as it is).
The third responsibility repeats the complexities bungled into the first two responsibilities, and adds its own:
to do whatever is required to enable the University (or its designee), at its expense, to obtain a patent upon any invention or discovery conceived or first reduced-to-practice by me;
(a) with the utilization of time, money or facilities charged to said contracts or grants or
(b) resulting from the significant use of University facilities or resources or
(c) in the field of expertise and/or within the scope of responsibilities covered by my employment with the University;
This is an “assistance” provision and is often found in invention assignment documents as part of the agreement that permits patent applications to be filed. Here’s the version from Bayh-Dole’s standard patent rights clause (37 CFR 401.14(a)(f)(2)):
The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to … execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.
The IP Agreement, however, cannot be bothered with specificity and instead obligates inventors to do “whatever is required.” That is, presumptively, whatever university administrators might demand–again, an agreement to agree. While an inventor is also an employee of the university, we might consider why the university cannot simply declare that assisting with patent applications is part of the scope of employment for all personnel assigned, directed, commissioned, or retained for research projects. What more is added by making assistance part of an IP agreement that is bounded by employment?
In a conventional assistance clause, where an inventor submits an invention for consideration to an agent, the inventor is not an employee. The assistance clause functions in these circumstances to ensure that the inventor will sign documents necessary to file patent applications (such as an inventor’s declaration and oath). That is, where the new owner of the invention would otherwise have no control over the inventor, an assistance clause ensures that the inventor will not frustrate the purpose of an assignment of invention before a patent has issued.
In a university case, an assistance clause has three roles. First, it covers the case in which the university does not have the power to require an inventor to assist. One such situation involves students, volunteers, and visitors–these folks are not employees. Since the IP Agreement makes an ownership claim based on use of resources (rather than as a condition of employment), it ends up having to deal with non-employees using an assistance clause. But of course, non-employees are not the subject to the IP Agreement here, since the premise of the IP Agreement is that completing it is a condition of employment, not a condition of using significant university resources. A second situation involves faculty. According to university policy on academic freedom, faculty have the freedom to publish. Since a patent is a publication, a university that asserts ownership of inventions for the purpose of obtaining patents is in fact demanding that it control faculty publication–university administrators may demand that the faculty inventor publish an invention in the patent literature, under that faculty member’s name.
If we were dealing with a special project, in which the faculty member had agreed to these requirements as a condition of receiving special funding or using special resources, then it would make sense to include a requirement that the faculty inventor publish in the patent literature. It does not make sense, however, in the general case unless university administrators repudiate their policy on academic freedom and the independence of faculty in choosing their research and how and when they publish the results of their research–you know, the stuff that the IP policy “encourages.”
The third role for an assistance clause is to deal with situations in which an employee who otherwise can be directed to assist leaves employment. We see this in the IP Agreement in the next to last paragraph:
and that the responsibility set forth in Section (A),(3), will continue after termination of my employment with the University.
The “whatever” in (a)(3) is, needless to say, ambiguous and should be up to the inventor to reasonably decide. Imagine a situation in which an inventor objects to the ownership claims university administrators make outside the authority of the IP policy, gets fired for objecting, and then is told he (or she) must do “whatever” the university demands to support the university getting a patent on the disputed invention. Given that there is no such “responsibility” to assist in Penn State’s IP policy, a reasonable interpretation of “whatever is required” is “whatever is required by IP policy at the time the IP Agreement was signed”–and that would be exactly nothing, nothing at all.
This third responsibility then states three classes of conditions under which assistance must be provided–and these are different from the IP policy and from even the other “responsibilities.” First, extramural contracts:
with the utilization of time, money or facilities charged to said contracts or grants
The contracts or grants here are part of the “projects” in the IP policy, but the “utilization of time, money, or facilities” has nothing whatsoever to do with ownership or patenting of inventions that might arise. The controlling element is the extramural contract itself. Even for federal funding, use of facilities is not a controlling element in determining whether an invention meets the definition of a “subject invention.” We will get to sponsors in the second part of the IP Agreement–here it is enough to notice that this first category is irrelevant here, since this part of the IP Agreement is not about extramural contracts, and that the category itself is constructed entirely wrong–it should focus on the requirements of any given extramural contract (and for that, policy should limit what university administrators can introduce into an extramural contract that runs outside of IP policy and agreement with investigators).
Then we get a repeat of significant university facilities or resources and field of expertise claims, with their lack of policy authorization and bungledness, despite the repetition.
The fourth and final “responsibility” has to do with copyright:
to assign all rights to copyrightable software and other instructional materials developed as a result of my employment and/or with significant use of University facilities or resources, or made in the field of expertise and/or within the scope of responsibilities covered by my employment, unless otherwise agreed to by the University.
“Copyrightable” still gets used, though it has no particular meaning since the U.S. joined the Berne Convention. Copyright happens. Copyright vests in works. Works are not “copyrightable.” They are subject to copyright or they aren’t. But amateur university administrators are clueless about such things and repeat whatever they see.
The copyright bit is bungled even further. There is no need to assign “all rights” in copyright in work for hire situations–work prepared within the scope of employment is as a matter of copyright law owned by the employer, as the author of the work. That leaves the use of resources prong and the expertise prong–neither of which involve work made for hire. For these prongs, the strategy here is to offer to assign all conforming works, pending a university decision to accept assignment or not. That is one interpretation of “unless otherwise agreed to by the University.” Another is that the university’s policy on academic freedom controls and represents a broad statement of what the university has “otherwise agreed to”–that the only areas in which the university’s copyright ownership claim applies is that of commissioned or retained work.
We leave it for the reader to sort out the stupidity of having a broad definition of invention in the IP policy, so that works of authorship are implicated throughout the IP Agreement’s use of invention, but at the last we hit a responsibility specific to copyright, as if the IP policy definition does not operate.
Perhaps the overall strategy behind the Penn State IP policy and IP Agreement is to create such a jumbled mess that only an administrator is authorized to sort it out in any given situation for whatever it is that the administrator wants. Or perhaps the strategy is simply not to care what the words say, formally, with careful interpretation appropriate to formal documents such as policy statements and contractual agreements–expecting that what the policy really does is authorize university administrators to demand most anything they want, being discrete not to piss off the Trustees and so misleading the Trustees with fake-o-graphic reports that make it appear that policy and law assert whatever it is that the administrators want.
Brief Quiz on Penn State’s IP Agreement, Part A
- Is Part A drafted within the authority of the IP policy?
a) yes b) no
- Is Part A drafted
a) incompetently b) corruptly c) both