Now we can look at Part B of Penn State’s 1992 IP Agreement. Part B concerns extramural contracts and starts with another general statement:
I also understand that, whenever I am associated with activities which are financially supported by contracts and grants of certain Sponsors, the invention and patent provisions of the sponsor agreements and/or applicable institutional patent and copyright agreements may create additional responsibilities with respect to:
In simple words–I agree to comply with any additional responsibilities with regard to inventions and intellectual property set forth in extramural contracts entered into by the University. But here, things aren’t so simple. The general statement refers only to “certain” sponsors–which ones? And refers to “copyright agreements” of the university–what the heck is that, given that this, uh, thing, is the IP Agreement. What’s not stated, and should be, is that whatever these additional responsibilities are, they are required by the sponsor, not by the university. Otherwise, the university can change its policy simply by demanding provisions in an extramural research agreement that are contrary to its policy, and when the sponsor agrees to these provisions, gosh, the IP Agreement turns them into as good as policy, but without the bother of involving the Trustees.
In any event, the general statement puts what follows as a conditional–a contract might not create responsibilities. But there is a clever word trick here, since the IP Agreement is set up to trigger on the fact of an extramural contract, not the requirements of any given contract. Thus, the aim of the IP Agreement is to rationalize the university’s ownership claims to inventions made with extramural funding even when the extramural funding does not require university ownership and university IP policy does not require university funding unless the extramural contract does. For instance, Bayh-Dole does not require university ownership of inventions (yet), so a requirement in the IP Agreement that inventors assign inventions in compliance with extramural research contracts would not require the assignment of any inventions made with federal support. But this clever bit of wording makes it appear that the university takes ownership of such inventions anyway, merely because there is an extramural contract. Clever, but corrupt.
For grants, in this part B, there are three matters, and then another terminal constituent that is typically ambiguous but apparently applies to all three of the matters, not just the last one. The three matters are documenting and disclosing inventions, assigning inventions (and copyrights!), and “execution of papers.” It is fine to put folks on notice that these things might come up in extramural contracts. It would help to explain what “execution of papers” means. We might expect that this is an amateurish way of saying “assist with the patenting process.” We also might recognize a vestige of Bayh-Dole’s standard patent rights clause:
execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions
But in that case, the assistance requirement is spelled out. Not here, in part B of the IP Agreement. We look briefly at the four elements then of the terminal constituent, which expands on the three matters. Again, these four “responsibilities” are embedded in a sentence that’s conditional–these may be required, if an extramural contract requires them or the university’s IP policy requires them. It’s just that nothing in this part B is required otherwise. Taking the first element, it may be required:
documentation, including laboratory notebooks, where appropriate, must be maintained to adequately demonstrate that inventions or discoveries were conceived or first reduced-to-practice by me with the utilization of time, money or facilities charged to said contracts or grants, and copyrightable works vested thereunder must be submitted to the University.
Suddenly, rank amateur legaleze! “Said contracts” indeed–what said contracts? The imperative mood here is at odds with the subjunctive mood of the sentence that contains it–“must be maintained,” “must be submitted”–as if these are requirements of the IP Agreement and not possibilities based on new responsibilities created by an extramural contract. And for each thing, goofy walkbacks–“where appropriate”; “to adequately demonstrate.” We may demand, but only at one’s discretion, whatever. Again, whether time, money, or facilities are “charged” is immaterial in general to an extramural research contract. What matters is the statement of work, the statement of deliverables. This is true, especially, for federal funding agreements. Here’s the Bayh-Dole implementing regulations on the matter:
Notwithstanding the right of research organizations to accept supplemental funding from other sources for the purpose of expediting or more comprehensively accomplishing the research objectives of the government sponsored project, it is clear that the ownership provisions of these regulations would remain applicable in any invention “conceived or first actually reduced to practice in performance” of the project. Separate accounting for the two funds used to support the project in this case is not a determining factor.
It does not matter where work is “charged.” That’s just accounting, or accounting fraud. What matters is what work has been “planned and committed.”
What “vested thereunder” means with regard to “copyrightable” works is beyond me. Extramural contracts engage universities as independent contractors. No copyright can “vest” with an extramural sponsor. But “vested thereunder” must have sounded good to incompetent ears, perhaps an instance of the Dunning-Kruger effect, and so we have “vested thereunder” awaiting its day in court to be sorted out.
There’s an argument that IP policies this messed up result in voluntary invention practices–faculty assign though they could walk away–it’s just that few faculty have the desire or funds to fight bozo administrators with unlimited legal budgets.
The second element has to do with assignments:
inventions conceived or first reduced-to-practice by me in carrying out work under said contracts and grants, and copyrightable works created thereunder, must be assigned or licensed to Sponsors, if the University or Sponsors so request;
This requirement (again, it may show up in an extramural contract) is directed at assignment or licensing to a sponsor, not to the university. How can it matter that an invention “must be assigned” to a sponsor if the inventor has already agreed (against IP policy) to assign the invention to the university? Oh, consistency, that’s for small minds. It takes a truly incompetent one to write an IP Agreement for Penn State. Is this becoming a refrain? Shall I end each paragraph with this refrain? Is it so painful that paragraph after paragraph is just garbage–lofty, legalistic, demanding, fake-precise incompetent garbage?
What’s odd is that the university reserves the right to request that an inventor assign an invention to the sponsor, even if the sponsor does not request assignment. What is with that? What basis in IP policy is there for the university to have such a right? Why would anyone in their right mind agree to such a thing?
Third element, more goofiness:
inventions and computer software which utilized time, money, or facilities charged to said contracts or grants must be promptly reported to the University following:
(i) the completion of conception, or
(ii) the first actual reduction -to-practice, or
(iii) creation of software; and
Again, only if a “said contract” requires such things, but here’s the logical hole. Inventions must be “promptly reported” after any one of the three conditions. Thus, one might conceive of an invention and not report until “actual” reduction to practice–and that could be long after “constructive” reduction to practice by filing a patent application. See, that bit about the difference between “reduction to practice” and “actual reduction to practice” turns out to matter, if only to show again the amateurish nature of the 1998 IP Agreement. And look at software–I used to write code. When is software “created”? Is that with the first line of code? Or when some decides to stop coding? For all the goofy imperative, there’s nothing here that provides any guidance. A sponsor, anticipating how incompetent university IP folks might be, will simply require that investigators report everything that they do within scope, as they do it, say weekly or monthly, as a condition of getting the next quarter of funding. Even NASA does this with its “New Technology Report” requirements.
And one last potential requirement:
prior to completion of my association with work contracted pursuant to said contracts or grants, a complete disclosure of all software, instructional materials, inventions or discoveries conceived or first reduced-to-practice by me with the utilization of time, money or facilities charged to said contracts or
grants, and copyrightable works vested thereunder, must be submitted to the University.
Whew–“pursuant” and “said” plus another “vested thereunder” all in one bombastic sentence. What is a “complete” disclosure? Does this mean, all such stuff, or a complete technical description of each one, such as, say, a complete software manual? Isn’t enough that reportable items are reported, and if someone wants more information, they then can ask for it? Ah, but that would be decidedly non-bozo. Of course, it’s nonsense to require reporting of instructional materials conceived or reduced to practice. Doesn’t happen. A rewrite: “you may be required to provide to the university a final list of all deliverables prepared under an extramural contract, including inventions and software.” Of course, sponsors tend to want the reports sent directly to them, rather than requiring the reports to go to the university to be forwarded by administrators.
Thus, we have the meat of the IP Agreement–a set of demands that are outside of IP policy, plus a garbled mess of the tiny bits that are in IP policy, plus a long notice of what might be required by an extramural contract, but stated in the imperative, and without IP policy backing.
Then there is this:
I understand that this agreement is part of the terms of my employment; that any contract of employment or other
legally binding agreement entered into by me with the University after this agreement shall be considered to include
this agreement unless a provision of that contract of employment specifically modifies this agreement; and that the
responsibility set forth in Section (A),(3), will continue after termination of my employment with the University.
This provision is given as a fact–nothing here for the “I” to agree to. The IP Agreement is part of the “terms of employment.” We might ask just what those “terms of employment” otherwise are–for faculty, there’s an appointment letter giving rank, salary, and start date, with an annotation that the appointment is subject to compliance with policy and perhaps approval by the regents or trustees. The rest of this provision is just bizarre. The IP Agreement is part of one’s terms of employment. What is the fixation with subsequent university employment? Wouldn’t IP policy require a new IP Agreement? What is this “shall be considered” as distinct from “shall incorporate”? Who is doing the considering? Ah, heck. Who cares? It’s just a mess created by amateurs. Here, an IP Agreement claims that it inserts itself into any other agreement with the university unless that agreement “specifically modifies this agreement.” Huh? Why not simply exclude the agreement? And on what basis can the university exclude the IP Agreement, given that IP policy demands it? And if at this point the individual is asked only to acknowledge an understanding, how is it that the A.3 requirement continues after employment when the whole agreement is conditioned on employment? What is the mechanism that allows the assistance provision to survive termination of employment? Where is the consideration for that promise? I don’t see it, but then after working through this IP Agreement, there’s much not to see.
And finally, one last obligation:
If I am now or hereafter become a principal investigator or director of a University research, development, or other
type of project, I will determine whether each person who performs any part of the research or development work on
the project for which I am responsible (exclusive of clerical or manual labor personnel) has signed an appropriate
Intellectual Property Agreement; and if not, will obtain such additional Intellectual Property Agreements as are
necessary, and forward them to the Intellectual Property Office.
Well, here’s the IP policy requirement:
It shall be the responsibility of the appropriate budget executive or budget administrator to ensure that the University Intellectual Property Agreement is presented to, and signed by, persons appointed to or transferred to positions covered by this policy.
Not the PI or director of a project, but the budget executive or administrator. But the IP Agreement simply ignores policy. That’s par for this course.