Penn State’s IP Protection Racket, 9: Rationalizations

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.

(2) the University’s compliance with contract terms under industry-sponsored research; and

There’s almost never a case that an extramural sponsor of research insists that the university own all “technology” made or developed in sponsored research–a sponsor might require a non-exclusive license or assignment of the technology or an option to negotiate an exclusive license–but none of these transactions has to involve the university as an intermediary owner. Whatever the situation, it’s not a matter of compliance with “contract terms.” The university can negotiate whatever terms it pleases. It is a gross distortion of the role of IP policy if university administrators require IP terms in industry research contracts that then “require” the university to “comply” with these IP terms.

In the ancient history of university patent policies, there often was a research exception–that whatever the patent policy, if a university agreed to a contract otherwise, then the contract terms controlled. In those ancient days, however, most university patent policies permitted faculty to own their inventions, and the research exception was used for cases in which an investigator agreed to contract terms that required other than individual ownership. You can see how corrupt the idea has gotten–now the research exception is, in essence, a bureaucratic back door to circumvent anything in policy that might allow inventors to own whatever they invent. All an administrator has to do is insert institutionally desired IP requirements into a sponsored research agreement and then demand that individuals comply with these requirements.

(3) the University’s responsibility to protect the intellectual property of our faculty and students. It is not intended to restrict the free exchange of scholarly information or prohibit free and open collaborations between scholars or scientists.

This rationalization is pure stupid. Where does the university come to have this “responsibility” to “protect” private IP? Does the university protect employee’s cars or houses? And what evil use of “protect” starts with “take away” rather than “subsidize”? What does “it” refer to in “it is not intended”? The IP Agreement? The assignment of all rights in RIP to the university? And what does it mean to have an “intention” in policy as distinct from what the policy does? We might note that what is not intended doesn’t have anything to do IP–people can exchange information and collaborate regardless of IP positions. What matters, rather, is the exchange of inventions and works of authorship, and collaboration in developing these things–and these things are exactly what a university ownership claim necessarily must restrict and prohibit. For it to be otherwise, the university would have to delegate IP management to the makers, conceivers, reducers, and developers of RIP. Har-har-har.

In the new IP policy, we then encounter a set of provisions largely unchanged from 1991–who is responsible for getting IP Agreements signed and the like. There is one interesting bit–the old disclosure language:

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.

Here’s the 1991 version:

University personnel have an obligation to disclose promptly to the Intellectual Property Office, through the cognizant University administrators, inventions developed, a) with University resources (facilities, funds, or equipment), or b) within the fields of expertise and/or within the scope of employment for which they are retained by the University.

In the 1991 version, “invention” has a broad definition, to include non-inventions. In the current version, RIP plays this same role, but now with a range of restrictions to research activities and the like. The “retains” language is, ahem, retained, but turned active, apparently to improve a sense without actually doing so. In either case, the “retain” language indicates a special relationship that is not employment generally nor any field of expertise generally. What’s strange is that the requirement to assign is broader than the obligation to disclose. Strangeness!


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