Category Archives: Agreements

Fenn and Shaw

Here are two court decisions at cross-purposes. In 1997, Shaw v The Regents of the University of California held that a patent agreement should be interpreted using common law of contracts and rejected the Regents contention that its patent policy … Continue reading

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Penn State’s Protection Racket, 24: Fiduciary Duty

Penn State’s policy on conflict of interest, HR91, uses language that might be used to describe fiduciary duties. Penn State “faculty and staff members,” as a matter of policy, must use “utmost good faith” in their “duties to the University … Continue reading

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

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, … Continue reading

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

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 … Continue reading

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Penn State’s IP Protection Racket, 4: The 1992 IP Agreement, con’t

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 … Continue reading

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Penn State’s IP Protection Racket, 3: The 1992 IP Agreement, con’t

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 … Continue reading

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Penn State’s IP Protection Racket, 2: The 1992 IP Agreement, Part A

Penn State manages its IP by means of an IP policy statement and an IP Agreement form. The policy statement made effective in 1991 requires various university personnel (including in the category “academic”–whatever that means) to “complete” an IP Agreement … Continue reading

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AAU Fools with Words, 2

Let’s look then at the AAU statement produced by the task force charged with–if we read the preamble correctly–finding better words to declare that university technology transfer operations are to advance the public interest. AAU starts with fake history: Before … Continue reading

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Key Concept 3: FOIL Technology

FOIL Technology FOIL is an acronym that stands for “Fragmented Ownership Institutionally Licensed.” Technology that is FOIL is fragmented across institutional owners that then seek to license their portion of the technology for development as a commercial product. FOIL is … Continue reading

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Key Concept 2: Substantial rights

Substantial Rights Substantial rights is a concept used by courts in considering whether an invention has been licensed or assigned. The substantial rights in an invention are the rights to make, use, and sell. If these rights are licensed exclusively, … Continue reading

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