Category Archives: Agreements

Thinking about projects, small and big–5

Consider the implications of an assignment of an invention in the context of big projects and greater inventions. If one assigns an invention, having already granted a license to that invention, then the license follows the assignment–unless, of course, the … Continue reading

Posted in Agreements, Projects | Leave a comment

Thinking about projects, small and big–4

Let’s repeat, for the sake of emphasis. If a sponsor supports a project, and that project is part of a larger project, then the sponsor necessarily also supports the larger project. It doesn’t matter that there is separate accounting for … Continue reading

Posted in Agreements, Policy, Projects | Leave a comment

Thinking about projects, small and big–2

We are working our way through the idea of project–a succession of tasks to accomplish some purpose. A small project is a project in which there is just such a succession of tasks and some purpose. We can call a … Continue reading

Posted in Agreements, Policy, Projects | Leave a comment

Thinking about projects, small and big–1

Let’s consider “big” projects. A project can be bigger than any particular part of it described by a particular budget to support specific work. Similarly, an invention can be bigger than any given patent filed on some part of it. … Continue reading

Posted in Agreements, Policy, Projects | Leave a comment

The Bayh-Dole implications of “big” projects created by university policies and practices

In the usual depictions of the Bayh-Dole Act, the emphasis gets put on university ownership of inventions made with federal support. What is not pointed out is that Bayh-Dole not only allows (but does not require) such ownership, but makes … Continue reading

Posted in Agreements, Bayh-Dole, Policy, Projects | Leave a comment

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

Posted in Agreements | Leave a comment

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

Posted in Agreements, Policy | Leave a comment

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

Posted in Agreements, Present Assignment | Leave a comment

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

Posted in Agreements, Policy | Leave a comment

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

Posted in Agreements, Policy | Leave a comment