Well, that has been quite the trip through Penn State’s IP apparatus. I worked through it briefly a few years ago, and then again last year, but never did the deep dive to see all the strange creatures that pass for policy.
The short form is that the policy creates a rather useless loop–policy insisting that the IP Agreement assigns inventions and whatnot to the university, and the IP Agreement insisting that any assignment is limited “to the extent specified in policy”–which is, nothing. Other than that, the apparatus is a convoluted exercise in trying to force people to agree to the policy by contract, all the while creating goofball definitions, making unfounded assertions and wildly expansive claims, misrepresenting federal law, and operating outside of formal policy. Okay, so typical for a university IP policy drafted by the clueless, the negligent, and/or the corrupt. What a needless mess to sort out. And this, this is what it means to be “expert” in university intellectual property management?
Let’s discuss, now, the role of “protection” in Penn State’s policy apparatus. Here’s a bit from Penn State’s “An Inventor’s Guide to Technology Transfer“:
Look at what’s communicated. “Protect Your Invention.” “Filing an invention disclosure with the Office of Technology Management is the first step in protecting your intellectual property.” “Your” is silly, because the whole point of Penn State’s patent policy is to ensure that no inventor ever owns any invention made in or around the university.
In two sentences we go from invention to intellectual property, as if these are somehow the same thing. And in the next clause (why the colon?–geez, slop), things change again. Now it’s “Penn State technology,” not “your” anything. But there we have, again, “protecting” as the first item of business. By the next sentence, an office “reviews the information for patentability.” What information? Information is not patentable. One might review a reported invention for patentability. Why is it so difficult for someone to be direct? And finally, this office will decide whether to file a patent application (inventors don’t have any say in the matter), “based on the novelty and utility of your invention.” This, too, is garble. One might determine whether an invention is patentable based on a review of “novelty and utility” (as well as “non-obviousness”)–but the decision to file a patent application does not depend only on whether an invention may be patentable.
The decision to file an application depends predominately on what one expects to do with a patent on the invention. That is, filing a patent application based on an assessment that an invention may be patentable is about the stupidest organizational practice one can devise. About here in the guide would be the spot to indicate just how university administrators decide why to file a patent application. Perhaps it is “marketing…inventions to companies for development and commercialization.” The implication is that all inventions will be subjected to this effort–marketed, and for development and commercialization (and not for, say, use, or to form a standard). The further implication is that inventions must be “developed”–without any structure to what it means, in general, to “develop” an invention beyond being invented. Is that, like, getting the invention to work in a reliable way, or in a way that isn’t so complicated, or can be produced for a profit? Perhaps–but again, the idea put out there is that “development” is a general property of every invention made at the university. If that isn’t the case–and it almost never is–then you would think that the university might note that here–“for those inventions that to be used at all require substantial development into the form of a commercial product at private expense with only one investor possible, the OTM considers whether patenting….” But no, not here.
The use of “your” in this guide is a strange one, even disingenuous. In what sense is a patentable invention made at Penn State one’s personal invention, a “your” invention?
We have been through Penn State’s policy history and two of its IP Agreements. We found that the IP policy requires two things–disclosure of certain inventions and signing an IP Agreement. The IP Agreement, in turn, demands that employees acknowledge their responsibilities, including “abide by” University policy and procedures and to assign inventions (and whatever else) to the university, but only “to the extent specified by University policy.” All this apparatus only to formally require assignment of nothing, nothing, nothing at all. But the impression is that by acknowledging the responsibility to assign, combined with an expansive statement of potential scope (the scope for disclosure, and even that expanded), somehow there’s an obligation that there is also an obligation to assign this stuff, regardless of the limitation “to the extent specified by University policy”–not by, say, university “procedures.” Just policy. Remember, this is a formal assignment clause. Words ought to mean something in such clauses.
There’s the strange idea, too, in the IP Agreement that handing over inventions is “consideration” for getting employed by or appointed to (or even associated with) the university. There’s the petty legal maneuvering of “agreeing” to the “terms of the Intellectual Property Polices and Procedures currently in effect.” That is, agreeing to agree to any “subsequent revisions” in the terms of the university’s policies. And expanding the agreement from the policies to include any procedures as well, even though those procedures may not have any standing under policy. In essence, these expansions make whatever contract that might be formed involve an “agreement to agree”–that is, submit to the whims of university administrators. Not a contract. It’s nonsense, but expensive nonsense.
Look at the Intellectual Property Policy, then.
The protection of research intellectual property with commercial potential is an essential aspect of the technology transfer process.
Utter freakin’ garble. Intellectual property is the means to “protect” inventions, discoveries, works of authorship, and the like from exploitation by others, if one believes that use by others might damage the inventions (and the like) or damage the inventor. If we want to be careful with our use of words, one does not “protect” intellectual property; one uses intellectual property to “protect” research assets. And it’s only “protection” if there’s something that needs to be “protected.” In a university, where publication and public use of research findings appears to be the default, it would take some special reasoning to show that research findings need “protection.” But Penn State’s policy does not appear to mean “protection” in any of these senses. There’s a special sense. I’ll help you discover it.
Notice, too, that in Penn State’s assertion this “research intellectual property” is restricted to that having “commercial potential”: “research intellectual property with commercial potential.” Before we jump to the possibility of understanding this restriction, we must note that “research intellectual property” is a defined term and so doesn’t mean what the words might suggest. Here’s the policy definition:
Research intellectual property is the term used to describe the discoveries, inventions and creations with potential commercial value that result from research activities.
So the definition is actually a description: “the term used to describe”–but by whom? It’s not a general term. Who would limit “research intellectual property” only to things with “commercial potential.” Nor would one formally define RIP in generic terms of subject matter in which intellectual property might vest. The intellectual property is the patents and copyrights in certain work products of research–patentable inventions and original works of authorship. There’s no need for the use of “intellectual property” in any specially defined way if one uses, simply, patents and copyrights, and defines an invention as one that “is or may be patentable” and a work as an “original work of authorship fixed in any tangible medium of expression.” And these are standard definitions and would work to limit an IP policy to, hey–imagine this–statutory IP. The purpose of a standard definition would be to exclude inventions that can’t be patented and works of authorship that aren’t original, and to exclude trade secret claims and any other strangeness.
But here, the definition shows up as bespoke, but made to appear to be common usage: “used [by somebody, no doubt official] to describe.”
It’s the term that Penn State administrators have adopted to confuse most everyone. But in what sense does RIP describe “discoveries, inventions and creations with potential commercial value”? And what the heck is a “creation”? And what is a “potential commercial value”? And how is “potential commercial value” different from “commercial potential”? It’s like people writing (and approving) this policy don’t really care what they write. “Commercial potential” is directed at the possibility of use in commerce or development as a commercial product; “potential commercial value” is directed, by contrast, at the financial prospects of an invention–that is, people might make money exploiting the invention.
In either case, the rhetoric of the policy is directed, apparently, to how “intellectual property” can be used to prevent research use or DIY use or collaborative development if someone (a university administrator, apparently) decides that speculative investors might derive a benefit from monopoly “intellectual property” positions that “protected” against research, DIY, or collaborative use.
The policy is directed to the bespoke definition of “research intellectual property”–if an invention lacks “commercial potential” or “potential commercial value,” then it’s not within the policy. But there’s no indication who determines “potential.” And what about an invention that lacks “potential” when it is first disclosed but later develops “potential”? Is the potential to later develop potential also potential? What about an invention that an administrator asserts has potential, but without any justification? Can the invention later come to lack that potential, and so fall back outside the university’s claims? Who could show that potential is now lacking, given that potential means, basically, a hope or expectation for the future. One might say that an invention has potential for as long as an administrator hopes, which could be a long time. Like I said, it’s freakin’ nonsense. Almost anything then could have “potential” if an administrator hopes it will. And we still don’t have any clue about whether “commercial potential” means “likelihood that the university could make money dealing in the patent rights on an invention” or “that commercial concerns might find an invention useful in their operations” or “that a company might consider a product based on the invention worth making” or “that investors might be willing to speculate on the value of the patent rights, provided they get a monopoly interest.”
Even “that result from research activities” is ambiguous. This is not so much a definition as it is an explanation of a naming convention. “Research intellectual property… results from research activities.” Research inventions are inventions resulting from research activities. Big whoop. But what is a “research activity”? Surely not any activity that produces an invention (or discovery, or creation). We don’t know, of course, because the text is garbage, to be interpreted by administrators at their whim. We might argue that a research “activity” must be an organized research project–something with a funding agreement and a budget. But who is to say?
Given that the Penn State policy attempts to create an adhesion contract, and such contracts are commonly interpreted against the drafting party, it would appear that it is up to each inventor to determine what the policy means here, where there is such ambiguity.
Most research intellectual property developed at the University can be protected by patents, but some University research intellectual property (i.e. software) is more appropriately protected by copyright. Although some research intellectual property may be protected by trademark or trade secret, it is rare for the University to utilize these methods of protection.
This bit was written by a monkey working at a typewriter, one of the outtakes in trying to write Hamlet. Patents “protect” only those inventions and discoveries that are new, useful, and non-obvious and directed to patentable subject matter, and contemporaneously recognized by their inventors as inventions. So patents cannot protect “most research intellectual property” because patents don’t protect creations and won’t “protect” most university research discoveries or inventions. “Software” shows up as “protected” by copyright “more appropriately.” But this, too, is nonsense. Copyright vests in software code as it meets the definition of copyright law–original work of authorship fixed in any tangible medium of expression. “More appropriately” is meaningless. Copyright happens. Perhaps what is meant is that “patent protection” is not available for some software, but the university will claim it anyway, as if it were an invention–or, er, a “creation.”
By the time we are at “protecting” “research intellectual property” by “trademark” we have stretched the idea of “protection” to goofy levels. How could a trademark possibly “protect” an invention? No, a trademark does not protect an invention or a work of authorship, though it might be associated with an invention or work of authorship. A trademark connects a mark owner with goodwill in the marketplace associated with a good or service or membership or certification. It protects a mark owner from business practices that would create a likelihood of confusion in the market place with regard to the owner or controller of quality of a given good or service (or membership or certification). Or, we might say, the trademark is used by the mark’s owner to protect the public from such likelihood of confusion. It’s just goofy to think that a trademark might “protect” Penn State’s RIP.
What, then, is Penn State’s fixation on protection of “PSU IP” (as the current IP Agreement has it, disregarding IP policy definitions) all about? It would appear that “protection” means to protect inventions and works of authorship from their inventors and authors. The idea is that, contrary to the public purpose of intellectual property laws, university administrators assert that institutional ownership is better than what public policy provides (in the case of patent law, the U.S. Constitution and common law; in the case of copyright law, the Berne Convention and federal copyright law that implements the U.S. treaty obligations). It is better, so the Penn State IP policy and IP Agreement assert, that institutions own such works than that inventors and authors do so.
Institutional ownership serves the public interest, and so inventions and works of authorship must be protected from inventors and authors. Perhaps. At least it is a proposition that can be examined, even if it lacks any standing in federal law. The assertion, however, is not so general. The public interest, so it is claimed, is served by “commercialization,” by realizing “commercial potential” and “commercial value.” For this, so the claim goes, there must be IP “protection”–that is, research assets must be owned, and owned by the institution that hosts the work leading to their creation. We are not even talking about employment, but only that bureaucrats should manage creative work simply because they manage the resources (paid for by sponsors) that support independently chosen and specified research.
Thus, we see the full extent of the Penn State protection racket:
- IP protects inventions from inventors.
- IP protects inventions from research use, DIY use, and collaborative use.
- IP protects inventions from non-exclusive access, from commons, from standards.
- IP protects inventions from competitive development.
- IP protects inventions from competitive licensing approaches.
It’s not even a “bureaucrat’s thumb in every innovation pie” as a model of publicly spirited innovation. It’s rather, “no innovation but for a bureaucrat’s thumb in the bite” or “no innovation but that produced after speculative monopolists trade on IP rights for future value.”
What a wretched protection racket operating at Penn State.