Research Enterprise

The current Penn State IP Agreement preserves many of the problems of the 1992 version, which we have previously discussed. Let’s look at the new, modern problems that the current IP Agreement adds to the mess.

PSU IP–The IP policy concerns with regard to disclosure and an IP agreement are specific to research intellectual property, for which it provides a definition. But the new IP Agreement conflates all forms of IP–research, instructional, and scholarly–and bundles these as “PSU IP,” for which the IP Agreement states an expansive claim of institutional ownership, even though this claim is itself outside of the IP policy’s authority. The substitution of PSU IP for RIP is particularly nasty, expanding the institutional claim of ownership far beyond what previous policy concerned itself with, namely, compliance with extramural research contracts.

In fact, the entire section of the 1992 IP Agreement pertaining to research contract compliance has been removed. For the 1992 IP Agreement, there were two drivers for institutional ownership. The first is whatever has been commissioned or otherwise expressly contracted for the by university. That part has no need of a generic IP Agreement. All that’s needed is for the policy to authorize the creation of a standard IP Agreement to be used in all such situations involving special commissioning of research work that might lead to inventions, where the inventions to be assigned are those that are deliverables of the commissioned project (“find a way to improve the air conditioning in the big lecture hall”). Rather than draft a generic IP Agreement with nebulous definitions and requirements, draft a base IP Agreement and supply the specifics at the time of commissioning, reducing the ambiguities, uncertainties, guesswork, and opportunities for administrative bombast and abuse of authority. Continue reading →

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. Continue reading →

We are working through Penn State’s current IP policy. We have noted that the IP policy asserts that the IP Agreement, which many categories of people must sign, requires assignment of IP to the university, but the IP Agreement itself qualifies any such assignment by whatever it is that the IP policy “specifies,” and of course, look as we might, we don’t see that the IP policy specifies anything. An RIP loop, as it were.

After listing various offices that have various responsibilities for research and IP, we get this:

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.

Now we deal with “University personnel”–why again was that big long hairy random list with all the categories included and then not used? What makes personnel “university” personnel? Gosh, who cares! It’s bombast style. The policy asserts that people have an obligation, but how does that obligation arise? No matter here. People must “disclose research intellectual property” to the Office of Technology Management–but not just any RIP, but only RIP “developed with University Resources” [for which there’s another definition, here marked by capitalization, unlike RIP, which is not capitalized in the policy] or “within fields of expertise” or “scope of employment” “for which the University retains them.”

We might note that the claim to reporting here expressly reaches beyond the scope of employment. The use of resources may have nothing to do with employment. (In which case, Penn State has a conflict of interest policy ready–for another time.) Continue reading →

Let’s move to the second paragraph of the Penn State’s current IP policy, which continues the university’s fixation with categories of personnel who must “complete and sign” an IP Agreement:

As a condition of employment, the Intellectual Property Agreement is required to be completed and signed by individuals first appointed or transferred to the following classification categories:

(1a) executive, administrator, academic administrator, and academic throughout the University; (b) faculty, staff exempt, staff nonexempt, and technical service in academic or academic service units throughout the University;

(2) for any existing employee in the above classification categories who has not previously signed this IPA;

(3) graduate assistants/fellows/trainees at the time of their first appointment; and

(4) undergraduate/graduate students, postdoctoral trainees/research associates, wage payroll employees, visiting scholars/scientists/students, emeritus/retired faculty and others who may be in a position to make, conceive or reduce to practice inventions or otherwise develop technology.

Continue reading →