Research Enterprise

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 and grants of certain Sponsors, the invention and patent provisions of the sponsor agreements and/or applicable institutional patent and copyright agreements may create additional responsibilities with respect to:

In simple words–I agree to comply with any additional responsibilities with regard to inventions and intellectual property set forth in extramural contracts entered into by the University. But here, things aren’t so simple. The general statement refers only to “certain” sponsors–which ones? And refers to “copyright agreements” of the university–what the heck is that, given that this, uh, thing, is the IP Agreement. What’s not stated, and should be, is that whatever these additional responsibilities are, they are required by the sponsor, not by the university. Otherwise, the university can change its policy simply by demanding provisions in an extramural research agreement that are contrary to its policy, and when the sponsor agrees to these provisions, gosh, the IP Agreement turns them into as good as policy, but without the bother of involving the Trustees. Continue reading →

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 university, in two areas. The first area, (a), concerns the use of university resources. The second area, (b), is even more iffy and has to do with “field of expertise”:

I especially note the responsibilities set forth below. [no introductory element to the following sentence]

(1) to assign to the University (or its designee) all rights which I have or may acquire in inventions, discoveries, or rights of patent therein which are conceived or first actually reduced-to-practice by me . . .

(b) in the field of expertise and/or within the scope of responsibilities covered by my employment with the University;

Compare with IP policy to see the botch job. In the IP policy, this text pertains to the scope of what must be disclosed, not what must be assigned. But even then, folks can’t get the text the same. Is it that difficult?  Continue reading →

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 and states that these personnel are obligated to disclose certain inventions to the university, where “inventions” means “inventions and non-inventions.” (Policy HR76 distinguishes “academic employee” from tenure-track faculty and graduate students, so that much at least is clear.)

Let’s look then at Penn State’s 1992 IP Agreement. The IP Agreement is divided into two parts, A and B. Part A covers IP policy requirements. Part B covers sponsored project requirements. First, there is a general preamble:

I understand that my employment with The Pennsylvania State University (hereafter referred to as the University) may be, at least in part, in connection with one or more research, development or other type of project, and which may include contracts or grants between non-University sponsors (hereinafter referred to as Sponsors) and the University.

Let’s clean it up a bit:

I understand that my employment with the university may be in connection with one or more projects, and some projects may involve contracts between the university and sponsors.

What is going on here, besides stating the obvious? Continue reading →