Penn State's Position on Intellectual Property
Penn State's basic position regarding Intellectual Property (IP) is determined by the source of funding.
Almost all federal grants and contracts are subject to the terms and conditions of the Bayh-Dole Act (37 CFR 401). Under these terms, Penn State retains title to all inventions conceived or reduced to practice in the performance of the project (37 CFR 401.14(B)). The Federal government receives a non-exclusive license to use the invention for government purposes. Penn State reserves the right to negotiate additional licenses to commercial partners.
The Bayh-Dole Act applies to all federal funds, even when such funds are flowed through a third party. If a company or state agency is flowing federal funds to Penn State, the company or state agency "will not, as part of the consideration for awarding the subcontract, obtain rights in the subcontractor's subject inventions" (37 CFR 401.14(G)(1)).
Internal Industry Funds
As a practice, Penn State will not seek to retain ownership of patents resulting from corporate sponsored research, unless any of the project personnel are unwilling to assign intellectual property rights to the sponsor. Click here for an in-depth overview of how Penn State will engage with industry. Please consult the Industry Agreement Decision Tree for identifying the appropriate industrial terms and conditions.
Commonwealth of Pennsylvania
Most state contracts are issued in accordance with the Commonwealth Master Agreement. Under these terms, Penn State retains title to all inventions conceived or reduced to practice in the performance of the project (Exhibit A, Article 11(C)). The state government, however, reserves the right to identify copyrightable works (including data, reports, and computer programs) as works made for hire (Exhibit A, Article 11(B)). This determination should be made in each individual purchase order.
Penn State receives awards from many other sponsors, including foundations, foreign governments, local governments, etc. Please work with the Office of Sponsored Programs for guidance regarding the appropriate IP clauses for your particular agreement.
If you have additional questions, please contact the Office of Technology Management.