Can a university claim patent rights for inventions performed on my own time?

Question

I'm working for a university as a research programmer (prof staff, exempt) on an external grant ("soft money"), and there is a clear understanding between me and my immediate supervisor/PI, and at least one other PI, that I can use a certain non-trivial amount of my time each week to work on my own projects (the so-called "20% time").

I've tried investigating what the university would officially think of any such endeavour, and I found the IP policy (IU) that seems to suggest that patentable inventions unconditionally belong to the university, whereas general copyrightable work does belong to its authors (unless they perform such work specifically for university use, e.g. course materials).

Apparently, the policy even says that it covers even non-paid individuals, part-time individuals and students (which are not even just "non-paid" for their activities, but are actually required to support the university by paying tuition and various other fees).

Supposedly, it basically applies to everyone who uses University resources, however, the term University resources itself is not defined amongst all the other terms that are, in fact, defined very specifically for this exact IP policy directly within the policy.

• Does a public university in the US really have such powers to implement a policy like that, and to claim patent rights to inventions which are not performed in the official line of duty and even oftentimes outside of the work clock?

• Have such policies ever been reaffirmed through courts? Especially when applied to non-compensated employees, or the various slave labour?

• What do I do to avoid being covered by such policy?

  • Must I never perform any parts of my own research on any equipment purchased through university, even on grant money?
  • Cannot use the monitors owned by the university together with my personally-owned laptop?
  • Cannot use university's internet connection to connect to my externally hosted personal servers, where the use of university's internet connection is merely coincidental to my own research on my own computing resources, and could easily be replaced by an off-the-shelf 30$/mo service from elsewhere without any significant side effects? (I'm just using ssh, basically.)
  • Cannot use my non-trivial work time that was allowed for my own research by my supervisors to do my own research? Do I have to request to be re-classified from being a full-time employee (1.00) to being a part-time employee (e.g. 0.80) to have my 20% time unencumbered?
  • Cannot sit in my office space doing my own search?
  • Cannot sit in a university building whilst doing any such research of my own?
  • Cannot be anywhere on campus doing any of my own research?

Answer 1

Note that a detailed response to your question, as well as any answer tailored to your specific case, will need to be given to you by a lawyer. And, if you think of doing anything that could even remotely be considered borderline or controversial… just ask a lawyer. And even if you don't do anything borderline, better safe than sorry!

Now, I want to explain some of the background of that answer: I have acquired some experience of my own, though not in the US, on dealing with being employed as a full-time researcher and professor, yet maintaining a certain level of activity outside of my employer. I actually produce intellectual property on my leisure time (both copyrightable materials and patent rights), and have consulted with law professionals on how to effectively keep control of my own IP (as opposed to that which I create for my employer).

The main conclusion is: you actually have to be very careful to be able to fend off any potential claim of your employer on the IP created. Of course, it's a risk of the “if it comes to that” variety. If your university is not interested in pursuing any claim to such IP, you may never have a problem, even if you did not clearly separate your own IP from that created for your employer. But… you never know what may happen in the future (e.g., your current understanding with the dean may not hold in a few years), so you should take maximal precautions.

In short, you should assume the following:

1. Everything you do on company time is owned by the company. I'm pretty sure that this includes your “20% time”: if it's 20% of the time the company pays you, it may mean that they leave you free to do research in a direction you choose for yourself, but it is still research you performed as their employee.

   You certainly can't expect to be paid 40 hours a week, work 32 hours for your employer and then spend the remaining 8 hours for someone else, can you?! (in this case, the “someone else” is yourself as a freelancer)

2. Don't use resources from your university. This is also very typical of contracts and, at least the few European countries I know, the legal status quo: use of company resources means the company has rights on your production. This includes every resource you list, even smaller things you may not think of, like email account, FTP/web/ssh hosting, internet connection, …

3. Everything you create while inside the company is not yours. Walls, internet connection, desktop, electricity… are company resources. While courts in some jurisdictions have recognized that certain limited activities done inside the company, such as reading email during lunch break, may fall within the personal sphere (and not the professional sphere), it is not likely to be the case for any larger activity.

4. Finally, if you think of doing on your spare time anything that is thematically closed to your day job, take care: it becomes hard to claim that your own activities are not linked to your university position and resources, and do not in any way interfere with it, if you are a computer science researcher by day and patent new sorting algorithms by night :)

And, did I mention? Get help from a professional, aka lawyer.

Answer 2

Some people are paid to be innovators. How much they pay you for your billion dollar work can be as low as peanuts. If an employer wants to employ you in such a fashion it should clearly be stated in your employment contract. Some people would refuse such positions or not bother with working hard when away from work and instead spend the time relaxing. Generally if your employer asks you to work on something then that should belong to them. Higher level mangers are employed to innovate in their respective sectors whilst certain conglomerates work in all sectors. It’s the University researchers such as your self that are paid peanuts and expected to hand over all billion dollar inventions. In short, if an employer wants outside work inventions then it should be clearly stated in the contract! Some people are smart enough to create enterprises for themselves!