Intellectual Property Memorandum
To: Department Heads
From: Peter Hollenbeck, Vice Provost, Faculty Affairs
Date: August 12, 2016
Subject: Intellectual Property (IP) Policy and the IP Assignment Requirement
On July 1, 2015, the University implemented a revised Intellectual Property Policy I.A.1. The policy and procedures can be found at the following links:
Policy: http://www.purdue.edu/policies/academic-research-affairs/ia1.html
Procedures: https://www.purdue.edu/research/oevprp/regulatory-affairs/ip-procedures.php
As part of the new policy and procedures, Purdue is now including reference to the university’s IP policies in offer letters. In addition, faculty and staff who create intellectual property are asked to execute a general assignment of title in favor of the University when they request a leave of absence, terminate, graduate or participate in outside activities.
This process of seeking and securing intellectual property assignments is relatively new. However, it is addressed in Section II of the Procedures for Disclosure, Assignment and Commercialization of Intellectual Property which states that periodically, individuals who create intellectual property must execute an IP assignment. Ultimately, we plan to do this as part of the annual batch of certifications that we all do as faculty. In the meantime, we are utilizing the request for leave process as an opportunity to seek a general IP assignment from our faculty.
Please understand that IP assignment is already a condition of employment with the University. This new practice of periodic “re-assignment” allows us to align with expectations set forth in recent case law as in the case of Stanford vs. Roche, where the court ruled it was not enough just to have a policy, but the institution must also actively engage with the faculty and inventors to communicate and ensure that they understand the policy. This process has been implemented across the Purdue system to protect the University and its faculty in the instance that IP ownership is challenged at some future date.
For now, when your faculty submit a request for leave, they will be contacted by a member of Sponsored Program Services with a request to sign an IP assignment. Many faculty have already received these requests and have worked through the process. We do hold the approval of the leave requests until the IP assignment is executed so their prompt attention to this process is important for the timely processing of their leave request.
Please contact me or Ken Sandel, Senior Director of Sponsored Program Services, if you have any questions.
cc: Dan Hirleman, Chief Corporate and Global Partnership Officer and Senior IP Officer
Sean Ryan, Director of Engagement and Campus IP Officer – IPFW
Niaz Latif, Dean, Executive Director and Campus IP Officer – Purdue North West
Ken Sandel, Senior Director of Sponsored Program Services
