University personnel shall not enter into private consulting contracts that put at risk of disclosure or loss of protection University-owned Intellectual Property or Intellectual Property that the University has a potential claim to own. University personnel shall not transfer or disclose to a third party any University-owned Intellectual Property or potentially University-owned Intellectual Property through private consulting activities.
Private consulting contracts sometimes contain provisions that limit the disposition of research results, including Intellectual Property, in promising research areas. University personnel have the duty to ensure that the assignment of rights to Intellectual Property evolving from consulting activities does not conflict with the ownership rights of the University. In general, University personnel may, within the scope of a private consulting agreement, assign rights to Intellectual Property in their fields of expertise where organizations engaging their services have legitimate prior claims to the development(s) in question. Examples include consulting activity within a University personnel’s field of expertise, which leads to the refinement of an existing product or process, or to a development for which background patents or prior art claims exist (and are held by the consulting client.)
On a related note, regardless of the Intellectual Property terms and condition of the contracts, University personnel may undertake Private Consulting only when it is done without use of University resources, including, but not limited to equipment, staff, laboratories, equipment, and computer networks. Employees may not make incidental or substantial use of University resources for fulfillment of a private consulting contract, regardless of the Intellectual Property terms and condition of their contracts. This restriction is necessitated by compliance with conflict of interest and Pennsylvania Employees Ethics Act. However, this restriction does not preclude use of University resources when the University receives fair market value compensation from the employee pursuant to an approved written agreement between the parties; such as a faculty-owned business operating in a University-owned business incubator, paying rent according to a standard lease agreement.