## Facts

- University Patents, Inc. (UPI) managed patenting and licensing for the University of Pennsylvania under a service agreement.
- Dr. Albert M. Kligman, a University of Pennsylvania professor, developed a Vitamin A–derivative technology for treating photoaged skin and pursued patenting and licensing with Johnson & Johnson entities (Johnson & Johnson Baby Products Co. and Ortho Pharmaceutical Corp.).
- The University had adopted patent-policy statements (and later handbook materials) indicating that inventions resulting from university time or expense were the University’s property and contemplated disclosure and assignment procedures.
- The University’s implementation and enforcement of these policies varied across time and personnel.
- In an earlier episode involving Kligman’s Vitamin A–derivative acne discovery, the University accepted Kligman’s representation that the work was done on his own time and expense, did not require assignment, and later accepted donated royalties.
- For the photoaging invention, Kligman and the corporate defendants proceeded without assigning patent rights to the University or UPI.
- UPI sued alleging breach of employment-related obligations, third-party beneficiary status, constructive trust, conversion, and declaratory ownership/licensing rights; the University sued alleging breach of employment contract, tortious interference by the corporate defendants, and conspiracy.
- Defendants moved for summary judgment, contending plaintiffs lacked any enforceable ownership interest or right to royalties.

## Issues

1. Whether the University’s patent-policy statements, handbook provisions, and the parties’ course of dealing created an express or implied contractual duty requiring Kligman to disclose and assign patent rights in the photoaging invention to the University (and, derivatively, to UPI).
2. Whether equitable remedies (e.g., constructive trust) or tort theories (e.g., conversion, tortious interference, conspiracy) could succeed absent an enforceable right in the invention.

## Decision

- The court granted summary judgment for all defendants.
- The court held plaintiffs failed to show an enforceable express or implied obligation requiring Kligman to assign the patent rights in the photoaging invention to the University.
- Because plaintiffs had no enforceable ownership interest or right to royalties, their derivative claims for constructive trust, conversion, tortious interference, and conspiracy failed as a matter of law.

## Legal Principles

- Agreements to assign patent rights arise from state common-law contract and equitable principles rather than patent statute; such agreements need not be written and may be express or implied.
- An implied-in-fact agreement to assign requires evidence of mutual assent and sufficiently definite terms; generalized institutional policy statements, without clear assent and consistent implementation, may be insufficient.
- University handbook and policy language is not automatically a binding contractual commitment to assign inventions; enforceability depends on clarity, assent, and the parties’ conduct.
- Equitable and tort remedies premised on ownership or contractual rights (constructive trust, conversion, tortious interference, conspiracy) generally fail where the plaintiff cannot first establish a legally cognizable underlying right in the subject matter.

## Conclusion

The court concluded that the University’s evolving and inconsistently enforced patent-policy materials, together with the parties’ prior dealings, did not establish an enforceable obligation for Kligman to assign the photoaging invention; lacking any underlying right to the patent or royalties, UPI and the University could not proceed on their contract, equitable, or tort theories, and summary judgment was entered for defendants.


Univ. Patents, Inc. v. Kligman, 762 F. Supp. 1212 (E.D. Pa. 1991)