Who controls
intellectual property that is the product of grant-funded faculty research and work
in a university environment? Are the "inventions" of professors essentially
the result of their positions and participation in a research environment and,
as such, like those of an employee produced in the course of employment with a
private company? Should written works of authorship – articles, scholarship,
books, and textbooks – be treated differently from medical, biotech, or
software advances that professors create or contribute to? What about the input
from students, especially specialized graduate students, in the process? Should
the contributions of third-party industry funds to research and development in
the university setting be acknowledged with intellectual property interests? Are
the creative products of professors ever “works for hire” for their
universities? The American Association of University Professors (AAUP) doesn’t
think so.
Two weeks ago the AAUP
released a draft version of its report, “Recommended
Principles & Practices to Guide Academy-Industry Relationships,” with
21 new guidelines for governing the relationship between academia and industry.
Much of the 300-page report recommends already familiar principles for
maintaining the integrity of academic research, but it also contains new
recommendations with the controversial (for some) aim of giving faculty members
more ownership interests in the products of their research than many universities
currently allow.
The section entitled, “General Principles to Guide
Management of Intellectual Property (IP)”, contains 11 principles that would gird
up a structure where the intellectual-property interests of faculty “extend to
decisions involving the management, intellectual property (IP), licensing,
commercialization, dissemination, and public use” of their inventions. It also calls for faculty senates or
equivalent faculty-governing bodies to play a key role in setting policies dealing
with faculty inventions. And, it suggests a process for effecting the
enhancement of faculty rights: universities “should not undertake intellectual
property or legal actions directly or indirectly affecting a faculty member’s
research, inventions, instruction, or public service without the faculty
member’s and/or the inventor’s express consent.”
It’s not surprising that the AAUP decided to draft
new guidelines governing IP at this time. Before this week, many of AAUP’s
most-recent documents had been criticized as archaic in light of increasing commercial
sponsorship of university research. Further, a U.S. Supreme Court decision about
intellectual-property rights published a year ago focused attention on the
issues. Board
of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011), held that
neither universities that receive federal research grants nor the government
itself has an automatic right to patents or inventions that may result
from federally financed research. The ruling was initially praised by many as providing
stronger support to the intellectual-property claims of individual university faculty
members. Still, it didn’t offer a practical solution and, in some instances,
may have back-fired on faculty stakeholders. As the AAUP reports, many “universities
have responded by announcing, or weaving into faculty contracts, policies
declaring they have the rights to faculty members' inventions.”
The AAUP and
the report explain that because faculty have little bargaining power at the time
of hiring, for instance when Ph.D. candidates are offered tenure-track jobs, they
are susceptible to institutional pressures. New faculty typically sign away
their invention rights without objection or much foresight about the issues, sometimes
for their entire careers.
While the AAUP
contends that the new changes are proposed to promote the long term interests
of both universities and private industry, as well as to protect faculty
interests, the report faces opposition from other important academic
organizations that say they, too, are balancing the needs of universities, industry
and other stakeholders which may have been overlooked. The Association
of American Universities (AAU), which represents leading public and private
research universities, and the Association of University Technology Managers
(AUTM) were extremely critical of the draft version of the AAUP report,
especially its recommendations regarding intellectual property rights. AAU and
AUTM argue that laws currently in place, like the Bayh-Dole Act of 1980 (which
governs IP issues arising from federally sponsored research; permitting
universities, instead of the government, to hold title to inventions), adequately
address the IP issues that arise between researchers, universities and private
industry.
AUTM’s
vice president for advocacy opposes the recommendations because they "oversimplify
the incredibly complex, nuanced process of academic technology transfer.” In
addition, many believe that the recommendations overlook the fact that most
university research is the product of more than one professor or department, usually
involves a team of faculty and students and, sometimes, even more than one
university. AUTM also said that the
report "assumes that faculty alone are the most qualified to make
decisions about how and to whom technologies are licensed." AAU and AUTM
believe that license negotiations should be handled by those trained and
experienced in balancing all stakeholder interests, those of universities,
faculty, funders, students and the larger society. Of course, bringing in
experts to manage negotiations does not mean that enhanced interests or participation
cannot be given to certain constituents.
The debate
surrounding assignment and ownership of inventions by employees or employers is
nothing new. There are state statutes and a large body of case law on the
matter.
The AAUP draft report is part of the intense legal activity concerning IP
ownership and scope of employment. It’s not surprising that there’s a lot of
talk about this report and its IP issues, and it’s not surprising there are no
easy or uniform answers. There will be intense discussions about any kind of
rule proposed to structure academic relationships and faculty interests. And a
lot of proposed exceptions are to be expected in a sometimes rarefied world where
relationships are defined in contrast to the “standard” of employee-employer,
and where “academic freedom” and the unfettered exchange of knowledge and ideas
are paramount values.
In addition to
the new guidelines concerning IP management, the report has sections devoted to
strategic corporate alliances and mechanisms for addressing potential conflicts
of interest that can undermine research integrity. The report recommends a
number of measures to encourage transparent public reporting of professors'
industry ties and discourages certain kinds of relationships that may distort professors’
public-knowledge functions.
As one of many examples, the California Labor
Code § 2870 bars the assignment to an employer of inventions developed on an
employee's own time, unless (1) the employee used the employer's materials or
information; (2) the invention relates at the time of conception or practice to
the employer's business, or actual or demonstrably anticipated research or
development of the employer; or (3) the invention results from work performed
by the employee for the employer. See
also Mattel, Inc. v. MGA Entertainment, Inc., C.A.9 (Cal.)2010, 616 F.3d
904, 96 U.S.P.Q.2d 1012 (where employment agreement did not unambiguously
require assignment of employee's idea for a new line of fashion dolls; contract
specified that “inventions” included all discoveries, improvements, processes,
developments, designs, know-how, data computer programs and formulae, but did
not mention “ideas”).
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