Intellectual property polices may differ from actual practices at your university. Discuss discrepancies and issues in this open forum.
Appropriating Faculty IP Still Wrong After All These Years...
Operating a college or university is an expensive undertaking that requires tremendous funding. With a troubled economy, grants and gifts to colleges and universities have dropped 12% - the biggest dip in the last 40 years. This has been mitigated somewhat by an influx of research dollars from the 2009 stimulus package, but amid pressure to back down from planned tuition increases, the net result may still be detrimental to universities' bottom lines.
As a potential source of additional funding, commercializing the inventions of faculty researchers continues to gain momentum. Institutions are increasingly driven by the "home run" licensing deals with promises of big revenue earning power. However, they often assume they have overriding ownership rights in faculty intellectual property, but this is not as accurate as they'd like their faculty to believe.
When federal funding is involved, the university typically can legitimately request assignment of the innovation from the faculty member. When corporate funding sponsors the research, the company takes ownership precedence. If the research is directed without private or public funding, the faculty member should retain the rights to own and direct the future of their innovation.
Unfortunately, this is not the case most of the time. Instead, many university policies overstep what seems intuitive and assert ownership where it is not due. Faculty salaries are commensurate with their core job function - teaching. Research or development of IP may be an encouraged practice of academic employment, but is handled inconsistently based on area of employment and contract agreements.
If an English professor writes a book, their university doesn't force assignment of that IP to the school and demand a large percentage of the profit generated by its sale. So, why then do many universities feel at ease assuming ownership of the IP of scientists and engineers in their employment?
The starting point for abridging the ownership rights of faculty is the IP policy. These policies are drafted by the university and typically contain the clause, in some form or another, that policies will be updated "from time to time". Whether universities alert faculty of these changes or give them an opportunity to participate varies from school to school and depends, in large part, on the discretion of the school.
University IP policies range from the reasonable to those that run rampant. Often universities claim ownership of all the results of faculty research performed in their facilities, with no regard for the source of funding or whether university resources were used at all in its creation. The worst of these policies adopt a broad, overreaching approach of taking it all. The better policies specify control based on funding source, use of university facilities and resources, or whether the research was assigned by the institution.
An employment agreement is the second component to controlling and directing the research of faculty. There are, as with IP policies, good and bad contractual terms. The worst agreements require its faculty to sign away all their rights to future research as a condition of their employment. Again, a 'taking-it-all' approach.
There are two methods commonly used for phrasing this approach; "I hereby assign" or "I agree to assign". Both relate to future inventions, but the former is an assignment in advance, while the latter is an agreement to assign at some future date after the invention is made. This may seem like meaningless semantics, but a recent ruling in the Stanford v. Roche case, the latter was exercised and cost Stanford the ownership share of one of its inventors.
The third tool to controlling faculty IP is the invention disclosure form. Many universities include a clause in this form which assigns the invention being disclosed as a condition of disclosure. This presents a 'Catch 22' for faculty whose innovation was not made with public or private funds. To be in compliance with IP policy and employer agreements, invention disclosure is mandated. Yet by the very act of disclosing the invention the faculty member is coerced into assigning ownership rights to the university that it may well not be entitled to.
Such was the case with Professor Galen Suppes of the University of Missouri. He knew the university wasn't entitled to his innovation, so he modified the invention disclosure form so that he could comply with university IP policy requiring disclosure, but wasn't signing away the rights to his work. And what was the result for trying to extricate himself from this 'Catch-22'? The university hit him with a lawsuit.
At the end of the day, if faculty researchers could afford to wage a legal battle against their university, many of these carefully worded agreements might not hold up in court. These would typically be considered contracts of adhesion - not illegal - but so one-sided that they could be deemed unconscionable, and thus unenforceable.
For faculty already employed under such an agreement, it may be too late to rewrite history, but if retaining ownerships rights in research is important to them, exploring their employment opportunities with a more reasonable university may be the only way out from under this onerous condition of employment.
Understanding the IP policy, employment agreement and invention disclosure policies prior to employment is the best route for research faculty who want to remain in control of the future of their work. Better yet, a call for universities to standardize IP policies and documents relating to ownership of IP is a worthwhile consideration. Let the universities take no more than they are entitled to by law and allow their faculty to research free of coercion and fear of appropriation of their innovations.
Comments
Comments : 3 - Last Post : Mar 12, 2011 3:51 PM by: mdphd
re: Appropriating Faculty IP Still Wrong After All These Years...
Posted by mdphd: Mar 12, 2011 3:51 PM
I am a employee who has been struggling with my university's patent policy for years now. I am really glad to find this website. I could really use some advice as how best to deal with the IP policies. I feel that universities are way overreaching.
I develop inventions outside of work with my own money. The IP policy requires that I disclose these inventions so that they can have first rights on the invention, despite my not using any university resources, and with the IP officer being the sole judge as to whether it is related to my work. Having a single person decide whether a self funded project is within your scope of employment appears very subjective. If it makes money, it's theirs...if it doesn't, they'll toss it. To add insult to injury, even if they do not elect to pursue ownership, they require that I give them a license....with a right to sublicense to others! No thank you.
I've noticed over time, the share of royalties for the inventor just gets smaller and smaller, while the university's slice of the pie gets bigger and bigger. I remember when the royalty split used to be 50:50 at my university. Now it's 65% to the university and 35% to the inventor, with 15% going to the IP office! It's nice when you can write your own policies. The UC system moved from 50:50 to 25:75. I can see this ratio becoming smaller and smaller for the inventor and larger and larger for the university over time.
IP offices have a great racket. After the invention disclosure, the invention is evaluated. If it is promising, they file a cheap provisional for $110, then they spend a year shopping your idea around to various companies to see if any of them bite. If any of them do, then they file a real patent after they have gotten a licensing deal. There is no risk. If no company is interested, they "return" the invention to the inventor. However, by the time this occurs, the inventor has already lost a significant amount of time, as the provisional patent is only valid for one year. The inventor then has to scramble to file a non-provisional and risks losing the patent if they are not able to file by the deadline. They also lose their own time for marketing to companies. It's a major loss for inventors, but no risk and all gain for the IP offices. Granted, the IP office may be valuable for inventors who do not want to file their own patents and do the marketing themselves. However, this should be an optional service they provide for the inventor (for a fee or equity of course) rather than forced upon the inventor.
What this amounts to is ownership of a person's brain in exchange for employment.
Certain questions I would like to ask within this forum:
1. I'm wondering to what relationship university policy has with the legal system. It seems in my legal searches that policies are treated like contracts. However, it seems inequitable when a university can simply change their policy without informing inventors.
2. I never signed any agreement assigning my IP to the university. However, they have an IP policy in place. To what extent do I have a freedom from their claim?
3. There is one project I am working on which is funded by a grant. I understand how the university may have a claim to inventions that stem from the grant (although I did all the work to get the grant, but I understand they provided the "opportunity"). However, the bad deal encoded in the IP policy has pretty much has convinced me to stop inventing within the scope of the project, and I now end up focusing on just data collection and non-inventive research. I have lots of ideas, but I don't reduce anything to practice. When I leave the university in a couple years, I will then plan on reducing these ideas to practice. Waiting that long, of course, leaves me open to possibly losing priority on certain patents. What is the best way to handle this situation?
re: Appropriating Faculty IP Still Wrong After All These Years...
Posted by mdphd: Mar 12, 2011 3:51 PM
I am a employee who has been struggling with my university's patent policy for years now. I am really glad to find this website. I could really use some advice as how best to deal with the IP policies. I feel that universities are way overreaching.
I develop inventions outside of work with my own money. The IP policy requires that I disclose these inventions so that they can have first rights on the invention, despite my not using any university resources, and with the IP officer being the sole judge as to whether it is related to my work. Having a single person decide whether a self funded project is within your scope of employment appears very subjective. If it makes money, it's theirs...if it doesn't, they'll toss it. To add insult to injury, even if they do not elect to pursue ownership, they require that I give them a license....with a right to sublicense to others! No thank you.
I've noticed over time, the share of royalties for the inventor just gets smaller and smaller, while the university's slice of the pie gets bigger and bigger. I remember when the royalty split used to be 50:50 at my university. Now it's 65% to the university and 35% to the inventor, with 15% going to the IP office! It's nice when you can write your own policies. The UC system moved from 50:50 to 25:75. I can see this ratio becoming smaller and smaller for the inventor and larger and larger for the university over time.
IP offices have a great racket. After the invention disclosure, the invention is evaluated. If it is promising, they file a cheap provisional for $110, then they spend a year shopping your idea around to various companies to see if any of them bite. If any of them do, then they file a real patent after they have gotten a licensing deal. There is no risk. If no company is interested, they "return" the invention to the inventor. However, by the time this occurs, the inventor has already lost a significant amount of time, as the provisional patent is only valid for one year. The inventor then has to scramble to file a non-provisional and risks losing the patent if they are not able to file by the deadline. They also lose their own time for marketing to companies. It's a major loss for inventors, but no risk and all gain for the IP offices. Granted, the IP office may be valuable for inventors who do not want to file their own patents and do the marketing themselves. However, this should be an optional service they provide for the inventor (for a fee or equity of course) rather than forced upon the inventor.
What this amounts to is ownership of a person's brain in exchange for employment.
Certain questions I would like to ask within this forum:
1. I'm wondering to what relationship university policy has with the legal system. It seems in my legal searches that policies are treated like contracts. However, it seems inequitable when a university can simply change their policy without informing inventors.
2. I never signed any agreement assigning my IP to the university. However, they have an IP policy in place. To what extent do I have a freedom from their claim?
3. There is one project I am working on which is funded by a grant. I understand how the university may have a claim to inventions that stem from the grant (although I did all the work to get the grant, but I understand they provided the "opportunity"). However, the bad deal encoded in the IP policy has pretty much has convinced me to stop inventing within the scope of the project, and I now end up focusing on just data collection and non-inventive research. I have lots of ideas, but I don't reduce anything to practice. When I leave the university in a couple years, I will then plan on reducing these ideas to practice. Waiting that long, of course, leaves me open to possibly losing priority on certain patents. What is the best way to handle this situation?
re: Appropriating Faculty IP Still Wrong After All These Years...
Posted by mdphd: Mar 12, 2011 3:51 PM
I am a employee who has been struggling with my university's patent policy for years now. I am really glad to find this website. I could really use some advice as how best to deal with the IP policies. I feel that universities are way overreaching.
I develop inventions outside of work with my own money. The IP policy requires that I disclose these inventions so that they can have first rights on the invention, despite my not using any university resources, and with the IP officer being the sole judge as to whether it is related to my work. Having a single person decide whether a self funded project is within your scope of employment appears very subjective. If it makes money, it's theirs...if it doesn't, they'll toss it. To add insult to injury, even if they do not elect to pursue ownership, they require that I give them a license....with a right to sublicense to others! No thank you.
I've noticed over time, the share of royalties for the inventor just gets smaller and smaller, while the university's slice of the pie gets bigger and bigger. I remember when the royalty split used to be 50:50 at my university. Now it's 65% to the university and 35% to the inventor, with 15% going to the IP office! It's nice when you can write your own policies. The UC system moved from 50:50 to 25:75. I can see this ratio becoming smaller and smaller for the inventor and larger and larger for the university over time.
IP offices have a great racket. After the invention disclosure, the invention is evaluated. If it is promising, they file a cheap provisional for $110, then they spend a year shopping your idea around to various companies to see if any of them bite. If any of them do, then they file a real patent after they have gotten a licensing deal. There is no risk. If no company is interested, they "return" the invention to the inventor. However, by the time this occurs, the inventor has already lost a significant amount of time, as the provisional patent is only valid for one year. The inventor then has to scramble to file a non-provisional and risks losing the patent if they are not able to file by the deadline. They also lose their own time for marketing to companies. It's a major loss for inventors, but no risk and all gain for the IP offices. Granted, the IP office may be valuable for inventors who do not want to file their own patents and do the marketing themselves. However, this should be an optional service they provide for the inventor (for a fee or equity of course) rather than forced upon the inventor.
What this amounts to is ownership of a person's brain in exchange for employment.
Certain questions I would like to ask within this forum:
1. I'm wondering to what relationship university policy has with the legal system. It seems in my legal searches that policies are treated like contracts. However, it seems inequitable when a university can simply change their policy without informing inventors.
2. I never signed any agreement assigning my IP to the university. However, they have an IP policy in place. To what extent do I have a freedom from their claim?
3. There is one project I am working on which is funded by a grant. I understand how the university may have a claim to inventions that stem from the grant (although I did all the work to get the grant, but I understand they provided the "opportunity"). However, the bad deal encoded in the IP policy has pretty much has convinced me to stop inventing within the scope of the project, and I now end up focusing on just data collection and non-inventive research. I have lots of ideas, but I don't reduce anything to practice. When I leave the university in a couple years, I will then plan on reducing these ideas to practice. Waiting that long, of course, leaves me open to possibly losing priority on certain patents. What is the best way to handle this situation?
