Response of Faculty Senate IP Committee to Draft Policy dated March 31, 2005

 

 

Overall, this committee is pleased that a task force has been formed to debate important issues relating to intellectual policy, and that the task force is open to suggestions from the campus committee, starting with this committee.

 

Our thoughts and suggestions regarding the Policy draft were presented to the Task Force on Monday, April 4, 2005. The following paragraphs represent some of our notes preceding that meeting, along with a few updates.

 

This committee recognizes and applauds the importance of updating the IP policy to reflect changes in laws, case law, and general changes in the global IP and business environment.

 

This committee also recognizes that the manner in which the IP policy is administered is equally important to Rensselaer faculty. In this regard, we are pleased that this matter is already receiving some attention at the Task Force. We are pleased that an open Policy Implementation Manual is being drafted based on inputs from all campus constituents. Finally, we are pleased with the proposal to produce a detailed web-based training system for Rensselaer Creators. We stand prepared to provide detailed, collegial inputs to the evolution of this important document. It is our hope that this document continues to be updated periodically by a transparent process.

 

Our immediate suggestion regarding the Policy Implementation Manual is to treat it as being inseparable from the core IP Policy document, and equally important. We suggest that it receive the same level of, and preferably concurrent, campus-wide study and inputs.

 

In the pages that follow, we are pleased to provide item-wise feedback on the draft IP Policy that was presented to us, and also a set of draft principles that could be used to guide the IP Policy Implementation Manual.

 


Comments Regarding the Draft IP Policy

 

A. General Comments

Overall, this committee liked the simpler language used to describe the policy. We found the capitalization of words somewhat confusing. Ordinarily, we are accustomed to seeing capitalized words when they are given specific and pre-defined meanings. Here, they seem to be used for words given their ordinary, plain language meanings.

 

As we drafted these comments, we were very conscious of several aspects of the current local, national and global environment that affect Rensselaer creators.

·         Global competition: Rensselaer creators face stiff competition from peers around the world, and are concerned about their ability to compete for research support in this environment.

·         Multi-institutional teaming environment: The importance of teaming across institutions in securing technological success and funding is already high, and ever increasing. Major grants are currently flowing to multi-university teams.

·         State and Federal emphasis on linkages with Industry: Major center grants expect and require ongoing linkages with industry. The level of financial engagement with industry is measured annually and is critical to continued funding.

·         Pre-existing IP in collaborations and Sponsored Research: This is an area of concern that is not discussed in the draft IP policy.

·         Joint ownership: This is another area of concern that is not discussed in the draft IP policy.

 

The policy as drafted does not distinguish between the handling of IP resulting from federal and non-federal sources of funding. Specifically, the Bayh-Dole act is applicable only to IP created under federal support. It gives universities the privilege of patenting inventions arising from federally-supported research. Rensselaer can choose to treat corporate-sponsored IP differently and advantageously.


B. Specific Comments

 

Section I:

 

Part I: No changes noted

 

Part II:

Item 2.1

1.                There appears to be a typographical error in item (c). It should read “was not developed as a direct result of institute duties.” Producing scholarly works of diverse forms is a natural part of the duties of Rensselaer faculty. It would help to make this phrase specific.

2.                We were concerned about the last paragraph. The phrase “their work” needs to be made specific. We also suggest limiting the duration and scope of the license, and the ability to sub-license, to the minimally necessary level. Since the term “Rensselaer Creators” is now very broad, the implications of this license can be   widespread. Overall, this is an item that would benefit from a specific agreement between the parties.

 

Item 2.2: No changes noted

 

Item 2.3: We were concerned about the handling of courseware. Often, courseware becomes a natural part of books written by Rensselaer faculty, and is often inter-twined with faculty research activities.  Courseware is  also developed as a natural part of institute teaching duties. Often, faculty members write grant proposals to help develop courseware. Item 2.1(c) should perhaps be made specific to task assignments in which it is quite clear what is expected and how the ownership of the resulting IP will be handled.

 

Item 2.4: No comment.

 

Item 2.5: No comment.

 

Item 2.6: No comment.

 

Item 2.7: No comment.

 

Part III:

 

Item 3.1: We need a deadline on the time allocated to OTC for making decisions. Outside evaluators should be bound by confidentiality and absence of conflict of interest.

 

Item 3.2: We need a clause that, if Rensselaer fails to commit the due diligence to commercialize in a timely manner, the technology would revert to the Creator.

 

Item 3.3: The Bayh-Dole act has specific time lines that are not mentioned here. For reference, here is the paragraph that appears relevant:

 

(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.”

 

Part IV:

 

Item 4.1: We noted the absence of any incentives for OTC to minimize the development expenses.

 

Item 4.2: The idea of accepting equity is a good one. We suggest that the Creator has a say in the second sentence.

 

Item 4.3: Insert space between “forth” and “in” on the last line.

 

Part V:

 

Item 5.1 (c): If Rensselaer is the prime contractor, and another university is a subcontractor, and an invention occurs at the subcontractor, would Rensselaer claim ownership? This must be clarified.

 

Item 5.2: We are concerned about an overly rigid implementation of the policy. It would be valuable to have a defined mechanism and process that allows exceptions to be made when it is in the Institute’s best interests.

 

Appendix A

 

Item C: We are concerned that the policy is a disincentive for faculty members to write grant proposals to support scholarly book writing. Such works should be treated as Exempted Scholarly Works.

 

Exempted Scholarly Works: We recommend that Courseware be treated as being exempt.

 

It appears that if a student attends or audits any course at RPI, and if anything is invented by the student this IP policy claims that as Rensselaer property. We think that a shared ownership is more appropriate. In any case, we suggest that students be requested sign an IP agreement at Freshman Orientation at the latest, so they are in a position to make an informed decision.


Suggested Principles for IP Policy Implementation Manual

 

Our thoughts in drafting these guiding principles were guided by the concerns affecting the Rensselaer faculty.

 

 

Principle #1: Lack of bias relating to campus constituents

 

The IP policy implementation should not biased against (discriminate against) any particular part of the Rensselaer community.

 

Principle #2: Lack of bias relating to revenue mechanism

 

The IP policy implementation should not be overly biased against, or in favor of a revenue mechanism (contract, gift, grant, immediate or future licensing fees, immediate or future royalties, center memberships, equities or options, etc.).

 

In making decisions on a case, it makes sense to maximize our best estimate of the total present value of a proposed transaction without being pre-biased to any one of these revenue mechanisms.

 

Principle #3: Competitive, market-sensitive views

 

The IP policy mechanism should recognize that Rensselaer constituents compete globally in multiple technical areas (we are referring to them as "markets" for now), and that these markets are very different. Each market segment can view the IP guidelines differently.  The implementation should enable Rensselaer creators to be competitive in each of the technical areas.

 

For instance, the view provided to a potential licensor in the pharmaceutical industry should be consistent with, and competitive in, that industry.

 

Principle #4: Timely responses

 

The IP policy implementation should provide well-publicized mechanisms to ensure timely responses to IP related matters.

 

Principle #5: Efficiency of implementation

 

The IP policy implementation should be designed to minimize the transactional costs. This will provide a better overall return to the Institute, and to the creators. There should be mechanisms in place to monitor the performance of the policy implementation.

 

Principle #6: Enabling collaboration

 

The IP policy implementation should be structured so as to facilitate and welcome collaboration across institutions, and not serve as a barrier.

 

Principle #7: Facilitating sponsored research

 

The IP policy implementation should be structured so as to make it attractive for companies to do business with Rensselaer. That does not necessarily mean free licenses, but rather mechanisms that facilitate licensing. For example, a company should be able to pay a fixed percentage of a contract’s direct costs at the outset, in return for license to IP that may result from that contract (i.e., "pre-paid or defined-cost licensing").

 

Principle #8: Open door policy

 

The implementation should not foreclose the possibility that Rensselaer might decide -- under appropriate circumstances -- to accept a research contract in which IP remained with an industrial sponsor if there is sufficient overall benefit to Rensselaer.

 

Principle #9: Transparent, timely, and fair mechanisms for resolving grievances

 

In the event that a campus constituent feels that the implementation of the IP policy has failed to achieve a reasonable outcome, a panel composed equally of appropriate peers and administrative officials should be available to resolve the grievances in a fair, timely, and transparent manner.