Guest post by Josh Weitz: IP vs. PI-s: On Intellectual Property and Intellectual Exchange in the Sciences and Engineering as Practiced in Academia

Today I am pleased to publish this guest post from my friend and colleague Joshua Weitz. He does some fantastically interesting research but that is not what he is writing about here. Instead he is focusing on intellectual property and sabbaticals ...

Joshua S. Weitz

School of Biology and School of Physics

Georgia Institute of Technology

Email: jsweitz@gatech.edu

Web: http://ecotheory.biology.gatech.edu

Preface:

This blog entry is inspired by a recent personal experience. However, I believe it serves to illustrate a larger issue that requires open discussion amongst and between faculty, administrators, and the tech transfer offices of research universities.

Context:

I am temporarily based at the U of Arizona (hereafter UA) working in Matthew Sullivan’s group where I am on a 9 month leave from my home institution, Georgia Tech (hereafter GT), spanning the term: August 15, 2013 to May 15, 2014. I arrived on campus and began the process of signing various electronic forms to allow me to use the campus network, get keys, etc.

The gateway to this process was a request to sign a “Designated Campus Colleague (DCC)” agreement: http://www.hr.arizona.edu/dcc. The DCC agreement is the official way the UA establishes an “association” with long-term visitors who do not receive any form of payment from UA (as applies in my case). I would be an Associate of the Department of Ecology and Evolutionary Biology, where the Sullivan group is based. The privileges of the DCC include receiving a UA email, keys to an office, a “CatCard” (Cat = short for Wildcats, the UA mascot) which enables me to access the building after hours, as well as other discounts. The DCC makes it quite clear that I am not an employee and that I will receive no form of payment whatsoever from UA. Indeed, all of this is rather immaterial to my real reason for spending 9 months here – to work in closer collaboration with the Sullivan group on problems of mutual interest. The obligations I must affirm are largely boilerplate (i.e., do no harm) but do include the following identified in Clause 11 of the DCC:

“11. INTELLECTUAL PROPERTY – Associate hereby assigns to the ABOR all his or her right, title and interest to intellectual property created or invented by Associate in which the ABOR claims an ownership interest under its Intellectual Property Policy (the "ABOR IP Policy"). Associate agrees to promptly disclose such intellectual property as required by the ABOR IP Policy, and to sign all documents and do all things necessary and proper to effect this assignment of rights. Associate has not agreed (and will not agree) in consulting or other agreements to grant intellectual property rights to any other person or entity that would conflict with this assignment or with the ABORs' ownership interests under the ABOR IP Policy”

This clause is worth reading twice. I did. I then refused to sign the agreement. This clause, my refusal to sign the agreement, and what happened next are the basis for this blog entry.

Note that the template upon which my particular agreement is based can be found on the UA website. For those unfamiliar with intellectual property (IP) clauses that universities routinely request visitors to sign, here is a small (random) sample:

1. U of Texas
2. U of Maryland Baltimore
3. Emory University
4. Washington University @ St. Louis
5. Northwestern University

It would be possible to collect many more such agreements that apply to both employees and to visitors of research universities.

The issues
The central issue at stake is one of ownership of future intellectual property. Presumably a visitor has decided to visit U of X because U of X is the best in the world and that new, monetizable discoveries will emerge as a direct result of the “resources” at U of X. This may be true. Or, it may not be. However, rather than try and chase IP after it has been created (a tenuous legal position), universities would rather have all visitors assign future IP immediately upon arrival and sort it out later (if and when IP is generated).

This language of “hereby assigns” (as quoted above) is not chance legal-ese. To the contrary, it is clear that the legal staff and upper administration at universities are concerned with respect to the repercussions of Stanford vs. Roche. If you haven’t read up on this case, I encourage you to do so. The key take-away message is that the Supreme Court has ruled that inventions remain the property of the inventor to assign as they see fit unless the inventor assigns inventions to a specific entity (e.g., an employer). As the U of California memo to faculty makes clear, the way that many universities want to deal with this problem moving forward is to reword their employment contracts so that employees immediately assign their IP to their university, rather than “agree to assign” their IP. “Agree to assign” (a clause meant to describe a potential future action) was the language found in Stanford’s prior IP agreement and represented one key component of Stanford losing their Supreme Court case to Roche, to the disappointment of Stanford, other major research universities and the federal government.

Figure 1 - Supreme Court decision on Stanford vs. Roche, remainder available here: http://www.supremecourt.gov/opinions/10pdf/09-1159.pdf

However, scientific visits to other institutions create a complex contradiction whereby institutions ask their visitors to sign agreements that they would never want their own employees to sign while visiting other institutions!

These agreements make perfect sense if only one university retains aggressive IP language (i.e., they grab all the IP of visitors who spend time on their campus and give none away when their own employees become visitors elsewhere). Of course, none of this makes sense once all (or many) institutions adopt such policy as is now the case. For example, how does someone from the U of California system visit UA? Or, as I asked myself, how can I “hereby assign” IP rights to the Board of Regents of Arizona when I have already assigned them to the Board of Regents of Georgia. Moreover, how can I affirm that I have “not agreed (and will not agree) in consulting or other agreements to grant intellectual property rights to any other person or entity that would conflict with this assignment”. Obviously, any faculty visitor already has a prior IP agreement with their employer! What should be done? Well, before I make some recommendations, let me point out that not all visits are the same. Instead of trying for a single blanket IP policy (the approach taken by most companies and apparently co-opted by academia), consider the following scenarios.

A few scenarios

• Case 1: The visitor learning techniques. Many experimental groups routinely welcome visitors to learn new techniques and practice established techniques on new equipment. In many cases, such visits have a dual benefit: first, the visitor (often a student) learns a new method that they can apply to their research problem; second, the host helps to spread the use of some technique or method that they may have had a hand in establishing. There is a strong degree of cooperation here, one that is common in many, but not all, branches of science and engineering. The objective of such visits is not to perform a key experiment or test but to learn the basic steps that could enable their own advances at some future point. 
• Case 2: The visitor performing research experiments. In some instances, collaboration requires visits to a peer institution. Such visitors may stay for short- (e.g., <1 week) or long-term (>= 1 week) periods. The purpose is to generate new scientific data that may, in turn, represent novel IP. The performance of such experiments requires some resource at the host institution, however, it is almost certainly the case that resources (whether personal or material) are also being contributed by the visitor.
• Case 3: The short-term collaborative visitor. Scientists and engineers routinely visit each other. Why? Perhaps because they like talking about science with their peers or because they like learning about what is happening at other institutions or because they like talking to (and recruiting) students at other institutions, and in many cases, all of the above! Visits may range from 1-2 days (while giving a seminar) to a week (while spending focused time visiting a group that may kickstart a scientific collaboration). I have used the 1 week threshold rather arbitrarily, but it is helpful to classify visitors as either short- (<1 week) or long-term (>= 1 week). 
• Case 4: The long-term collaborative visitor. Similar to Case 3, albeit on a longer scale, typically associated with sabbatical visits. Such visits need not involve any use of University resources in the sense that the visitor does not conduct experiments, does not utilize lab equipment, resources, reagents, etc. The purpose of such visits may be to experience a distinct intellectual environment, to stimulate a long-term collaboration, and/or to embark on a new research direction.

Before specifying recommendations that address these case, I simply want to point out that these are different cases. Trying to treat all visitors equally with respect to IP conflicts with both the spirit of open scientific exchange and reflects poorly on the extent to which the drafters of such policy appreciate what takes place during scientific visits. Hence, let me pause and ask you, the reader, to consider: what sort of guidelines would you recommend for each of these cases? And, while you’re busy considering that question, let me also propose a unified equation to try and shed some light on factors that suggest that IP policies are both self-contradictory and self-defeating.

An illustrative “equation” of the costs and benefits of aggressive requests for control of the IP of institutional visitors

I propose the following equation to quantify the total amount of money generated by a scientific visitor to a host institution:

$ = P * M * F

where

P = Probability of the invention taking place, as a direct result of the scientific visit
M = the Monetary value of the invention, accrued over its lifetime
F = Fraction of the dollar value assigned to the host institution.

Indeed, I believe it worthwhile to examine the effect that such policies have on each component, to the extent that university IP policies for visitors are aimed to increase incoming revenues to their institutions. First, how do policies affect the P, i.e., the probability of the invention. Second, do they affect the Monetary value? Finally, how do they affect the Fraction of accrued revenue generated by visitor-initiated IP? Of note: it is clear that when a university asks a visitor to “hereby assign” IP rights, then they are trying to position themselves positively with respect to the 2011 Supreme Court ruling in the Stanford vs. Roche case. In other words, they don’t want to become another Stanford and lose out on potentially significant inventions. However, the key word is potentially.

P: I think it fair to say that such policies are also likely to have negative effects on the P component of this equation. If a visitor knows that a visit to another institution is likely to involve giving up IP, creating conflicts with the IP policy of their own institution, or wasting many hours in trying to resolve such conflicts, are they more or less likely to spend the sort of time and energy necessary to create the IP in the first place? I am quite happy to visit the Sullivan group, but certainly far less happy to be spending time on visitor agreements (although I hope this blog entry may be of service to others). Perhaps others may feels similarly.

M: I don’t know whether such policies have a neutral or negative effect on the Monetary scale of invention (and its future monetization). But, I can’t imagine such IP policies act to increase the monetary scale of invention for which the inventor gives all claim to an entity other than his/her employer without surety of compensation! Moreover, whatever monetary return to the university might ensue, such agreements are also likely to lead to legal costs due to the conflicts that these agreements generate, thereby decreasing the return on the invention.

F: The IP clauses claim to do an effective job of increasing the Fraction of revenue a host institution will acquire. Indeed, they claim to protect 100% of the IP-related revenue. However, given the fact that any such clause is almost certainly in direct contradiction to the employee agreement of their visitor, then it is not so clear which clause of which agreement takes precedence.

In summary, I hope this formula and discussion have shed some light on the costs and benefits of aggressive IP policies. I contend that aggressive IP policies act to increase one aspect of potential revenue but are likely to decrease two other aspects. Whether the cumulative effect is positive or negative remains a topic for someone else’s blog (or study). In any case, the most likely outcome of visits is not necessarily IP but ideas. These ideas are much more likely to be shared in the public domain and perhaps even be the basis for collaborative research proposals to governmental and non-governmental funding groups. If at the end of the day, the university administration is counting $, irrespective of where it is generated, then it would be far more sensible to generate policies that would not favor one type of revenue stream (licensing derived from IP) over another (direct and indirect costs generated from grants). To reiterate: I suggest that aggressive IP policies are likely to negatively effect the probability that interactions occur that lead to monetizable ideas in the first place. Of course, such IP clauses may also have negative effects on the pursuit of knowledge, generation of knowledge, etc. (but wait, that was never the issue anyway).

Recommendations
I am not a lawyer. As such, the recommendations I lay out should not be mistaken for legal advice. Rather, I hope they are viewed as a few practical guidelines to avoid creating legal impossibilities and, in the process, diminishing rather than augmenting the likelihood that meaningful scientific exchange leads to the type of knowledge that will benefit society at large (and in some cases, stimulate revenues for institutions and individuals for whom this is important). These recommendations are meant to apply to instances where visitors from other US universities or the government do not receive a salary/stipend/benefits and therefore are not employees. Cases where a visitor is paid a stipend/salary/benefits suggest a form of employee-employer relationship that involve distinct contractual obligations. Cases of visitors from industry and/or foreign institutions may require separate treatment.

1. Clauses regarding partial/full assignment/protection of IP should not be considered a default standard in visitor agreements unless (i) the visitor will perform experiments and/or directly utilize laboratory equipment, reagents and materials; (ii) the visitor will discuss, view, or in any way interact with proprietary information/materials owned by the university. Identifying such cases could be addressed via simple online questionnaires when establishing the agreement.

2. In the event that language regarding assignment/protection of IP is necessary, such clauses in visitor agreements should not attempt to take primacy over the IP assignment that the visitor almost certainly has signed with their employee. Rather, they should specify their rights to ownership over their employee’s portion of IP generated as a result of the collaborative visit. At the end of the day, if IP is generated, then the scientists and engineers involved at both institutions will either come to a satisfactory division of percentage stakes or not. Technology transfer offices at major research universities routinely interact with each other and, I imagine, would be receptive to such a collaborative approach that they routinely practice, irrespective of the rules on the books that may have emerged from other administrative offices.

Thankfully, I believe that an excellent model for the default IP clause in visitor agreement already exists! It is part of the Visitor Agreement to the Kavli Institute of Theoretical Physics at UC Santa Barbara. I have highlighted the clauses that I think should become the new default:

“INTELLECTUAL PROPERTY - To the extent legally permissible and subject to any overriding UC obligations to third parties, your home institution may retain ownership of any patentable inventions or copyrightable software you may develop during your work at KITP while participating in a KITP program as long as: (1) you will be visiting KITP for less than one year; (2) you do not need to be entered into UCSB’s official payroll system; (3) any financial support provided to you by KITP is for travel, living expenses and other similar costs and not to support direct research activities/projects (participation in the KITP program is not considered a direct research activity); and, (4) your activities occur in KITP facilities, only. Please note that if you engage in any research-related activities outside of KITP facilities and programs, the UC’s standard intellectual property policies, which require the UC to own intellectual property developed by visitors using UC facilities, will apply”

Figure 2 - KITP, indeed why would you go elsewhere on campus if you were based here! http://www.kitp.ucsb.edu/sites/default/files/kitp/visitors/localarea/DSCN4997.JPG

The benefits of such a clause is that it assumes the default mode of a visit is for scientific collaboration. That is absolutely correct! Further, it does not try and replace the established agreement of visitors with their home institutions. Indeed, other institutions have tried (to some extent) to address this point, e.g., that of Stanford University which explicitly creates an alternative agreement if a prior employer agreement is already in place: SU 18A. A simple questionnaire could be used to help identify cases that require further discussion. The key here is simple, since creating yet another bureaucratic layer of complexity to visits is not what the scientific community wants nor needs. Indeed, a final recommendation should be:

3. IP agreements should not become an element of short-term visits where laboratory access is not needed (i.e., as part of seminars, symposia, mini-conferences, etc.).

Of course, some might argue: all of this is moot since universities should not be in the business of generating, retaining and fighting for IP that is created with tax dollars, but should give away access to all published inventions. That perspective is important and discussed extensively elsewhere. However, the issue at stake is that for some institutions, IP related revenue is a significant portion of income and this is a likely driver of the increasingly aggressive visitor IP policies that are unlikely to disappear.

In closing, I hope that this entry stimulates some discussion and perhaps even productive conversations to minimize the extent to which IP clauses act at cross-purposes with the visits of Principle Investigators, postdocs and students between peer institutions.

Postscript:

All parties, both at UA and GT, have been incredibly helpful and highly sympathetic as I explained my rationale for taking issue with the IP clause of my visitor agreement. Perhaps they were also surprised that I read the agreement. In the interest of expediting the process, I handed over my case to the appropriate representatives at GT and at UA. After some discussion, they found a way forward. Recall that the original IP clause in my visitor agreement includes a reference to claims of ownership under the “ABOR IP Policy”. The relevant ABOR IP policy applies to two types of individuals:

1. Any intellectual property created by a university or Board employee in the course and scope of employment, and
2. Any intellectual property created with the significant use of Board or university resources, unless otherwise provided in an authorized agreement for the use of those resources.”

The terms of my visitor agreement make it clear that I am not an employee. Hence case 1 does not apply Second, because of my situation as a theoretician, I do not plan on using any UA laboratories, equipment, materials, etc.. Moreover, all of my computational-based research will continue to be conducted on GT-owned or personally owned computers. Hence, the only “resources” I plan to utilize are: (i) an office; (ii) the internet. Both UA and GT agree that such activities do not cross the threshold for “significant use” of resources. Hence, case 2 does not apply. So long as my use does not change, then UA should not have standing to claim any IP and my signing of this agreement would not conflict with my employee contract at GT. This understanding now has a paper trail.

As of mid-September 2013 (one month or so after my initial refusal to sign the DCC), I have now signed the agreement and am now officially a Visiting Professor in the Department of Ecology and Evolutionary Biology at the University of Arizona.