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!

Guest post from Joshua Weitz: Talking about the PI Sabbatical Beforehand: A Brief Guide for Faculty, Postdocs, and PhD Students in the Sciences

Guest Post by Joshua Weitz, Associate Professor, School of Biology and School of Physics, Georgia Institute of Technology

Introduction

I direct a theoretical ecology and quantitative biology group based in the School of Biology at Georgia Tech.  I am going on a 9 month “leave” (Georgia Tech does not call them sabbaticals) to the Department of Ecology and Evolutionary Biology at the U of Arizona in Tucson, AZ from August 2013-May 2014 where I will be based in Matthew Sullivan’s Tucson Marine Phage Laboratory.  In preparation for this leave, our group held an interactive discussion on challenges and opportunities arising from the PI sabbatical for faculty, postdocs and PhD students in the sciences.  The discussion took place in four parts in a one-hour period.  Below I describe the setup of the discussion followed by specific recommendations for faculty, postdocs and PhD students prior to the PI sabbatical. 

How to Talk about the PI Sabbatical

Part 1 – the setup: I asked for a show of hands of group members who had thought about how my sabbatical would change the group and its dynamics?  Nearly all members raised their hands.  When asked, the group members also noted that they were most concerned about how the sabbatical would affect them.  Hence, in an effort to try and understand the effect of the sabbatical on all members, we split into three small discussion groups which were asked to identify challenges and opportunities for (i) the PI; (ii) postdocs; (iii) PhD students. 

Part 2 – small group discussion: The individual groups talked about how the sabbatical would affect different group members.  There are currently 9 members in the group (not including the PI), so we divided into three groups of three (I did not actively participate in the small group discussions, but did check in on all three groups).  The PI group was comprised of one postdoc, 1 graduate and 1 undergraduate.  The postdoc group had 1 postdoc and 2 graduate students.  The grad student group had 3 graduate students.  Hence, the first item of discussion was an effort to identify issues at stake at each career stage.  Then, the groups began to discuss how the sabbatical might change business as usual.  The groups spoke for ~15 minutes.

Part 3 - reporting: Challenges and opportunities were identified for each of the three categories.  A number of salient themes emerged that serve as general recommendations.   The consensus was that a number of common themes would emerge prior to a sabbatical although each science research group may differ in its own interactions.  Our presumption is that the PI was going alone and this shaped the nature of our recommendations.  First, as suggested by one of the students, there was a sense that the PI sabbatical would lead the students into a “Spiderman situation” in the sense that “with great power comes great responsibility”.  The PI sabbatical would lead to greater independence for group members and that this independence involves greater need for self-motivation, taking a holistic (long-term) view of one’s research, and increased pre-planning given the changes to the PI’s availability.  Second, clear communication is essential. For example, if a PI plans to be incommunicado for long stretches of time, this may be manageable (even if non-ideal from a student perspective), so long as provisions have been made to handle both the administrative and research duties that the PI normally would handle.  As a rule of thumb, the greater the change in PI availability, the greater the need for pre-planning to ensure that students and postdocs remain on track for research, career and personal development goals.

Part 4 – the view of the PI:  I provided additional feedback, tailored to the group and specifically addressed an issue that could create the most anxiety: my availability for one-on-one interactions.  I also distributed an initial recommendation list, modified here in light of group discussion. 

Guest post: Story Behind the Paper by Joshua Weitz on Neutral Theory of Genome Evolution

I am very pleased to have another in my "Story behind the paper" series of guest posts.  This one is from my friend and colleague Josh Weitz from Georgia Tech regarding a recent paper of his in BMC Genomics.  As I have said before - if you have published an open access paper on a topic related to this blog and want to do a similar type of guest post let me know ...

----------------------------------------
A guest blog by Joshua Weitz, School of Biology and Physics, Georgia Institute of Technology

Summary This is a short, well sort-of-short, story of the making of our paper: “A neutral theory of genome evolution and the frequency distribution of genes” recently published in BMC Genomics. I like the story-behind-the-paper concept because it helps to shed light on what really happens as papers move from ideas to completion. It's something we talk about in group meetings but it's nice to contribute an entry in this type of forum.  I am also reminded in writing this blog entry just how long science can take, even when, at least in this case, it was relatively fast. 


The pre-history The story behind this paper began when my former PhD student, Andrey Kislyuk (who is now a Software Engineer at DNAnexus) approached me in October 2009 with a paper by Herve Tettelin and colleagues.  He had read the paper in a class organized by Nicholas Bergman (now at NBACC). The Tettelin paper is a classic, and deservedly so.  It unified discussions of gene variation between genomes of highly similar isolates by estimating the total size of the pan and core genome within multiple sequenced isolates of the pathogen Streptococcus agalactiae.