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September 11, 2014

IP issue stirs debate at Faculty Assembly

About the only thing that Faculty Assembly members agreed on in this week’s lengthy meeting was that the members present — save one — aren’t lawyers. What’s more, the lone attorney in attendance joined the rest of the group in disclaiming any expertise in the finer points of the main topic of debate: intellectual property (IP) law.

The Assembly’s Sept. 9 session — its first meeting of the new academic year — spanned more than two hours, with lengthy, at times heated, debate that yielded two sharply divided votes on a pair of resolutions presented by the University Senate tenure and academic freedom committee (TAFC).

Intellectual property rights

While administrators say there has been no change to the University’s longstanding copyright and patent rights and technology transfer policies, some faculty are not so sure.

IP AgreementTAFC crafted a resolution late last week in response to concerns that some faculty are feeling pressure to sign a new IP rights assignment agreement, revised July 1 — or risk losing grants, access to University resources or, some fear, their jobs. (See the IP rights assignment agreement.)

The resolution “strongly urges” the provost to delay requiring the agreement for up to six months to give TAFC time to gather additional information. It passed in an 18-11 vote with one abstention.

The resolution itself, which contends the IP mandate was issued without input from the Senate, “apparently bypassing the principles of shared governance,” came under scrutiny, with University Senate President Michael Spring questioning TAFC’s quick drafting of the resolution and labeling the committee’s contention “inflammatory.”

TAFC co-chair Barry Gold of pharmacy said TAFC fielded faculty inquiries after Carey D. Balaban, vice provost for faculty affairs, reminded deans in an Aug. 4 memo that “in order to comply with the University’s obligations to receive federal grants and contracts” all new hires must sign the IP assignment upon employment and that the new IP document must be signed by current faculty and non-clerical staff and sent to the Office of Technology Management by Sept. 16 “for continuity of access to accounts related to federal research awards.”

“We didn’t know this intellectual property agreement was coming either,” said Gold in defense of the committee’s action. “Whatever we did was to try to get this open to the Faculty Assembly as quickly as possible before the Sept. 16 deadline. That was the goal of getting this resolution in front of you today.”

Gold told Faculty Assembly, “The main thing we’re trying to do here is slow this steamroller down, to give the Faculty Assembly a chance to look at what is a major change in policy,” he said, noting that both the deadline and the wording of the policy are raising concerns.

Underlying the new IP assignment agreements is a 2011 Supreme Court decision in the case of Stanford v. Roche, which Balaban said has changed the way the University must implement its IP policy. “Instead of before, where you just had to have the policy, you now have to have an explicit statement acknowledging the policy, which is the simple form we sent out.”

He said: “Your assignment is subject to the terms of our current agreement. It’s not going outside it in any other way. This agreement is acknowledging our current policy. The policy has not been changed.”

Noting that the University’s policies on patent rights and technology transfer  (Policy 11-02-01, revised July 1, 2005) and on copyrights (Policy 11-02-02, revised Sept. 5, 2006) aren’t new, Spring said: “I do not believe there’s been a change. I believe the policy’s the same. I believe anybody at our intellectual level that reads this document and reads the policies, who believes that we’re assigning everything to the University is being naive.”


TAFC co-chair Maria Kovacs of medicine expressed concern over a memo sent from the Office of Research this week that states that applications for the next round of National Institutes of Health (NIH) grants, which are due Oct. 3, won’t proceed unless investigators have signed the IP assignment.

And bylaws and procedures committee co-chair Nicholas Bircher, a Senate past president, noted that the IP agreement is prefaced with the words “Signing and submitting this form is a condition of employment, for receiving a University of Pittsburgh appointment, and/or for being granted access to University of Pittsburgh resources.”

“The use of the term ‘condition of employment,’ in my view, is threatening when that is in bold letters at the top of the document,” he said.

Bircher also questioned a provision that states: “Subject to the terms of the policies, I hereby irrevocably assign and transfer to the University my rights, title and interest to all intellectual property that I conceive, create and/or invent during my employment or association with the University and to which the University has rights pursuant to the policies.”

The wording, noted Karen Norris of immunology, is a change from longstanding policy, which assigns rights on a case-by-case basis when an invention disclosure is submitted, to a blanket assignment of future rights.

Although some faculty disputed the point, Balaban said it has been confirmed that NIH and other funding agencies are requiring the assignment agreement.

“No one is saying that faculty will be terminated if they don’t sign,” he added.

Vice Provost for Research Mark Redfern said, “I don’t think there’s any intent to come down with a big hammer: What we’re trying to do is to get the grant proposals in under the guidelines of the NSF and NIH in particular, and other federal agencies that required this.”

Bylaws and procedures committee co-chair Scott Nelson of chemistry asked, “Is this truly jeopardizing all October cycle grants if this letter is not signed?”

“That’s the concern,” Redfern said. “The provost believes it and the general counsel believes it. That’s what’s driving this: so we can get our grants in and get funded. That’s the only reason that we’re pushing this so hard.”

Given faculty concerns about the wording, Seth Weinberg of dental medicine asked whether a simpler document “that basically just says ‘I abide by the two policies’” could be drawn up. “If there are no changes whatsoever, just make it a two-line statement, have everybody sign it and you’ll get it back without any concerns at all.”

Balaban said the new IP policy statement has been in the works for about a year, adding, “The interpretation of the University has been confirmed by NIH to the University that we need to get these assignments in this way.”

However, Bircher noted that the American Association of University Professors has researched IP policy. “It was pointed out in the AAUP article there is a spectrum of interpretation across institutions in the United States, some requiring extremely tight construction, some requiring somewhat less tight construction, so there’s a spectrum of different language that appears in these documents, all of which appear to meet federal requirements if you have such an agreement.”

Norris disputed the contention that federal funding hangs in the balance. “I’ve talked to a lot of attorneys. They have informed me that it is not correct that NIH will not fund or support your grants without these assignments. In actuality, what they’ve said is that all requirements for the funding of your grants are written in your notice of grant award under the terms and conditions.”

She added, “I just got an NIH notice of grant award and they said there’s no stipulation whatsoever that you have to assign your IP rights. The only stipulations for funding are written in the notice of grant award for each award.”

Prior to the vote, bylaws and procedures co-chair Nelson acknowledged the complicated nature of the issues at hand: “The fact that members of the faculty have expressed concern about their ability to fully comprehend what it means suggests to me that it requires more thought, more discussion.

“At the same time, if the University would be, if you will, negligent by not securing this documentation, resulting in all of our grants getting rejected out of hand, we’re all going to be pretty upset about that. I think we need some clarification. Do we need something in place by Sept. 16 in order to get our grants funded? I’m all in favor of that because I don’t want all my grants to get rejected because I lack a single signature.

“I think it just needs to be clarified for the sake of the faculty but also for the sake of our grants.”

Gold reiterated that TAFC wants to work with the administration in shared governance. “Obviously the administration has to eventually enact a policy that, in fact, we’ll sign. We understand that. It’s not an issue of control. We just want to work with them to make sure this is a document everyone understands what it means when they sign it. And they are not forced, almost at gunpoint, to sign this thing. The biggest problem here was the timeframe that was pushed on us to make a decision to sign or not sign something based on what are bolded threats across the top of a memo.”

Whether the Provost’s office will grant the Assembly’s request remains unclear. There was no word as of the University Times press time on Wednesday as to whether the provost had received the request or acted upon it.

In recognition that faculty do have questions, the Senate has posted the agreement as part of a collection of documents on intellectual property issues under the “Initiatives” tab at

References include links to Pitt’s patent and copyright policies, and IP policies of other institutions, an AAUP statement on IP, policy statements from NIH and NSF, correspondence between the Senate and the administration, and background on the 1980 Bayh-Dole Act (which facilitated technology transfer by permitting universities to commercialize inventions developed with the use of federal research funds) and Stanford v. Roche.

Ad hoc committee membership clarified

The decision on the intellectual property resolution came on the heels of a nearly hour-long debate to clarify who is responsible for selecting members to serve on the Senate ad hoc committee that will review guidelines for evaluating tenured faculty and associated salary decisions.

The Assembly, in a 20-10 vote on April 29 (see May 1 University Times), authorized the formation of the ad hoc committee, motivated in part by ongoing concerns over performance policies that permit pay cuts for some School of Medicine tenured faculty, and the desire to look into how tenured faculty are evaluated University-wide.

Following a TAFC request for clarification, the Assembly in a separate action on Tuesday confirmed that the co-chairs of TAFC, along with co-chairs of the Senate bylaws and procedures committee and co-chairs of the budget policies committee, would select the core committee members.

The Assembly added the proviso that the committee must have a majority of members from outside the Schools of the Health Sciences in order to ensure representation of the broader University community. That measure passed in a 32-7 vote with six abstentions.

—Kimberly K. Barlow

Filed under: Feature,Volume 47 Issue 2