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University of Pittsburgh

November 6, 2014

Letters

(Editor’s note: The following letter was submitted by Dennis Curran, faculty member in chemistry.)

To Pitt faculty:

All Pitt faculty members are now required to sign a form to regain the right to submit a grant proposal. If you are such a colleague, I appeal to you not to sign one of the “Intellectual Property Rights Assignment” forms, so-called Options 1 and 2. Instead, sign the “Intellectual Property Rights Agreement” Form. This is the so-called Option 3. Here is the case for Option 3.

We are in the midst of the Great Academic IP Grab. The grabbers are the universities and the grabees are their scholars (faculty, students and staff). Like many other institutions, Pitt is now requiring faculty members to sign IP forms as a condition to submit grant proposals. Remarkably though, Pitt has separated itself from the pack. Instead of the Great Academic IP Grab, we now have the Great Academic IP Giveaway. If you sign Options 1 or 2 of the newly presented IP assignment forms, then you freely subject yourself to the Giveaway. By signing Agreement Option 3, you decline to participate in the Giveaway — for now, anyway. Option 3 sure sounds sensible to me.

First, a short history of the Great Academic IP Grab. The kickoff was a seemingly esoteric Supreme Court decision in a case called Stanford v. Roche. A Stanford scholar unwittingly signed a standard company IP form that gave away an invention. University administrators everywhere decided that this was a significant problem, but I am skeptical. (Would you sign a company IP form?) And they decided to solve the problem by grabbing all the IP from the get-go. If we scholars don’t own anything, then we can’t accidentally give anything away.

Universities are grabbing IP by compelling their scholars to sign a legal instrument called a “Present Assignment.” This is an ownership-transfer tool used by companies to ensure that they can make money from their employees’ ideas. It is not a tool for universities, which have scholars rather than employees. The compulsion comes because universities will not submit grant proposals without signed forms. Grant agencies have requirements, of course, and plenty of them. But they don’t dictate how those requirements are met. So to me, the “grant agency requirements” line looks like a lame administrative excuse for the Great Academic IP Grab. “We don’t want to grab your IP, but we have to; NIH and NSF made us.” Seriously?

Still, the assignments are apparently being circulated throughout academia as routine forms. Sign here, and we (your university) will submit your proposal. Many colleagues have already signed. We at Pitt are behind the eight ball. So I am told, at least.

Pitt joined the Great Academic IP Grab this past August. All faculty members were told that we had to sign assignments. We were told that these assignments were routine restatements of University policy, standard forms needed to submit grant proposals. People who knew what such assignments were (ownership-transfer instruments) thought that statements like these were untrue (me included). A lively discussion about IP ownership ensued.

Following a recommendation of the University Senate tenure and academic freedom committee, Provost Beeson suspended the Grab round and convened a task force, of which I was a member. The provost listened to different views, then decided on next steps. The result is the current Great Academic IP Giveaway. The remarkable change, as I mentioned at the outset, is that the “grab” is now a “giveaway.” Pitt doesn’t take our IP; we give it, or not.

At the core, IP ownership is a complicated legal issue. What is IP? It is ideas (and more). Who owns your ideas? When does ownership change? Fortunately, you don’t need to be an expert in IP ownership to decide which form to sign. The point is that you own something. Why would you give it away (Options 1, 2) when you can keep it (Option 3)? Don’t overthink this decision; it’s a no-brainer.

The University has provided some reasons why you may want to sign Options 1 or 2 that I do not find close to appealing. However, if you are seriously considering Options 1 or 2, then spend a few dollars to consult a lawyer. It won’t cost much; there are three simple forms to review (simple for your lawyer, that is). Ask your lawyer what your IP is. Ask who owns what before and after signing the assignment. Ask what the consequences of ownership are. In short, make sure that you understand what an assignment is.

You may not be interested in IP. Most of us are not. Why should you even care about all these forms? You should care because you came here for academic freedom. If you sign one of the assignments, then you give the University ownership of your ideas. You give the University the right to treat you like a company employee. This does not mean that your academic freedom will go away. But it does mean that whatever freedom you have is given to you by the University administration. It does not emanate from any fundamental right like ownership. What is given can be taken away.

Pretty far-fetched, you say, that Pitt would try to take away academic freedom? I suggest that it may already be happening. You thought that you had the right to submit grant proposals, didn’t you? Well, now you have to sign a form to get it back. Do you think that you have an unabridgeable right to consult? In fact, you have to ask Pitt for permission. You might find that this permission is denied. By what right does Pitt deny you permission to consult? By assertion of rights through the University Policy on IP. If you sign an assignment, Pitt will not have to assert this right anymore; you will have given it to them.

Did you already sign the assignment form in the Grab round last summer? Don’t feel bad. You were — to be polite — misled. If so, notice also that what you signed (Option 1) is set up as a default. You are queued up for the giveaway. But you can revoke Option 1 by signing Option 3 now.

Finally, you may recognize that the current approach will naturally result in two classes of faculty members: IP owners and IP non-owners. Indeed, we already have these two classes because recent hires have been required to sign company-like IP assignments as a condition of academic employment. I suggest that this two-class system is fundamentally unfair and that it cannot stand indefinitely. The plan of the Pitt administration at the Grab round in August was clearly to have a single class of non-owners, the “company employee” class.

By offering the three options in the Giveaway round, the administration may simply be delaying this plan. By signing Option 3, we are treading water, no more. Perhaps Pitt will compel all of us to sign assignments later? But perhaps Provost Beeson and her team are signaling that they are willing to at least listen to a case for a “scholar class” of IP owners? This is a case worth making. Our rights as faculty members would emanate from our ownership of ideas. We would or would not give ownership to the University depending on whether we did or did not decide to commercialize our ideas. I am convinced that this approach is the better one for both faculty and administration.

Dennis P. Curran

Bayer Professor and Distinguished Service Professor of Chemistry

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Provost Patricia E. Beeson replies:

As Professor Curran’s letter demonstrates, the area of intellectual property is complex and in recent years has been shaped by court and regulatory challenges that have led to nationwide discussions of how best to manage intellectual property in the public interest. As we begin those conversations at the University of Pittsburgh, I anticipate they will be as fruitful and collegial as the conversations we have had over the past several months regarding the intellectual property agreements certain faculty are being asked to sign consistent with requirements of various granting agencies.

Regarding those agreements, I would like to be clear that only faculty engaged in federally sponsored research are being asked to sign an agreement by the November deadline — faculty who are not engaged in federally sponsored research are not being asked to sign an agreement unless an agreement is needed to meet the terms of the funding agreement. Information about these agreements can be found at: www.provost.pitt.edu/leadership-in/IPagreements.html. Questions not addressed there can be sent to slatini@innovation.pitt.edu

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