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October 23, 2014

Faculty have new options for assigning IP rights

Faculty have some new choices about when to assign intellectual property (IP) rights for their work to the University.

The rollout of a revised IP rights assignment agreement and related information was to begin this week.

In an Oct. 15 presentation to Senate Council, Provost Patricia E. Beeson outlined the options and promised information sessions and a web page with further details to come.

Following controversy over a Sept. 16 deadline by which all faculty were to sign a blanket IP rights assignment agreement or risk losing access to federal research dollars, Beeson, at the urging of Faculty Assembly, suspended the deadline and convened a task force to suggest revisions to the July 1 document. (See Sept. 11 University Times.)

Beeson explained that the administration was dealing both with federal regulations that require the University to have IP agreements with faculty members before it can accept federal funding for their research as well as with the aftermath of the Supreme Court’s decision in the Stanford v. Roche case.

In that case, Beeson said, “an individual researcher at Stanford had inadvertently assigned his ownership of intellectual property to a company. And as a result, even though he wanted the university to have the intellectual property so that he could share in the returns, he ended up not, because he did not have a prior assignment.

“That case established two things: First, that assignment agreements are needed, and that the timing of those assignments is very important,” the provost said.

Following several meetings of the task force, “I think we came up with a resolution that should satisfy the various interests of the faculty as well as the administration and the federal government,” Beeson told Senate Council.

Not all faculty will need to sign an assignment agreement at this time. “We’re only going to be requesting agreements from faculty members who have federally funded research,” Beeson said.

“We are asking faculty to sign them within 30 days of receipt,”   Beeson told the University Times.

Faculty who are satisfied with the IP assignment they signed in August can let that agreement stand, Beeson told Senate Council.

Or, they can sign a revised version of the IP assignment. Like the July 1 document, it assigns ownership of IP to the University at the time it is signed.

“It protects the investigator’s interests against inadvertently assigning intellectual property to somebody else, through an employment contract or something else. It’s also going to facilitate the processing of third-party agreements,” Beeson said.

She explained: “Corporations would prefer to work with the University; they don’t want to work with an individual faculty member. And a lot of corporate contracts, material transfer agreements, foundation agreements, actually require that we have signed assignment agreements by the faculty before they will work with us.”

Longstanding University IP policy assigns ownership of intellectual property to the University and provides for revenues that arise from commercialized intellectual property to be shared between the faculty member and the University.

The revised blanket agreement also ensures that, should University IP policy someday change to give faculty a larger share of the returns, those who signed the blanket assignment also would be guaranteed the more favorable deal, Beeson said.

“If a faculty member is not prepared to sign that right now, they can sign an IP rights acknowledgment agreement, which acknowledges their responsibilities under University policy and under federal regulations to protect the rights of the federal government in any invention that they disclose, and to disclose promptly any inventions that come out of their research that was funded by the federal government,” the provost said.

Faculty still will be required when they disclose an invention to assign the rights to the University, Beeson said.

“It will allow the process to continue as it does right now, with the assignment happening at the point of disclosure, whereas with the first option, the assignment would happen right now.”

Beeson told the University Times that once this bureaucratic process is aligned, a task force would be assembled to gather faculty input on broader issues surrounding University research.

“The plan is to not just review our policy but our full stance in terms of corporate research and partnerships outside the University,” she said.

“Really, the goal here is to facilitate the research of the faculty,” Beeson said, citing the necessity in some cases for faculty to partner with researchers in corporate labs or at other institutions, or to obtain material transfer agreements. “That involves complicated contracting right now and we’re trying to really see how can we facilitate that work more effectively, how can we encourage faculty to be engaged,” she said.

“Some faculty want to have impact in their research. Sometimes that means impact in their profession. Sometimes it means having books published, articles published. But for some people the impact of their work is helping to translate that basic research into practice and we need to have the faculty consider how we evaluate that type of contribution.”

“We’re looking at the full range. We’re not just looking at a policy. We’re looking at the support, the value that we place on different types of impact and research,” Beeson said.

She noted that in a new statement of priorities adopted by the Board of Trustees in February, “one of the significant changes in the priorities was to say we wanted to do research of impact. And that impact can be felt in many ways and we need to facilitate our faculty in achieving that aim.”


The University’s research direction figured heavily in Chancellor Patrick Gallagher’s report to Senate Council.

He cited several recent federal grants to the University, including awards for whole eye transplantation, for assessing markers associated with traumatic brain injury and for developing 3-D models of the liver, as well as a  four-year, $11 million National Institutes of Health award to develop a big data center of excellence. (See Research Notes column, this issue.)

Big data has huge potential. “We see these incredible pockets of excellence but there’s also an underlying story that I think we should begin to weave together, where the incredible strengths we have in particular research areas — in this case, the medical sciences — can be itself transformed by taking advantage of big data and advances in computational data analytics,” Gallagher said.

“And when you look broadly in these areas — and it’s certainly true within the University — you begin to add to these UPMC and all the clinical data they have and CMU with the experience they have in machine learning and other areas, the Pittsburgh region is exceptionally well positioned to be not just a leader but I think the leader in the United States in this area,” the chancellor said.

“This has captured our attention and focus and we’re working hard to see about how we can really cement that positioning. I think that touches on a number of elements including drug discovery, personalized medicine, brain research activities, and I would just tell everyone to expect to hear more about that as things continue to develop.”

Developing expertise in big data can benefit the University’s own educational mission as well, Gallagher said.

“When you focus on things like enabling research with data, you will end up building a capability within the University to handle and use and manage large data sets. It is also transformative inside the University.

“Just as exciting has been how this can be used in our classrooms — understanding what our students want to do, the idea of personalized education — where we can, again, use this ability to manage and use large amounts of data to provide the kind of leading educational experience that I think our students are expecting.”

Gallagher reiterated that the University will be taking a fresh look at commercialization and IP policy, calling initiatives such as the Innovation Institute and a focus on entrepreneurship “critical enablers” as Pitt seeks to integrate commercialization activities with its research activities.

“As we start to look at how to solidify Pitt’s position in a time when federal research dollars are flat or declining, a major focus is turning to how do we work with private sector sources of funding: How do you work collaboratively with companies, how do you support startups, how do you enable faculty to participate in that?” Gallagher said.

“I didn’t want anyone to lose sight of the fact that while we’ve been focusing on signing agreement papers, the big picture here is really exciting, which is a chance to position the University to be at the forefront where we can interact more closely.

“When you see these major grants that our researchers are being successful at getting, you realize that we really are at the cusp of amplifying those big grants and doing something even more.”


University Senate President Michael Spring, a member of the provost’s task force on the IP assignment issue, commended Beeson for her action on the issue.

“I appreciate the speed, collegiality and thoroughness with which the provost has engaged these matters,” he said.

“As the chancellor has noted, there are a separate set of discussions that are about to begin on intellectual property,” Spring said. “I think that the provost and chancellor are looking to examine our policies on intellectual property and they’re exactly in line with what I’ve heard faculty say needs to be looked at.

“The phrases that I’ve heard them use are: ‘How do the policies impact the exploitation of innovation and the dissemination of knowledge?’

“We are not a private research lab. We are an academic institution and we have a debt to our society and to a lot of the funding we receive, and I think that this is a most appropriate goal,” Spring added.

“I look forward to having the Senate involved in that process.”

Committee name change approved

In other business, Senate Council approved unanimously renaming the Senate commonwealth relations committee the governmental relations committee to reflect its expanded mission of interacting with federal, state, county and local governments that have an impact on the Pittsburgh and regional campuses.

Faculty Assembly on Oct. 7 unanimously approved the change, but because the name change involves a change to Senate bylaws, Senate Council’s approval also was required.

President’s report

Spring said that the extended executive committee, which includes committee chairs, met earlier this month to review accomplishments and goals. Among the items discussed was ensuring that faculty have an opportunity to provide timely input on University issues.

“It’s our responsibility to speak up and advise the administration on any matters of University-wide concern,” Spring said.

“Sometimes these matters don’t reach the executive committee or the relevant standing committees soon enough for us to provide feedback. We’re trying to figure out ways that we can inform the chancellor and provost and the deans when it might be good to share something with Faculty Assembly or Staff Association Council to get some feedback,” he said.

“We want to look to find ways to make sure the appropriate faculty are involved in issues at a stage where we can provide the appropriate feedback in a formative way so as to help the process.”

Also in his report, Spring announced:

• Documents related to research data management — the topic of today’s (Oct. 23) Senate plenary session — are posted under the “initiatives” tab at as part of the Senate’s effort to provide information on issues that the body is addressing.

• Jerome Richey, University counsel, has replaced Jerome Cochran, executive vice chancellor, as one of the chancellor’s appointees to the University Senate.

—Kimberly K. Barlow

Filed under: Feature,Volume 47 Issue 5