The Senate Research Committee updated attendees of the first Faculty Assembly meeting of the fall semester on the progress on the University’s intellectual property procedure changes.
The Sept. 4 meeting began with brief opening remarks by Senate Council President Chris Bonneau, where he highlighted some of his goals and reviewed events of the summer. Senate Research Committee members updated the Assembly on an ongoing discussion regarding changes to Pitt’s Intellectual Policy. This discussion joins a long line of numerous IP debates at Pitt over the years.
Co-chairs Penny Morel and Pat Smolinski summarized the committee’s Aug. 29 discussion on the proposed IP policy revisions with Senior Vice Chancellor of Research Rob A. Rutenbar.
In a memo given to the committee on Aug. 28, Rutenbar explained that new federal regulations regarding the Bayh-Dole Act of 1980, published in April 2018, went into effect on May 14. Pitt was given 30 days to adhere to the new changes.
The Bayh Dole Act allows universities to get the rights to IP, which is how universities can use inventions created with the support of federal funding for commercial purposes, according to Pitt. Before the act, the federal government held the titles to inventions made with federal funding.
In order to receive federal funding, universities have to adhere to the Bayh-Dole regulations. Pitt established three “options” on “assignment” forms for inventors to hand the rights to their IP to the University.
The University decided that a new IP assignment form with altered language was necessary to follow new federal guidelines, which Rutenbar wrote in the memo. The changes included an “Option 3 +” and a unified IP assignment form with all the options.
However, after some feedback, on Aug. 17, Pitt's administration decided to “pause” the new assignment rules so they can be tweaked.
Morel said there was a “fair amount of pushback” on the proposed new IP assignment form. She said the issue was that the change seemed “overriding” and “overreaching” because it seemed to require IP assignments for all scholarly work, including items that were under copyright.
The new policy proposal also altered Option 3 on the form, which was essentially the promise to assign IP when necessary and seemed to require that technical staff, including grad students and post-docs had to sign the policy, Morel said.
Committee members also felt the new changes were rushed and that they weren’t properly consulted by administrators on the changes.
After a few Assembly members asked why the changes were made the way they were, Bonneau said he thought a few key things happened that led to the decision.
“The administration was taken off guard by the changes in the Bayh-Dole laws that gave 30 days for compliance,” Bonneau said. “This happened at the end of a semester when a lot of faculty are leaving for the summer, and I think they thought this was a simple fix that would be done easy enough and wouldn't disrupt the tenuous equilibrium we fought long and hard to maintain.”
Bonneau added that the administration recognizes that it could have handled the process differently. “They know they were wrong on that, they've apologized for being wrong on that and I think going forward that we can expect better.”
The committee gave Rutenbar feedback on the new proposal and is waiting to see a final draft after Rutenbar consults a legal team.
Morel said the final version of the proposal is expected to consist of “a return” to the Option 3 before the changes; language that specifies that scholarly work by copyright isn’t under the agreement; a provision that graduate students and post-doctoral fellows won’t be required to sign and only individuals listed as “key personnel” will have to sign; and a statement that signing the new agreement will supersede any previous agreement signed.
In all likelihood, Morel said, the IP assignment form would need to be signed at the activation of a grant. The University also would like to use electronic signatures for IP forms, but still requires original signed documents for legal concerns.
There’s no concrete timeline for the completion of the new policy, but Bonneau said the Faculty Assembly will monitor the situation and eventually discuss it after the Research Committee looks over a new draft.
He said he thinks “we’re on a good path to at least a good short-term resolution.”
“This, I think, is one of the pressing issues on our docket this year because of the implications and the fact that it affects a large swath of people at the university,” Bonneau said. “Hopefully by the end of the year, we’ll have something that makes everybody happy.”