SENATE MATTERS: Intellectual property policy still a work in progress

Co-chairs of the Senate Research Committee

Research plays an important role in the mission of most universities, and faculty members from across campus engage in research activities to advance our knowledge in a wide variety of fields, including political science, chemistry, physics and biomedical disciplines.

Much of this research is funded by grants awarded from Federal Institutions such as the National Science Foundation (NSF) and the National Institutes of Health (NIH). Pitt researchers have been highly successful in obtaining such federal grants and now ranks fifth in total grants awarded by the NIH.

Such intense research activity often leads to new discoveries and inventions that can be commercialized in order to benefit society. The Innovation Institute at Pitt assists faculty with this, and last year alone 23 start-up companies were launched based on Pitt technology.

In general, the intellectual property (IP) surrounding an invention is owned by the inventor. Many inventors at universities assign the IP to the university to allow the university to file the necessary patent applications and seek industrial partners, all of which is time consuming and expensive.

Prior to 1980, there was no standard policy pertaining to IP generated as a result of research funded by the government. In 1980, Congress passed the Bayh-Dole Act, which allowed recipients of federal funding, such as universities, to pursue ownership of any invention made as a result of federal funding, in preference to the government. Many universities interpreted this act to mean that they should take ownership of all faculty inventions, although in practice this did not involve formal written IP assignments.

In 2011, the Supreme Court ruled in favor of Roche Molecular Systems in the case of Stanford v. Roche, which arose when Stanford sued Roche for infringing its patent rights. However, since Stanford did not have a written IP assignment from the faculty member who made the invention, the Supreme Court ruled in favor of Roche. This prompted many universities to require all faculty members to assign IP for their inventions to the university as a condition of their employment.

In 2014, Pitt attempted to do the same, and the research administration, then headed by Vice Provost Mark Redfern, issued a new IP assignment form that assigned ownership of all past, present and future IP to the University. All faculty were required to sign this as a condition of employment. This was greeted with great consternation by the faculty at the time since this seemed to violate the core values of the University, namely those of academic freedom, transmission of knowledge, scholarship, research and shared governance. To its credit, the administration listened to the faculty and altered the requirement and created a new form that essentially gave faculty more flexibility.

Following this debate, the University Senate created a new standing committee called the Research Committee, which was charged with providing assistance to faculty on all matters related to scholarship and research. This committee has provided a valuable opportunity for faculty, staff and students to interact and advise the research administration, now headed by Senior Vice Chancellor for Research Rob Rutenbar. This has been successful and, last year, new policies on Research Integrity and Conflict of Interest were approved following extensive feedback from the Research Committee.

The issue of IP ownership came up again this last summer when the regulations governing the Bayh-Dole Act were changed. The new rules now mandate that universities have a written IP assignment for all subject inventions that arise during a period of federally funded research. This prompted the administration to again require that faculty, staff and students assign all IP to the University. This was done without consultation with the Research Committee.

In addition, the form appeared to include ownership of copyrightable materials, such as books and publications, which are not covered by the Bayh-Dole Act. Because of this, the Research Committee and other interested faculty raised objections to the new form, which were discussed in detail in a recent meeting with the administration.

As a result of this the office of the senior vice chancellor for research is rewriting the form to reflect the fact the IP assignment does not cover copyrightable material and that it specifically refers to inventions that are covered by the Bayh-Dole act. In addition, students and staff will not be required to sign this form.

During the coming academic year, the existing IP policy of the University of Pittsburgh will be rewritten to more accurately reflect current research practice and federal requirements. Rob Rutenbar is setting up a committee to assist in this endeavor, and we expect the Senate Research Committee to be actively involved in this process.

There is a concern among some faculty members that IP assignment to the University for inventions takes away the freedom of faculty to decide whether or not to proceed with patent protection and commercial development. These and other issues will be discussed in the coming months and we encourage all interested faculty to contact us with their views and opinions on the IP issue, as well as other research-related topics.

Penelope Morel is a professor of immunology and Patrick Smolinski is an associate professor of engineering.