Faculty Senate 3/5/15
II. Approval of minutes from February 12, 2015
III. Report of Faculty Senate President Jim Carothers
IV. Report of the Bi-Campus Committee on Patent Ownership and Faculty Consultation (Andrew Torrance, chair)
V. Status of Revisions to the Faculty Code of Rights, Responsibilities & Conduct
VI. Old Business
VII. New Business
March 5, 2015
3:30 p.m. - 203 Green Hall
March 26, 2015
MEMBERS PRESENT: Faculty – Jonathan Mayhew, Jim Carothers, Mahasweta Banerjee, Philip Baringer, Thomas Beisecker, Jay Childers, Katherine Clark, Antha Cotten-Spreckelmeyer, Mohamed El-Hodiri, Chuck Epp, Lisa Friis, Kim Glover, Andrea Greenhoot, Kissan Joseph, Pam Keller, Kirk McClure, Gerald Mikkelson, Allan Pasco, Bozenna Pasik-Duncan, Meagan Patterson, Angela Rathmel, Marlesa Roney, Roberta Freund Schwartz, Bill Staples, Barbara Timmerman, Mike Williams, Lisa Wolfe-Wendel, Susan Williams. Ex-Officio non-voting – Provost Jeff Vitter
EXCUSED: Faculty – Jeremy Martin, Susan Williams; Kelly Chong, Nancy Kinnersley, Paul Laird, Steve Padget, Elizabeth MacGonagle, Stuart Macdonald.
ALSO PRESENT: Molly Mulloy and Kathy Reed, University Governance; Marta Caminero-Santangelo, Provost’s Office; Amy Smith, Policy Office; Julie Petr and Amalia Monroe-Glick, Libraries.
President James Carothers called the meeting to order at 5:00 p.m. and welcomed Andrew Torrance, chair of the Bi-Campus Committee on Patent Ownership and Faculty Consultation, whose report was emailed to members with today’s agenda.
REPORT OF THE KU BI-CAMPUS COMMITTEE ON PATENT OWNERSHIP AND FACULTY CONSULTATION
Andrew Torrance reported that the committee had a three-pronged purpose: (1) to clarify the policy on sponsored research, which has had limited opportunities for KU and its faculty in the past; (2) to facilitate faculty consulting agreements and clarify what happens when KU faculty consult on non-KU pre-existing intellectual property (IP), and (3) to remove ambiguities in the existing KU Intellectual Property policy, in general, and to help clarify KU and KU faculty ownership of intellectual property.
The committee began by adding two additional models related to sponsored research available to faculty members: Option #2 - the “expedited model” and Option #3 - the “executive exception model.” Torrance explained that under these models, companies that are willing to invest a significant amount of money may obtain more rights over the resulting IP, while bearing more of the costs from the beginning. For example, Option #3 requires a minimum company investment of $250,000 in total costs. He said the purpose of adding these two additional options to the existing option (which remains an option) was to add choices for faculty members who want to engage with companies outside the university.
The second part of the proposal has to do with assigning IP rights to companies in consulting agreements. There has been considerable ambiguity about what faculty members are allowed to sign away. Torrance observed that the Stanford v Roche Supreme Court case made it clear that universities need to clarify agreements and relationships so the faculty researcher, the outside company, and the university each understand their rights ahead of time, and avoid conflict later. The committee tried to clarify this in the policy. It allows a faculty member, officially for the first time, to consult on a company’s pre-existing technology and allows any preexisting company IP to stay with the company even if the consultant helps to improve its applications. Torrance added that, of course, if work is done using substantial university resources or within the scope of one’s job at KU, that IP belongs to the university and is covered by a different policy.
Torrance also explained that the Committee had made suggested amendments to the KU Intellectual Property Policy to clarify a number of distinctly unclear provisions. They did this by using language already found within the KU and Board of Regents Policies, and rephrasing several provisions to make its intent and application clearer and more predictable. The Committee believes the Policy remains true to its original intent, but is now easier to understand and apply.
Torrance said the default rules are generous to the faculty member and the clarification benefits all parties. He emphasized that a broad cross section of faculty, researchers, administrators from both campuses were involved in updating the procedures unanimously approved the report.
Following discussion, Jim Carothers said he would entertain a motion for the Faculty Senate to receive the report, with thanks to Torrance and his committee for their fine work, and urged that it be sent with our support to the administration.
Ron Barrett-Gonzalez raised several questions about the Employee Invention Assignment Agreement new faculty must sign and stated that the form basically says everything you ever invent is owned by the University. He is concerned that the form does not appear to be on any University server and is not given to new faculty until after they resign from a previous positon and move to Lawrence. He believes this is a violation of Faculty Senate Rules and Regulations (FSRR) 6.1.2, which provides that the precise terms and conditions of a faculty member’s appointment must be provided in writing before the consummation of the appointment. Most problematic is that the Invention Agreement precludes Engineering School faculty from consulting in the summer with aerospace companies like Lockheed or Cessna because the company needs IP rights and the faculty member has already assigned his rights to the University. Barrett-Gonzalez said he would like some language in the revised document that would address these important problems.
Torrance agreed that the Employee Invention Assignment Agreement should be available on the KU website if it is not now. He assured Barrett-Gonzalez that the General Counsel’s Office has told him that, if approved by the Provost, the Invention Agreement form will be revised to comply with the new policy. He pointed out that new Option #2 for company-sponsored research solves the problem of summer consulting that Barrett-Gonzalez described and should alleviate the concerns of the School of Engineering faculty senate.
Clark/Mayhew moved to accept the report, with thanks to the bi-campus committee and with the following two provisos: 1) that the Employee Invention Assignment Agreement be updated to comply with the new policy, and 2) that the updated Assignment agreement be posted on the KU website and given in a hard copy to prospective new faculty before they come to campus. The motion passed.
No further business. The meeting adjourned at 5:30 p.m.