Archive for Friday, February 28, 2014

Kansas AAUP pushing for stronger patent rights for faculty

February 28, 2014

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A faculty group in Kansas is fighting for intellectual property rights on inventions that university employees create off campus.

The Kansas chapter of the American Association of University Professors is trying to persuade the Kansas Legislature that it's in the state's interest to ensure faculty retain the right to patent technology they develop on their own time.

Ron Barrett-Gonzalez, a Kansas University professor of aerospace engineering and head of the Kansas AAUP chapter, said the university has every right to patent inventions that faculty create in the course of university research. The problem for him is that mandatory university contracts on intellectual property are binding through the entire year, including the summers, when many faculty leave.

His worry is that the agreement could potentially prevent faculty members from collaborating with companies that wouldn't want to turn over patents to the university. That in turn could limit faculty knowledge and prevent state companies from benefiting from their expertise, Barrett-Gonzalez said. "It's severing the link between faculty and industry."

KU's "employee invention assignment agreement" stipulates that any invention developed by an employee using KU's "equipment, supplies, facilities, time, personnel or trade secrets" can become the "sole and exclusive property of the university." Revenue from technology licensed by the university is shared among the employee who invented it, that person's department and the university.

Barrett-Gonzalez said KU's agreement, which was introduced to campus in 2008 and must be signed by new faculty and staff when completing the employment process, is "buried in a stack of papers" new employees must sign.

"It's flat-out unethical," he said.

A report from the national AAUP found the trend toward university control of intellectual property to be widespread through the country. Behind the trends is an administrative conviction that "faculty are not independent scholars, teachers, and researchers, but rather employees no different from those working in for-profit corporations that exist for the benefit of investors," the report said.

Julie Goonewardene, president of KU Collaboration and Innovation, said she doesn't know of any case where the invention agreement has prevented a faculty member from contracting with a company.

Goonewardene also said that even inventions created in an employee's free time might have benefited from university resources by shaping someone's expertise in a field. "It's a little hard to understand how work they're doing in the summer isn't informed by what they're doing year around" for the university, she said.

The KU engineering school's Faculty Senate issued a vote last spring calling for the language in KU's invention agreement to be rewritten. Currently the Kansas AAUP is taking the matter to the Legislature. Failing help there, Barrett-Gonzalez said the organization would look into taking the matter up in the courts.

Comments

Bob Zimmerman 1 year ago

But, but, but..I thought KU greatly expanded their resources and expertise in this area of helping faculty commercialize their ideas.

The KU strategy seems to have antagonized the people who are the very source of those ideas. Maybe the problem is a lack of people skills within the KU process.

Someone should check and see if other universities are taking this antagonistic approach or if it's a KU people problem. Having to fix this at the Kansas legislative level is a huge problem...something that should have been avoided.

Bob Zimmerman 1 year ago

Something is very odd here. This group of faculty has spent a lot of time and effort during the last year (probably longer) and are risking their careers and future financial gain, to challenge the KU policy. They had to build consensus among many diverse faculty and challenge KU administration at several levels (dept.chair, dean, provost, chancellor) and no solution was found. The only choice they see is to go to the Kansas legislature.

This tells me that the problem within KU must be quite severe for this group to sacrifice so much to pursue a potential alternative that could be worse than what they currently have.

Is there some level of desperation here? Otherwise, why would they do this? Perhaps the best solution is to get these two people (Barrett-Gonzalez, Goon) in front of a legislative hearing.

Ron Barrett 1 year ago

Part 1/3

Bob, You're right. There's a lot going on here. Most faculty feel woefully hamstrung and unable to speak to their representatives about most concerns they have given the recent announcements from KU's Office of Public Affairs. The AAUP acts as a public channel of many faculty concerns. One of the top three concerns of faculty across the State is the stripping of patent rights not only by KU, but by KSU Administrations. Their policies are very similar and so broad that make it nearly impossible for a company to hire such an encumbered faculty member for summer work, advice or consulting outside of the 9/mo academic year. The mechanism which makes faculty essentially not hirable is that the policy pre-assigns any and all of their patent rights to the KU/KSU Administration. That means that if a faculty member contributes in any way to a new product while working Off university time, property and money, hundreds or thousands of miles away, the University will have a claim. So no company in their right mind would ever hire such a faculty member. The practical effect for Kansas is that the most experienced and skilled aerospace engineering distinguished professor in the state cannot lend his expertise to help Cessna, Garmin, Spirit or Beech... The top fluid dynamicist (and another distinguished professor) in the state is similarly not employable by industry. Aside from being "bad public policy" in that it clearly harms the businesses of the state, it means that faculty will be forced to stay home, read outdated texts, write scholarly papers which will be read by a few dozen people and become ever more disassociated from industry labs, products, production lines, construction sites, tools, techniques, technologies and shop floors. They will, accordingly, not bring the latest knowledge to the classroom, which in turn harms students. You will find that the only faculty members in the School of Engineering who regularly still work with industry are typically hired before 2008 because they are not shackled by this agreement. This means also that a two-tier faculty system is being generated -- those with and those without rights. This situation is not healthy for any group. The KU School of Engineering recognized these dynamics in their vote last April. What Ben did not mention is that it was a unanimous vote rejecting this policy. The Administration declared in the following University senate meeting that it was not a policy which is subject to a faculty vote because this is an "HR matter." So the Administration unilaterally declared that this policy "shall be so."

Ron Barrett 1 year ago

Part 2/3 Ben was good enough to clip out the "flat out unethical" comment, which is true, but it was presented without being set in full context. By KU and KSU policy, both universities are bound by their own rules to present to new faculty members "the precise terms and conditions" of their appointment prior to the consummation of the appointment. The way that the Administration ensnared the top fluid dynamicist in the state is that they made him an offer, never presented this pre-invention assignment agreement in any way to him, pointed him to a vague collection of convoluted on line links (none of which had this agreement in any form) and he accepted the appointment. He sold his house, resigned his old position, uprooted his family, showed up on campus and only when he walked over to Carruth O'Leary once on campus was he presented this "take-it-or-leave-it" type of "agreement." The poor guy had absolutely no choice but to sign. They had him. I would hold that the Administration was in violation of their own policy and both old and new related KBOR policy... but... they did it anyway. That is the more exacting description of what I find to be "flat-out unethical." Some have asked if it's illegal -- I'll leave that debate to some attorney and perhaps a court to figure out. But as for being unethical? Any reasonable person can figure that one out. Of course, there's much more to the "agreement" dynamics as you can imagine. If you run the policy by a skilled attorney, you will find that it forces faculty members to sign away their rights under the 5th Amendment's "Takings Clause" and their patent ownership rights guaranteed to faculty under the Supreme Court's "Stanford vs. Roche" decision. Because the University only pays faculty for 9 months of work, and yet claims 12 months of intellectual property, it could easily be argued that this is a "taking" of private property by a public entity. Of course if a faculty member "agrees" to such a taking by signing a contract, then it's alright. If the faculty member doesn't agree... then it's up for debate... and probably litigation. As an aside, pretty much every faculty member I've spoken with has no problem with the University claiming 12 months of intellectual property -- if they pay for 12 months of work. Just put all faculty members on 12 month appointments and there'll be no argument. It's easy. The Administration is trying to get 4 cars for the price of 3... pretty sweet deal if you ask me.

Ron Barrett 1 year ago

Part 3/3

    As for Julie Goonewardene's assertion, first, let me assure the reader and the general public that I have only the greatest respect for the lady and work with her on a number of projects -- all of which are IP related. I have only had positive experiences with her and her office. Indeed, her office is actively and vigorously pursuing quite a number of technologies which I have conceived and reduced to practice ON university time, property and funding. (I just returned this morning from a trip big companies trying to market KU intellectual property.) So we're good there. ...However... I disagree with her assertion that a faculty member's capacity to invent is primarily influenced by their 9 month appointment. That argument could easily be turned on its head:  A faculty member's 3 months of pure summer Research done OFF university time, property and funding greatly enhances the faculty member's intellectual property generation capacity during his/her 9 month academic year when that faculty member is primarily employed to teach and do service and administrative functions. So I would hold that her argument is moot at best as it's clearly a two-way street. If her assertion is true, then the converse must also be true and KU/KSU would then be "taking" the property of external private entities and/or individual faculty members themselves as 100% of a faculty member's time in the summer is often spent doing scholarly work elsewhere...  hmmm...  5th Amendment issues all over again?  I would recommend to my esteemed friend in Youngberg Hall that this tar baby might be a bit too sticky for the Administration to mess with.  
    Bob, You're right in that these issues need to be publicly aired --  a hearing room in the State House?  ... a venue like this?  Either is good. But one thing's for sure is that "things aren't right."  Given that Cessna, Garmin, Black and Veatch, Burns and McDonnell, Spirit, Honeywell, BE Aerospace, Hallmark and many of the state's most important industries are now not able to engage the newest, most dynamic faculty at KU and KSU, I would suggest that we ask corporate leaders to come and give input as well. Perhaps we should also ask the administration of WSU to come as they have clearly "woken up" and realize that severing links to industry isn't smart (WSU has no such policy in place). So here's hoping that the needs of the companies, employees, taxpayers, students and faculty of the state will outweigh the desires of a few university administrators with their hands on the levers of power.

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