///////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////////// Defending the freedom to Innovate: faculty Intellectual Property rights after Stanford v. Roche (J une 2 0 1 4 ) The report that follows, prepared by a subcommittee of the Association’s Committee A on Academic Freedom and Tenure, was approved by Committee A and adopted by the Association’s Council in November 2013. Tensions over control of the fruits of faculty scholar- The topics addressed in this report are moving ship have been slowly building since the 1980s and targets. New developments occur almost weekly. have intensified over the last three years. There have Thus, for example, in may 2013 the University of long been differences of opinion over ownership of Pennsylvania issued a draft policy declaring that patentable inventions, but recently a number of uni- faculty members could not decide to design and offer versities have categorically asserted that they own the an online course through an outside company without products of faculty research. And there is increasing university permission. The draft policy makes it clear institutional interest in declaring ownership of faculty that Penn could refuse permission because it wants to intellectual property subject to copyright—most curtail potential competition with its own online offer- notably evident in demands that faculty members cede ings. The same reasoning could be applied to a faculty ownership of online courses and other instructional member expecting to issue a potentially profitable materials to their universities, a trend that began esca- book with a commercial press, since a university could lating in the 2012–13 academic year. insist that its own press publish the book instead or The AAUP is issuing this report in the midst of that it must negotiate the contract with the commer- these fundamental changes in the character of faculty cial press and take a share of the income for doing so. rights and academic freedom. Its purpose in doing so Penn’s draft policy also makes it clear that it wouldn’t is to put the dialogue on intellectual property on a matter if the faculty member designed the course on new path, one that leads to a principle-based resto- his or her own time. The mere fact of employment ration of faculty leadership in setting policy in this now apparently trumps the deeply rooted expectation increasingly important area of university activity. of faculty independence. Administrative efforts to control the fruits of faculty This report begins with some basic definitions, then scholarship augur a sea change in faculty employ- introduces the key issues at stake. A section summariz- ment conditions, one too often imposed without ing the history of university policies on patentable and negotiation or consent. Indeed, underlying these copyrightable intellectual property follows. finally, the developments is an administrative conviction that report offers eleven very specific principles that ought faculty members are not independent scholars, teach- to be included in handbooks or collective bargaining ers, and researchers but rather employees no different agreements to clarify intellectual property policies. from those working in for-profit corporations that much of this report is adapted from Recommended exist for the benefit of investors. Principles to Guide Academy-Industry Relationships, 38 | 2014 BULLETIN Defending the Freedom to Innovate: Faculty Intellectual Property Rights after stanford v. roche a book-length study that the AAUP foundation pub- potential for harm, the faculty of a number of medical lished in 2014. schools for years prohibited the patenting of inven- tions pertaining to public health. I. Definitions Patents may cover new, useful, and nonobvious The management of inventions, patents, and other inventions, which are categorized by patent law as forms of intellectual property in a university setting processes, machines, manufacture, and composi- warrants special guidance because it bears directly tion of matter. Patentable inventions thus may span on the university’s core values, including academic a wide range of results of academic work, including freedom, scholarship, research, shared governance, devices, chemical compounds, biological materials, and the transmission of knowledge. These core values research methods and tools, production processes, and distinguish university activity from that of government software. Design patents cover new designs of useful and industry, and they provide a basis for the argu- articles. Plant patents and related plant-variety protec- ment for public support of research and the role of tion laws cover reproducing, selling, or using patented the university as an independent contributor to both plants. Patents are acquired by an application that is policy and commerce. The negotiation and manage- reviewed by a patent examiner; the process may take ment of faculty-generated intellectual property can be up to three years. A patent has a term of twenty years complex and can carry significant consequences for from the date of application. those directly involved in negotiations (faculty inves- Trademarks distinguish goods and services in the tigators, inventors, and authors as well as companies, marketplace and are classed as trademarks, service university administrators, attorneys, and invention- marks, certification marks (showing testing by an management agents) and for others who may be less independent laboratory, for instance), and collective directly affected (competing companies, the public, marks (identifying membership in an organization, patients, and the wider research community). such as real estate agents). Trademarks may be com- Intellectual property refers broadly to patents, mon law—that is, acquired by use in commerce—or copyrights, trademarks, and (according to some registered at the state or federal level. A trademark definitions) trade secrets.1 In common usage the remains in existence as long as it is being used. In aca- term also refers to the underlying subject matter that demic settings, names, logos, and tag lines for assets is controlled by the owner of these property rights such as software programs, research laboratories, new (inventions, works of authorship, and identifiers that techniques, services offered by departments, websites, distinguish goods and services in the marketplace). and programs of research may all come to have trade- Patents provide the owner with the right to exclude mark status. others from “practicing” (making, using, and sell- copyright encompasses original works of author- ing) an invention. A patent, unlike a copyright, goes ship fixed in any tangible medium of expression. beyond the protection of written expression to accord copyright vests in a work when it meets these require- an exclusive right to the operational principles that ments of the law; no application or registration underlie the invention. copyright prohibits unauthor- process is now required. classes of copyright-eligible ized copying or modification of particular instances subject matter include literature and other printed of expression; a patent permits the exclusion of work matter, architectural or engineering drawings, circuit created independently, is not limited to the precise diagrams, lectures and other instructional materials, “expression,” and has no “fair use” exception, even musical or dramatic compositions, motion pictures, for nonprofit purposes. Thus, patents may have an sound recordings, choreography, computer software additional and potentially substantial impact on and databases, and pictorial and sculptural works. university research, may affect the value and role of copyright now has a term of the life of the author scholarly publication, and may influence collabora- plus seventy years, or, in the case of work made for tions and the transfer of technology developed or hire, ninety-five years from the date of first publication improved in other research settings. recognizing the or 120 years from the date of creation of the work, whichever is shorter. 1. Trade secrets, which have economic value that is not generally These lists are not exhaustive. The scope of work known to the public and is subject to reasonable controls on disclosure, subject to intellectual property claims has expanded are sometimes, but not always, included in discussions of intellectual considerably over the past thirty years as a result of property. both changes in law and changes in university policies. 2014 BULLETIN | 39 Defending the Freedom to Innovate: Faculty Intellectual Property Rights after stanford v. roche Additionally, the term of copyright has been extended of employment, which implies that the university and registration formalities removed. Thus, even controls faculty scholarship as an employer and that where university intellectual property policies have faculty members are expressly hired to invent. some not changed, the range of faculty-led work subject cite use of university facilities as a justification for to these policies has expanded, complicating the asserting their ownership or claim that participation landscape for discussions of the appropriate role for in externally funded research requires that the univer- institutional controls on scholarship and the responsi- sity own the resulting intellectual property. Though bilities to the public of faculty