The faculty stack, 1: Academic Freedom and IP Policy

[The aim is to get to the next article, but I found myself writing this one first. How it goes. Purdue is the ground zero for what has become the Bayh in Bayh-Dole, so we may as well. Purdue has just changed its IP policy, and there’s something about that, too, but I have managed to avoid it, having worked through the older versions of both the academic freedom policy and IP policy.]

University policies typically contain a statement of academic freedom, often placed in a faculty handbook, which is then wrapped into the formal policies of the university. Many of these statements derive from a 1940 AAUP statement on academic freedom. Here’s the research part of that statement:

Teachers are entitled to full freedom in research and in the publication of the results, subject to the adequate performance of their other academic duties; but research for pecuniary return should be based upon an understanding with the authorities of the institution.

There are two points: full freedom for research so long as it doesn’t distract from other duties, but a university ought to regulate outside pay for research. Let’s look then at a few ways this policy crosses patent policy.

Here’s an instance of the AAUP statement in action at a university (Penn State):

IN RESEARCH AND PUBLICATION:

Faculty members are free to engage in research or scholarship of their own undertaking, and in the publication of the results, subject to the adequate performance of other academic duties. Research conducted for this University shall be in harmony with the provisions set forth in the official research policies of the institution, or in memoranda of agreement entered into between the University and industries or other agencies. Librarians are free to select and make available any materials supporting the teaching, research, and general learning functions of the academic community.

Here’s another (University of Maryland):

Freedom of research and publication. Faculty enjoy freedom in their research and in circulating and publishing their results, within the standards of accountability established by their profession and individual disciplines. This freedom follows from the basic commitment of faculty to advance knowledge and understanding.

Here’s a third (NYU):

Teachers are entitled to full freedom in research and in the publication of the results, subject to the adequate performance of their other academic duties, but outside occupations and research for pecuniary gain, except in the case of sporadic and wholly unrelated engagements, should be based upon an understanding with the administration of the University.

Here’s one (Purdue) that brings in patents, but does not bother to deal with the contradictions:

Faculty, lecturers, instructors, researchers and students have full freedom as researchers, scholars and artists, and are assured freedom to communicate their work, to advocate solutions to human problems and to criticize existing institutions. This freedom is subject only to adequate performance of their academic duties and to obligations they may have voluntarily assumed in accepting support for their scholarly work or research. It should be recognized that research activities are also subject to state and federal laws and regulations and to University policies and procedures,  including but not limited to Intellectual Property (I.A.1)Export Controls and OFAC Regulations (I.A.2)Research Misconduct (III.A.2) and those designed to protect the rights and welfare of human subjects.

And here’s the basics of I.A.1:

Intellectual Property that arises in any part in the course of employment or enrollment at the University, or in the course of a work-for-hire relationship or visiting scholar relationship with the University, is Purdue Intellectual Property, except as follows:

[some stuff excluded] and

  • Intellectual Property from research performed pursuant to a University contract that expressly exempts the research from the application of this policy is not Purdue Intellectual Property.
  • Intellectual Property generated solely in the course of an Outside Activity without the use of University Resources or pre-existing Purdue Intellectual Property is not Purdue Intellectual Property.

Students and faculty and others must “adhere” to the policy:

This policy is deemed 1) a term and condition of employment for every employee of the University, 2) a term and condition of enrollment and attendance at the University by students, and 3) a term and condition of permission to participate in any University research or other academic activity by any person (whether or not employed by, compensated by or enrolled at the University). All such individuals are required to adhere to this policy and its supporting Procedures on Disclosure, Assignment and Commercialization of Intellectual Property.

It’s strange. The policy asserts what is “deemed” without identify who does the deeming. Either the policy is a “term and condition of employment” or it is isn’t. What is this deeming that it is, then? It’s as if some university administrators are attempting to tell the rest of the university what they must think about this policy. The policy then asserts it applies to “every employee.” Are faculty employees with regard to their research and scholarship? Is what they do in research or scholarship “employment”? These are material questions, not idle ones.

Then the policy goes off its rockers and asserts that the policy is a “term and condition of permission to participate” in “University research or other academic activity”–regardless of whether the person is an employee. How can this be? How other than be threat does this policy reach to non-employees? Does anyone think that this statement buried in a policy on IP will somehow be enforceable against some collaborator who participates unless there is something formal–a written set of requirements that the collaborator signs off on before participating? And what then if the collaborator is “employed” by a different university?

The policy then supplies some definitions:

Intellectual Property
The following types of property recognized under applicable law:

  • An Invention and any associated patent application or patent
  • A Copyrightable Work and any associated copyright or copyright registration
  • A Trademark and any associated registration
  • Research Data
  • Tangible Research Property or other evidence produced in the course of research
  • A trade secret
  • An integrated circuit mask
  • A plant variety protection certificate

Invention
An inventive conception and reduction to practice that is patent-eligible under the patent laws of the United States.

An invention is anything that’s patentable. But IP is defined to include data, tangibles, and trade secrets. A mish-mash of quasi-intellectual property or not intellectual property at all. Left out–trademarks, domain names, rights of publicity.

Consider then the statement of academic freedom. Full freedom for research and scholarship except that there’s this policy on intellectual property that asserts faculty don’t have full freedom at all. In fact, wherever faculty might participate in research or “academic activities”–they have to get permission and in exchange, they have to give up their freedoms with regard to most anything they might do in those activities.

A close read of the IP policy suggests that it is not so broad as it appears. First, it is limited to the “course of employment.” In this context, employment has to be viewed as distinct from the “full freedom” of research, scholarship, and artistic work assured by the statement on academic freedom. In what way does a university employ faculty when it comes to their research and scholarship?

Sure, most faculty are paid a salary and are expected to teach and conduct research (research faculty might get only an appointment, an office, and permission to go try to find extramural funding with which to get paid). Teaching duties are generally assigned. But in what way are research duties assigned? In what sense is a faculty member employed to conduct research, as distinct from appointed, or permitted, or expected, or paid a stipend? Employment, especially for matters of intellectual property, is not any relationship in which one pays another, even if for various purposes of convenience one calls the other an “employee” and the other talks about being “employed.”

Considering what is meant by employment is not an empty exercise for intellectual property, and certainly not when academics are concerned as the subjects. One reason this all matters is that faculty clearly are not ordinary employees either for scholarship or research. They are not assigned to scholarly tasks, though they are expected to be scholarly in subject areas for which they are made (appointed) members of the faculty. The university does not direct or approve their work. In what sense, then, is a faculty member “employed” by the university. What is a “course of employment”?

Here’s a basic dictionary definition (Merriam-Webster):

“to use or engage the services of, to provide with a job that pays wages or a salary”

Here’s some IRS guidance (their emphasis):

“Under common-law rules, anyone who performs services for you is your employee if you can control what will be done and how it will be done.”

It’s clear that the university “engages the services of” faculty members. It’s also clear that the university does not control “what will be done” or “how it will be done” when it comes to research or scholarship.

Consider how such employment applies to faculty scholarship, by policy, now with some emphasis added:

Faculty, lecturers, instructors, researchers and students have full freedom as researchers, scholars and artists, and are assured freedom to communicate their work, to advocate solutions to human problems and to criticize existing institutions.

What is this “as researchers” doing? There’s the suggestion that “as researchers” is distinct from “as employees.” If you are doing research as a researcher, then you have full freedom, but not as an employee. Okay. Now two limitations:

This freedom is subject only to adequate performance of their academic duties and to obligations they may have voluntarily assumed in accepting support for their scholarly work or research.

Research and scholarship freedoms are “full” only if academic “duties” are adequately performed. That appears to be a limitation based on time commitments and attention to required tasks–i.e., employment tasks. Well, what are these “academic” duties. If those duties were to include “research” and  “scholarly” activities, then the full freedom gesture is empty. If however those duties are ones other than research and scholarly and artistic stuff, then the “academic” might take in assigned duties–teaching, committee work, and the like–that are “academic” because the university assigns them, unlike research, scholarship, and art.

The second “only” limitation is “obligations they may have voluntarily assumed in accepting  support for their research.”The idea here is that if faculty agree to something “voluntarily,” then they ought to hold to those conditions on their work. It would appear that nothing in the way of obligations that the university might then impose by policy elsewhere could restrict the “full freedom” that is set out here.

It would be reasonable to conclude (but for university administrators objecting to reading anything carefully) that the IP policy applies to faculty research or scholarship only if faculty voluntarily accept it. There’s nothing in the idea of “full freedom” that limits that freedom based on use of university resources or based on some invention being categorized as being in a faculty member’s academic department. The policy has a chance to list the exceptions and it specifies not getting your assigned work done and agreeing voluntarily to limitations, which you ought to then comply with because you said you would.

The university’s IP policy stipulates that applies to employees. Well, here, faculty must not be employees for their research, scholarship, or artistic work. They have full freedom. Employees don’t have “full freedom.” They serve the employer, who assigns and directs–has the power to do so–their work. But here the university expressly disclaims such a power. What then of the IP policy? It applies to faculty members only when they have voluntarily accepted assigned research and scholarship duties.

The IP policy appears to claim that if faculty want to do research at the university, then they have to accept that they have no rights in their inventions. That all but contradicts the sense of “full freedom.” It’s one thing that a faculty member might agree to a research sponsor’s requirements. But it’s another thing altogether that the faculty member, to participate in any research at the university whatsoever, sponsored or not, must request permission and in so doing give up full freedom.

Purdue does not bother to resolve the apparent contradictions between academic freedom and the claims of the IP policy. One way to read the two policies is that faculty are free to do anything that does not involve the university–which is a pretty empty statement of freedom. The point of such a policy is to establish freedoms at the university. Academic freedom is not just a restatement that what isn’t of interest to the university doesn’t concern the university. So that’s a cruddy way to read the two policies.

Another way is to read the two policies is that the “full freedoms” takes precedence over the IP policy, which applies only when a faculty member agrees to be assigned university work or accepts a sponsor’s obligations. That gives meaning to “full freedoms” and limits the IP policy’s “deeming” to only those situations in which a faculty member agrees to be “employed” for research or scholarship–working at the direction of the university rather than working at the university–and to those situations in which a faculty member must ask for permission before participating. That would not include, for instance, proposing work to research sponsors funded through the university. That’s a reasonable reading of the two policies. If Purdue had wanted to make academic freedom subordinate to the IP policy, then they would have had to do much more than merely add a reference to the IP policy onto the end of the academic freedom policy.

But I expect that is not how Purdue administrators read the two policies. I expect they read the policies to make the IP policy take precedence. Faculty have full freedom but for all those things that the university claims to own, for which faculty have no “freedom.”

I suppose you might ask why any of this matters. University faculty are in a special category. They are independent but have immediate access to institutional support for their work. It is the independence that matters for research. We have plenty of researchers who are embedded in companies, federal agencies, and nonprofit organizations. These researchers may do great work, but they work with resources and direction set for them by the organizations that employ them. University faculty have been different. They are much less bound to their universities. That freedom is important, even crucial, for faculty to explore areas of work that aren’t already the pathway set by government or corporate interests. Perhaps at this point even faculty don’t care what independence they have, so long as they get research funding. But the independence is why this matters.

There’s another concern, and that is that universities ought to draft policies that are intelligible, and ought to read them as they would be interpreted by the non-drafting party–in this case, the faculty members. That’s where you get a “meeting of the minds” that signals an agreement with intent to be bound, the foundation of a contract. Purdue insists that its IP policy is a “term and condition of employment” (and even that smacks of naive drafting, fumbling around with a contract’s “terms and conditions” to try to figure out a singular form). Well, “term and condition” is contract language. If the IP policy is a term of a contract, then Purdue is not free to give the IP Policy whatever interpretation it wants.

Rather, consider the contrast. Purdue does not say that academic freedom is a “term and condition” of anything, let alone employment. A way to understand the difference with the IP policy is that the IP policy addresses a limited condition, when a faculty member voluntarily agrees to act as an employee for an activity of research or scholarship. That would make good sense.

There is one last concern. Compulsory university ownership of IP is not strongly aligned with the broader uptake of that IP. Universities have obtained over 120,000 US patents since 1981. Purdue Research Foundation holds about 1400 issued since 2002. Of these, 670 cite federal funding and rights. How many of those inventions has it licensed? Of those, how many have resulted in industrial use or commercial products? Well, PRF lists “technologies available” on its web site. Let’s say these are all awaiting a first license–perhaps some are available non-exclusively, but usually that is not the case with such listings. Most of these “techs” appear to be cross listed in two categories. We add up all the numbers for each category, divide by 1.9, and we get a coarse lower bound estimate of the number of “techs” presently not licensed–over half. Of the rest–some have been licensed, and others have been “retired.” And of those licensed, how many have resulted in something–anything–by way of use?

Everything not licensed, and held behind a patent wall, is something everyone who does not want an exclusive license or does not expect will get an exclusive license, has to avoid. Everything licensed exclusively has to be avoided by everyone else–and all the worse because now there’s a company with its bristles potentially out to enforce the patent. Institutional ownership, if not highly selective for what it manages, bottlenecks research assets, fragments rights in cumulative technology being developed in parallel at any number of universities, and creates huge disincentives for company scientists and engineers to want to work with universities at all.

In these ways, the collision between a policy on academic freedom that assures rights and an IP policy that repudiates that assurance matters. The hope is that academic freedom–research freedom, research independence–wins out.

 

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