The University of Oklahoma (Norman campus)
Regular session - April 13, 1998 - 3:30 p.m. - Jacobson Faculty Hall 102
office: Jacobson Faculty Hall 206 phone: 325-6789 FAX: 325-6782
e-mail: email@example.com web site: http://www.ou.edu/admin/facsen/
The Faculty Senate was called to order by Professor Connie Dillon, Chair.
PRESENT: Badhwar, Benson, Blank, Butler, Dillon, Durica, Edwards, Egle, Elisens, Emery, Engel, Friedrich, Fung, Gabert, Gilje, Harper, Hillyer, Hobbs, Holmes, Joyce, Konopak, Lancaster, Livesey, Murphy, Okediji, Pailes, Palmer, Patten, Patterson, Ratliff, Reynolds, Scherman, Schwarzkopf, Shaughnessy, Sipes, St.John, Stoltenberg, VanGundy, Vieux, Wahl, Warner, Watts
Provost's office representative: Mergler
PSA representatives: Elder, Pyle
ABSENT: Albert, Beasley, Eliason, Greene, Gronlund, Gupta, Laird, Norwood, Robertson, Thulasiraman
Faculty/staff picnic 2
Student jury duty 2
Senators who received awards 2
Health benefits 2
Remarks by Director of Technology Transfer 2
Senate Chair's Report: Intellectual Property 3
Report of Patent Task Force 4
Preliminary nominations, councils/committees/boards 6
APPROVAL OF JOURNAL
The Senate Journal for the regular session of March 16, 1998, was approved.
Prof. St. John, Chair of the budget subcommittee of the Athletics Council, said he wanted to clarify a remark that was made at the last meeting. The Athletic Department is being subsidized from the University now because Athletic Academic Student Life is subsidized through University College, the marching band is under the Fine Arts College, and the Development office pays the full value of tickets to sporting events that are used to raise money. On top of those changes, the Athletic Department had a $1 million deficit that was covered by borrowing from surpluses in auxiliary services. [Note: The president told the Senate executive committee in February that the money would come out of the Affinity visa card fund.] The money that was used to bail out the Athletic Department last year and this year is not money that could be used for faculty salaries. One of the reasons for the $2 million shortfall this coming year is the Athletic Department paid off a $1 million debt last year. Prof. St. John said he did not want people to think the loan will come out of the pool of money that will directly affect salaries. The Athletic Department is trying to produce a budget that will more accurately reflect its income. Prof. Palmer asked how the shortfall would affect auxiliary services. Prof. St. John said he did not know why auxiliaries have a surplus. We cannot mix money from one pool with money from another pool. Prof. Dillon said her recollection was that the comment was made that all dollars are fungible; if this money was not covering the Athletic Department debt, it could be used for other things. There was no intent to say that these funds were coming directly out of our salaries.
The faculty/staff picnic will be held before a home softball game on Saturday, April 25. A flier has been distributed with further information.
The president approved the revisions in the Faculty Handbook regarding student jury service (see 5/97 Senate Journal, page 5). Responding to the Senate's concern about undefined accommodation, the president suggested that any questionable absences for jury duty be handled on a case-by-case basis.
Prof. Dillon congratulated the senators who received awards at the faculty tribute April 9.
The president recommended that the Employment Benefits Committee recommendation concerning health benefits for next year be followed.
REMARKS BY DIRECTOR OF TECHNOLOGY TRANSFER
Prof. Dillon introduced Mr. Brent Mills, Director of Technology Transfer, in the Office of Technology Management (OTM), and an attorney in Tulsa for nine years. She noted that a patent advisory task force will be appointed to work with Mr. Mills until a new patent policy is approved. Mr. Mills said he had to leave this meeting early to meet with a group about a joint venture to build additional lab space. The goal of any OTM is to help technology pushers and pullers. He plans to accommodate and assist inventors with technology pushers. He hopes to nurture relationships with financiers and venture capitalists, while setting up some educational programs. His office will facilitate commercialization of our research. Dr. Eddie Smith, Vice President for Research, and President Boren have outlined a plan for the duties of the director and office that will be implemented soon. Any questions concerning patents, copyrights, trademarks, and intellectual property rights should be directed to the OTM. He asked senators to let their colleagues know about the OTM and to forward ideas to him. It is important to treat this office as a center accountable to the faculty.
SENATE CHAIR'S REPORT, by Prof. Connie Dillon
"In the next few meetings, the Faculty Senate will be debating intellectual property policies.
"Last August, the Senate received for review from legal counsel proposed changes in both the patent and copyright policies. As you will recall, last fall we appointed a task force to respond to these proposals and to make recommendations to the senate. At the next two meetings, you will be receiving a status report from this task force and will have the opportunity to discuss key issues with the task force and provide input into the eventual task force recommendations.
"Federal Law addresses the intellectual property ownership and vests ownership with the creator/inventor; the law allows creators/inventors to assign those rights by means of a contract such as that included in our Faculty Handbook on patent and copyright policies. These policies generally define the "scope of work." By law, the conditions of ownership include rights to distribute (which include sale, lease, loan, rent, or gift), reproduce, perform and display publicly and prepare derivative works or adaptations.
"This university intellectual property policy must balance two important and competing concerns:
"I cannot overstate the importance of this debate. Hanging in that balance is our own future worth as faculty, the societal value of our universities, and the quality of life of future generations. I wish to begin this debate by providing some perspective on the key issues.
"The bases for differences between university patent policies and copyright policies are two-fold: the first relates to the provisions in patent policies for providing faculty with technical help in acquiring and marketing their discoveries; and second, that the university has a financial stake in the return of research conducted with university resources.
"Everyone agrees that, with respect to the first point, our current system of technology transfer is not effective. Most agree that technology transfer has been (at least until now) neither a state nor an institutional priority. Our state's leadership believes that some of this is a product of legal and constitutional barriers and are attempting to remedy the problem as they see it by changing ethics rules, statutes and the state constitution. Our Board of Regents and administration are attempting to address this problem both by committing funds to the development of an office charged with technology transfer and by changing institutional policy.
"However, on the second point (the financial stake), there is disagreement. It is important to say that no one is suggesting that the university does not have a financial stake in the research conducted with university resources. However, there are differences with respect to the following: 1) the nature of the financial stake; 2) determining when university resources are used (e.g., defining "the scope of work"); 3) assurances that financial benefits accruing to the university are dispensed in a manner consistent with its research mission; and 4) how to manage the inherent conflict of interest created by the proposed constitution and statutory changes that would allow faculty and universities to have "equity" interests.
"The Patent Task Force will be hearing your comments on these issues today. Let me turn the floor to Pat Weaver-Meyers, Chair of the Task Force."
REPORT OF PATENT TASK FORCE
Prof. Weaver-Meyers said the other members of the patent task force included Jeff Harwell (Chemical Engineering & Materials Science), Roger Frech (Chemistry & Biochemistry), Kelvin Droegemeier (Meteorology), and Bruce Roe (Chemistry & Biochemistry). The April 13, 1998 draft of the Patent Policy proposed by the patent task force is a revision of a version proposed by legal counsel August 12, 1997 (see Appendix I).
Prof. Harwell spoke on the issues the task force addressed. The University's incentive policy to the faculty has been generous, but the problem has been in negotiating contracts. A critical issue is for the University to move quickly during negotiations. We have lost many opportunities that would have benefited faculty research, the University and the state. Another issue is the constitutional restrictions on the University sharing ownership with a sponsor.
Prof. Van Gundy asked for more information about the lost opportunities. Some examples that involved sponsoring companies or slow response from the University were cited by Prof. Harwell. Prof. Weaver-Meyers noted that legislation to give the inventor/sponsoring company a share in the equity ownership had gone through the state House and Senate committees. Prof. Patten asked when the public would have an opportunity to vote on the legislation. Prof. Weaver-Meyers said the likelihood is the primary election in August.
Prof. Weaver-Meyers explained that the preamble of the policy discusses what the University does in developing inventions, patents, and incentives. In the section on ownership, the task force still needs to work out the language in section 1.1.3. Section 1.3 was added to provide protection for faculty members in negotiations with private companies. The task force still is working on the gross revenues section. One possibility is that the University could negotiate shares in a company instead of a dollar amount. She pointed out that Mr. Mills had proposed some language for section 2.1--"the gross revenues/consideration (including without limitation equity) received ..."--which would allow faculty to share in the revenue, shares of the company, or whatever. In section 3.1(D)(3), the administration had proposed that the University would retain 15% of any profit from a discovery/invention. Vice President Smith explained the rationale for that. At any given time, the University is working with a finite budget, so the administration must decide how to spend it. Even if the University elects not to go toward patent commercialization, the University still has an investment in that project in terms of salaries, laboratory space, etc. and should share in any revenues. Prof. Ratliff asked what a faculty member receives when he turns in a patent idea. Vice President Smith answered that the University has no bonuses for someone who has an idea that is patentable. Prof. Weaver-Meyers commented that private industry owns a work for hire. The University would share the revenue. This percentage is better than what is offered at many other universities. Vice President Smith noted that the first $2500 is granted directly to the faculty. Most universities take out expenses before they begin to share. Prof. Weaver-Meyers pointed out that Mr. Mills had suggested that the time frame in section 3.1(D)(3) be changed from 6 months to 90 days, since timing is as valuable as the idea.
Prof. Patten said he objected to putting a tax on an idea that was rejected by the University in the first place. In the version proposed by legal counsel, the inventor must pay the University 15%. Prof. Weaver-Meyers said that section is still being negotiated. Negotiations are also taking place with regard to the wording for disclosure. In the conclusion section, an advisory committee modeled after the Research Council, is being proposed. The draft policy will probably have a few more amendments depending on the outcome of the legislation. If the legislation is approved and the citizens of the state vote to make ownership legal, then the Faculty Senate could vote on the policy in September. Prof. Van Gundy asked whether the task force had collected statistics comparing revenue at other universities. Prof. Weaver-Meyers said the task force looked at universities that are successful. As an example, Berkeley takes out 15% and then the inventor's share is about 30%. Prof. Harwell said he had not seen any university with a percentage as generous as the one proposed. Prof. Weaver-Meyers mentioned that the task force had debated how much to give to the department versus the University as a whole.
Prof. Schwarzkopf pointed out that the constitutional amendment could get voted down unless the right people are behind it. Prof. Weaver-Meyers said the governor, legislative leaders, and some major corporations support the amendment. Prof. Schwarzkopf noted that intellectual property also includes copyrights. Prof. Dillon explained that the intellectual property task force was divided into patent and copyright sub-task forces. The copyright task force will report next month.
Prof. Patten remarked that one of the problems has been the failure of the University to negotiate in a timely manner. The current policy says the University shall protect the interest of the inventor and the University while the patent is being sought. Once the University is allowed to own property, it will change the culture of the University. Prof. Weaver-Meyers said one of the issues that has been raised is the inherent conflict in the University's relationship with a faculty member. There are going to be times when what is good for the University may not be good for the faculty. Development of this technology program will mean opportunities, but there may be conflict. We will have to be vigilant in terms of faculty rights with regard to their own intellectual property.
Prof. Okediji asked whether there will be policies covering trademarks and trade secrets. Prof. Weaver-Meyers said, for now, the task force is looking just at patents and copyrights, but next year, those other issues should be addressed. She asked the senators to look at the proposal and give some thought to disclosure. Prof. Wahl asked whether the policy would apply to students. Prof. Weaver-Meyers said it also would apply to students and to staff.
Vice President Smith cautioned that the University must not get so tangled in this area that it loses sight of its mission. Commercialization should not be the tail that wags the dog. If the legislation passes, we could run into a conflict of interest with respect to start-up companies and equity ownership. What is good for the faculty may not be good for the University. He argued against lowering the University's share of any income received, since that money will benefit all areas of the University, not just those that can generate income. Some of the negotiations break down because of the companies with whom we negotiate. Funds from the Vice President for Research budget have been used for matching federal grants, faculty research program, faculty travel program, etc. It was a matter of University priorities. Prof. Dillon asked the senators whose terms were ending to brief their replacements on this issue.
NOMINATIONS FOR COUNCIL/COMMITTEE/BOARD VACANCIES
A preliminary list of Committee on Committees' nominations for end-of-the-year vacancies on university and campus councils/committees/boards was distributed at the meeting and will be voted on at the May meeting. Nominations can be made from the floor with the permission of the nominee.
The meeting adjourned at 4:35 p.m. The next regular session of the Senate will be held at 3:30p.m. on Monday, May 4, 1998, in Jacobson Faculty Hall 102.
Trent Gabert, Secretary
Sonya Fallgatter, Administrative Coordinator
The following draft of the University of Oklahoma Patent Policy assumes the establishment of a Technology Management Office and recommends that the report, External review for the University of Oklahoma: Establishment of a Technology Management Office, be implemented. In particular, the Task Force supports recommendation #11
THE BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA
The people of the State of Oklahoma may reasonably expect that their investments in the University of Oklahoma will create new industry and enhance existing industry within the State. Such new industry creates greater employment opportunities for citizens of the State and an improvement in their standard of living
The creation and development of intellectual property at the University encourages new business and is key to creating strong University and industry partnerships. It is the responsibility of University employees to disclose intellectual property and to foster an entrepreneurial attitude within the work force by involving students in the creation of intellectual property. Nevertheless, intellectual property development must never be allowed to interfere with the University's principle responsibilities of education and knowledge creation.
Therefore, it is in the best interest of the University to adopt a policy that encourages disclosure of inventions and rewards such creative activity. To do so, the University policy must insure inventors a share in any financial success enjoyed by the University through the creation of intellectual property.
The individual(s) who make the inventions that become the property of the University under this policy will share in income derived by the University from the marketing of such inventions and patent rights based thereon. As provided below, discoveries and/or inventions made or conceived by employees, faculty, students and staff of the University will become the property of the University and any and all benefits accruing to the University and derived from such inventions will be used to further the research enterprise of the University. The basic objectives of the University's policy concerning patents include the following:
a) To maintain the University's academic policy of encouraging research and scholarship independent of potential gain from royalties or other income.
b) To make patented materials created pursuant to University objectives available in the public interest under conditions that will promote their effective utilization.
c) To provide adequate incentive and recognition to faculty and staff through proceeds derived from their works.
1.1 All inventions, whether patentable or unpatentable, and including any and all patents (domestic and foreign) based thereon and applications for such patents, which are made or conceived by any member of the faculty, staff, or student body of The University of Oklahoma, either in the course and/or scope of employment by The University of Oklahoma or substantially through the use of facilities or funds provided by or through the University shall be the property of
and owned by the Board of Regents of the University of Oklahoma except as described below:
1.1.1 The Vice President for Research, in conjunction with the Office of Technology Management shall negotiate ownership of intellectual property with research sponsors when it is in the best interest of the University to do so. Otherwise, all rights are as described below.
1.1.2 Faculty having intellectual property rights prior to employment at the University of Oklahoma must negotiate ownership to any further development of that same intellectual property at the University of Oklahoma with the Vice President for Research in conjunction with the Office of Technology Management.
1.1.3 In the event faculty or staff make discoveries on his/her own initiative in work not directly related to his/her duties; and using no University facilities, equipment, or supplies, or if using such reimburses the University for this use in accordance with a prior agreement with the University and in accord with University policy, title to such discoveries shall remain in the inventor, provided the Vice President for Research and the Office of Technology Management determines that the invention was made under these conditions. The inventor shall nonetheless submit a disclosure form to the Office of Technology Management. This disclosure shall contain sufficient information to enable the director to make a determination, but no privileged information may be required. Should the director determine that the University does have a proprietary interest, a more complete disclosure may be required. If the committee determines that the inventor has the sole ownership right, and the Vice President for Research concurs, any further action pertaining to the invention shall be the sole responsibility of the inventor. If the University has an interest, the provisions of this policy shall then be applicable.
1.2 All rights in and to inventions described in Paragraph 1.1 shall be assigned to the Board of Regents of the University of Oklahoma as a specific condition of employment with the University and admission to and/or attendance at the University. Faculty, staff and students shall execute any and all documents the University deems reasonably necessary to evidence such ownership, meet its legal obligations and effect patent protection, domestic and foreign, for the University or its nominee. All costs involved in obtaining and maintaining patent protection shall be borne by the University or its nominee.
1.3 The University agrees to act in good faith with respect to the determination of ownership.
2.1 The gross revenues/consideration (including without limitation equity) received by the University from a University discovery or invention as described in section 1, will be distributed among the discoverer(s)/ inventor(s), his/her/their primary department(s) and the University, in accordance with the following formula:
Amount Received Inventor(s) Share Dept(s) Share University Share
0 - $2500 100% 0% 0%
$2501 - $1,000,000 35% 15% 50% $1,000,001 + 40% 10% 50%
Above $2500 40% 10% 50%
To further the research mission of the University an appropriate amount of the University's share is expected to support the Office of Technology Management.
2.2 When there are two or more discoverers/inventors, each shall share equally in the inventor's share unless all discoverers/inventors agree in writing to a different distribution of such share.
2.3 The discoverer/inventor and his or her department shall be paid their share of the gross revenues in a timely manner and be furnished with regular statements of revenue derived from exploitation of the invention. In the event of any litigation, actual or imminent, regarding patent rights, the University may withhold distribution until resolution of the particular matter.
2.4 The University does not act as a fiduciary for any person relating to consideration received under the terms of this policy.
President, or the President's designee, The Vice President for Research and the Office of Technology Management shall determine the disposition of University discoveries and inventions described in paragraph 1.1 as he/she deemed prudent and consistent with the University's mission to ultimately convey the benefits of its research to the public for the general welfare of the State and Nation. In determining the proper disposition of University discoveries and inventions, the President or the President's designee The Vice President for Research and the Office of Technology Management shall consult as necessary with scientific and/or technical and/or business subject matter experts in fields appropriate to the invention or discovery under consideration. Among other choices, he/she may the Office of Technology Management may:
(A) Transfer the invention and/or discovery to the public by entering into license agreements with third parties to further develop and exploit the property;
(B) Transfer the invention and/or discovery to the public by entering into commission agreements with third parties to identify potential licensees to further develop and exploit the property;
(C) Transfer rights to the property to a patent service organization to commercially develop and/or exploit the property;
(D) Allow rights (national and international) to the invention to revert back to the discoverer(s)/ inventor(s) if requested by the discoverer(s)/inventor(s) and if
the President, or the President's designee, the Vice President and the Office of Technology Management determine that the discovery or invention does not merit exploitation or further development by the University provided,
(1) Such transfer shall be subject to an irrevocable, non-exclusive, free-of-cost, and world-wide right and license in the University to make, use and/or practice the invention for University education, research and/or service purposes. The University also reserves the right to publish information and data obtained in the research project resulting in the discovery or invention being transferred, assuming such rights do not jeopardize the inventor's patent rights. Faculty, staff and students shall execute any and all documents, as the University deems reasonably necessary to confirm or enforce such reserved right and license.
(2) Such transfer shall be limited to the discovery or invention duly disclosed to the University, in writing, as of the time the transfer is requested by the discoverer/inventor;
(3) Discoverer(s)/inventor(s) agrees to pay University fifteen percent (15%) of any moneys or other consideration received by the discoverer(s)/inventor(s) from commercialization of the discovery or invention after the discoverer/inventor has recovered five (5) times his/her/their documented out-of-pocket costs for obtaining legal protection for the discovery or invention.
(3) Such transfer will automatically take place if the Office of Technology Management does not declare the University's interest within 90 days of disclosure by the inventor.
(E) transfer rights to the discovery and/or invention to the person(s) or entity sponsoring the research in the course of which the discovery or invention was made if such action is required under the terms of the research agreement or is required by law.
3.2 All transfers of University inventions shall be subject to and contingent upon any rights in third parties as may be governed and/or required by, among other things, sponsored research agreements, other third-party contracts or law.
3.3 The Department and University shares of revenues received from a University discovery or invention will be used for research purposes as the University deems appropriate.
3.4 The Vice Presidents for Research, Norman Campus and the Health Sciences Center, shall be responsible for administering the research and patent affairs of the University in a manner consistent with this Policy. The Vice Presidents for Research shall cooperate to establish written policies to be approved by the President and distributed to the faculty, staff and students of the University, governing procedures to be followed in processing discoveries and inventions generated within the University.
Any discovery or invention falling within paragraph 1.1, above, must be promptly disclosed to the appropriate Vice President for Research within such times and in such form as the Vice Presidents may set forth in their published policies. Failure to do so is a violation of this Patent Policy which may result in the loss of valuable rights in the invention and may violate contracts to which the University and its faculty members are legally bound.
Any discovery or invention undisclosed by faculty, staff or student at the University of Oklahoma, that is part of any subsequent patent application by former employees of the University and/or associated institutions or sponsors violates this Patent Policy and may result in the loss of valuable rights in the invention and may violate contracts to which the University and its faculty, staff and students are legally bound.
5. CONTRACTUAL TERM
The terms of this Patent Policy are a part of any contractual relationship of the University of Oklahoma with any member of the faculty, staff or student body. This Policy, as amended from time to time, shall be deemed to be part of the conditions of employment of every University employee or a part of the conditions of enrollment and attendance of every student at the University.
6. ADVISORY COMMITTEE
The Office of Technology Advisory Committee shall meet monthly and advise the director on intellectual property developmental milestones, educational program design and creative mechanisms for providing and monitoring technical expertise. The Committee will monitor developmental milestones to ensure timely progress in the development of intellectual property.
The Advisory Committee shall be composed of three faculty from the sciences, three from engineering, three from non-sciences and three from administration. Two members of each subgroup will be appointed by the faculty senate and one member of each subgroup will be appointed by the president. Terms will rotate among subgroups and will be for three years. Upon establishment of the Advisory Committee, initial appointments will be made for one, two and three year terms to begin the rotations. The Director of the Office of Technology Management will chair the Committee and the Vice President of Research will serve in an ex-officio capacity.
Although the Advisory Committee will not formally arbitrate faculty complaints about intellectual property rights and development, members will complete an investigation of such a complaint and forward their findings to the Faculty Appeals Board for arbitration.