TO: Rick Larue, UFA President

Section III, paragraph 1: "The VPAA will, in turn, oversee the appointment of a qualified intellectual property manager who meets at least certain professional requirements as exemplified by members of the Association of University VPAAs (AUTM)." - The desired skill set for the "Intellectual Property Manger" should ideally be spelled out in greater detail than just meeting "certain" requirements typically found in members of the Association of University Technology Managers, particularly given that this will likely be the single person on-campus directly handling intellectual property issues.

Section III, paragraph 2: "An University committee (to be designed and named by the VPAA) shall be established to provide guidance in interpretation of this Intellectual Property Policy and to mediate disputes regarding its implementation." - Given the fundamental importance of this committee to proper management of the institutional IPP, the composition of this group needs to be explicitly defined in advance, and explicitly include faculty representation.

Section IV, paragraph 3: "University staff shall execute an agreement with the University regarding ownership and disposition of any intellectual property that may arise from his/her work with the University before commencement of any such work, which may generate intellectual property" - Given that we rarely know if a particular grant application or project will have commercial value at its inception, or even into the early stages of the research, requiring staff to execute an ownership agreement before beginning the work seems unnecessarily prohibitive, and counter to the spirit of encouraging "creativity, research and innovation". For example, this stipulation, if interpreted broadly, implies that staff would need to execute an agreement before beginning any kind of scholarly inquiry. Furthermore, no mention is made of how current and ongoing projects are to be handled once this policy is implemented - does that mean that ongoing efforts are immune to both the protection and limitations of the IPP?

Section VI, paragraph 3, bullet 2 - “University will assert rights to any copyrightable material created by University Staff under the following scenarios: Material was developed by faculty on his/her own initiative with substantial use of University facilities, equipment, or time of support or technical personnel.” - This is much too vague. Does substantial use of University facilities include working in offices or labs on-campus? Does the work of housekeeping or facilities staff constitute "time of support … personnel"? If the answer to these questions is yes, then the University potentially has rights to all educational and scholarly work by staff.

Section VI, paragraph 5: "A creator shall disclose to the University any personally owned material that he/she believes has commercial value. Any profits derived therefrom will be shared according to the University revenue distribution policy, described at Sec. X below." - What does personally owned material mean and why does this need to be disclosed to the university? This is very vague and unnecessarily broad - e.g., this language could cover, as written, even the creator’s personal diary. If that is the case, then this document does little to encourage creativity and in fact could have a chilling effect on any and all innovation and research from the staff.

Section VII, paragraph 3, bullet 2 - "The University will assert ownership when intellectual property was created with: Use of substantial University resources, including funds, facilities, equipment, or use of support or technical personnel time that exceed normal use" - See comments for item #4 above. Need to define “substantial” and “normal use”

Section VIII, paragraph 1, item 1: "Creator shall disclose to the University any intellectual property that he/she believes has commercial potential before publicly disclosing the intellectual property. PI’s are required to inform the university 90 days in advance of a disclosure to the public." - The length of the disclosure period is unnecessarily prohibitive, unrealistic, and could impede the development of intellectual property - e.g., it might limit a PI's competitiveness by imposing an unnecessarily long delay before they could apply for a provisional patent. Furthermore, it would inhibit the timely and appropriate dissemination of scholarly work - e.g., if creators have to modify their timelines for preparation of materials for professional meetings or publication, to fit the internal University schedule.

Section VIII, paragraph 1, item 6: "If the VPAA determines that the University does not have a legal interest or if he/she determines that the intellectual property is not commercially viable, the intellectual property may be released to the creator. In such case, the creator may not use University facilities to continue work on the released intellectual property, as such activity would constitute the expenditure of University resources for the creator’s potential private gain." - This absolutely contradicts the philosophy stated in the preamble: i.e., to "encourage creativity, research and innovation." Furthermore it restricts academic freedom and places faculty in an untenable situation. For example, if a faculty member discloses a potentially valuable intellectual property (as mandated in Section VIII, paragraph 1), they run the risk of having to effectively cease work on that project entirely, if it is deemed of no interest to the University by the VPAA. It should be noted that such a policy could also be bad for the institution as a whole (not just the creator) - e.g., if it meant terminating an externally funded grant, and the loss of associated direct and indirect costs.

Section IX, paragraph 3: "The VPAA, will have full authority to manage the patent prosecution and licensing of all disclosed intellectual property. When an entity is not the potential licensee, the creator will be asked to participate in the licensing process as he/she is often the person most familiar with the research, commercial applications, and potential licensees. However, to avoid conflict of interest, the creator may not participate in the selection of the licensee or in the license negotiation process." - Why wouldn’t those individuals who are most knowledgeable be directly involved in the patent and licensing process? For example, shouldn’t the "intellectual property manger" (overseen by the VPAA), given his/her expertise and skills, be the person overseeing this process? And shouldn't the creator, given their intimate knowledge of the underlying research, be directly involved in the process? In particular, why wouldn't the creator be allowed to participate directly in the licensee selection or negotiation process, and thus protect his/her interests - just as the University is allowed to do?

Section X, item 1: "Net income is defined as license fees, milestone fees, gross royalties, or other payments received by the University, less deductibles such as, but not limited to, costs of mailing or courier services, interferences, patent prosecution and maintenance, licensing costs, or auditing fees, administrative costs, and appropriate overhead" - Greater details need to be provided in terms of the University's financial obligations. Does the University pay these so-called deductibles, particularly the potentially costly provisional patents, U.S. Patent applications, and international patents (e.g., $50,000 plus)? Assuming the University will be responsible for the costs of such activities, how will the University insure that it obtains the expertise necessary to accomplish these tasks? This absolutely has to be managed in a most professional way or everyone loses out.

Section X, item 2: "Except as otherwise provided in this section, net income shall be distributed according to the following table: Inventor Share 35%; Inventor College/Department Share 10%; Sponsored Programs/University Share 55%" - The revenue sharing plan provides a disproportionate amount to the "University". In particular, the distribution of royalties to the Department/College is low compared to that found at most other institutions - increasing it would serve as a direct stimulus for innovation within the units where such work is being conducted, as well as help build infrastructure in those areas. In addition, the relative distributions to each of the units needs to be explicitly identified. Finally, alternate distribution scenarios need to be developed for collaborative endeavors involving multiple investigators and institutions.

Section X, item 4: "Where there is more than one creator, the persons shall determine among themselves the percentage of the creator share each shall receive. If the creators cannot reach such agreement within sixty (60) days of disclosing the intellectual property to the University, the University shall, by default, divide the shares equally among the creators" - If revenue sharing between multiple inventors cannot be determined satisfactorily among themselves, it should go to arbitration first (e.g., by the committee overseeing the IPP), before being simply divided equally among the creators.

Section XII, paragraph 1: “… The faculty will be careful not to employ any students whom he/she is currently supervising academically or may supervise academically in the future. …” - Why shouldn’t faculty be allowed to involve students in their work? Working on a cutting-edge project could be a great experience for a student.

Section XII, paragraph 2: "Faculty and staff must disclose any consultancy or outside business interest to the VPAA within 15 days of entering into such relationships, and upon each anniversary of such disclosure thereafter." Why do consulting agreements need to be disclosed to the VPAA if they do not involve IP, and are permissible under the terms of the Faculty Handbook? When the potential exists for a conflict of interest, then (and only then) should the faculty member be required to establish a conflict management policy with the administration.