The Following Are a Series of Email Exchanges on March 7, 2006, Addressing Issues Raised

The following are a series of email exchanges on March 7, 2006, addressing issues raised in connection with the review of FSH Section 5400. The issues addressed were considered beyond the charge and competence of this Committee. The issues raised are examples of the type of issue that another Committee should be created to consider, with a charge to make recommendations to Faculty Couincil to pass on to the President and Board of Regents.

Ben Beard

I. MARCH 7 EMAIL FROM BOB RINKER

At 09:06 AM 3/7/2006, Bob Rinker wrote:

Everyone –

I was rather disappointed with our meeting last week concerning FSH 5400.
First, I want to say that I believe FSH 5300, with the modifications we
have made, is much more clear than it used to be. I am pleased with it.
However, I wonder what good we have really done, especially with regard to
FSH 5400. We have not solved what I consider to be THE problem. Two anecdotes
came up in the meeting that seem to highlight the problem:
1. A hypothetical case: If a UI faculty member is developing an idea using
UI resources, and decides to further develop that idea during a sabbatical
leave, UI claims full ownership of the idea, even the part developed at the
sabatical location. Yet, if someone comes here on sabbatical in a similar
situation - with a partially developed idea - and further develops it, UI
also claims full ownership. The asymmetry of this situation is rather
obvious.
2. Concerning a discussion of the situation where someone (faculty or student)
considers coming to UI with an idea, and wants to have UI help further
develop the idea, the best answer in how to handle the situation was "to
go to Michigan."
While it was also pointed out that such cases could be resolved by
negotiating a separate agreement between the individual and UI, there appears
to be no incentive or even a sense of obligation or "fair play" on UI's part
to do so. The only change we have been *allowed* to make to the employment
agreement is to put a note in the "no-conflict" section (5400 D) saying
to contact the Research Office and IRF. In the current confrontational
climate we might just as well add the clause "so these organizations can
tell you NO, or can simply ignore you altogether" to the end of the note.
It seems that we are losing sight of things here. Universities are in the
knowledge business first; if some revenue-generating IP happens as a result,
then all the better. With the current policy, we will and may already have
scared off the very people we should be trying to attract - those who come
here with ideas, who would like to share them with the University.
It was mentioned that we can't change this section because of State Board
Policy. If that is the case, then I think we should try changing the
underlying policy - if not this committee, then some other one. It was also
mentioned that this change is unlikely because the State Board would have
to relinquish something. The State Board won't get to "relinquish" anything
if this onerous policy discourages people and their ideas from coming here
in the first place.
Finally, I like to look at the common sense of things - it only
seems fair that if someone has an idea, that person should have a share
(notice the word "share" and not "exclusive use") of any revenue that
results from the idea. Wouldn't it be refreshing if that attitude prevailed?
If we are not allowed to change things, then there is no point in meeting

referring to a final Task Force meeting] this week.
Sorry about the long email.
- Bob Rinker

II. MARCH 7, 2006 EMAIL FROM SHARYL KAMMERZELL

All-

Attached please find my edits to C-2 in the space indicated by Ben. I think

these are consistent with our conversation but please let me know if you

have any questions.

I also would like to respond to Bob's email. What I tried to convey in my

comments in regard to the issues he identified is that these situations are

fact specific and, particularly in the case of sabbatical, will be just as

dependant on the IP policies of the hosting entity.

As I mentioned, I have only encountered this issue once in my time here and

it involved a UI employee going on sabbatical. In that instance we reached

a negotiated agreement regarding intellectual property between the UI, the

individual and the sabbatical hosting entity. The agreement provided that

while on sabbatical the individual was subject to the IP policies of the

hosting entity, which claimed ownership of anything developed there, but

that to the extent the individual continued to advise persons at UI,

anything developed by the persons at UI would be subject to UI policy.

Furthermore, the agreement provided that the individual would not use or

allow access to the hosting entity's resources for the UI activities and

likewise, would not use UI resources for activities conducted by the person

at the hosting entity. Thus it has not been the case that the UI claims

ownership of IP developed by UI employees on sabbatical per se, and I do not

think that such an asymmetrical result is mandated by the current policy.

While I am not aware of a case of a person here on sabbatical from another

institution, the threshold issue for any such "visitor" under the Regents

policy would be whether or not they are an employee or contractor.

As we discussed, what will guide the decision and result in all cases is the

Regents policy, which claims ownership in any invention or patentable

discovery developed by an employee performing work in the course of his or

her duties, using state resources not similarly available to members of the

general public, or under contract in a program or project sponsored by the

Board/Regents or the institution. It further states that all employees and

contractors must, as a condition of employment agree and adhere to the State

Board approved policy on inventions and patentable discoveries. Here is a

link to the policy:

http://www.boardofed.idaho.gov/policies/v/m.asp

In addition, we will look to where the patentable discovery was conceived

and where it was reduced to practice such that it became a "patentable

discovery." Since there is no patentable discovery without reduction to

practice, the location and resources used for the reduction will be

instrumental in determining whether or not there is a valid claim of

ownership. In the second example Bob provided, I would say that if a person

comes here with a conceptual idea and then as an employee uses state

resources to reduce it to practice then yes, under the policy and

controlling law it will fall within the policy and claim of ownership.

Finally, to the extent that any activity that results in a patentable

invention has federal funding, the Bayh-Dole Act likewise will control our

actions. As stated in the Council on Governmental Relations (COGR) summary

of the Act: "The provisions of the Act apply to all inventions conceived or

first actually reduced to practice in the performance of a federal grant,

contract, or cooperative agreement. This is true even if the Federal

government is not the sole source of funding for either the conception or

the reduction to practice. The provisions do not, however, apply to federal

grants that are primarily for the training of students and postdoctoral

scientists. The university is obligated to have written agreements with its

faculty and technical staff requiring disclosure and assignment of

inventions." Here is the link:

http://www.ucop.edu/ott/bayh.html

I hope this is helpful and would be happy to discuss this further if the

committee members wish to do so.

Thanks

Sharyl

III. MARCH 7, 2006 EMAIL FROM AL CARLSON

Everyone:

I agree that Bob Rinker's e-mail should be attached to the Faculty

Council Submission. He brings up very valid points. Sharyl has replied

to Bob's e-mail and taken the stance that "these are fact specific" and

that in her time at the UI, they have "only happened once". If they have

happened once, there is a good chance that they will happen again. They

point out a hole in the policy. And as we know - even one small hole in

the hull of a boat will cause it to sink.

The Task Force has done a lot of great work in FSH5300. I am reasonably

happy with FSH5300. I have appreciated the fact that the Task Force has

listened to the concerns of the students with the policy and included

students in a meaningful way. I believe that the result is a good policy

for all.

We were, indeed, not really allowed to touch FSH5400 in any meaningful

way. Bob is correct that this is still *THE* problem. I would feel much

more comfortable if we knew what the SBOE thought its policy was and what

it meant, rather than what UI Counsel *THINKS* the SBOE policy means.

Unless we are allowed to change FSH5400 there is no reason to meet [This is

a reference to a final meeting of the Task Force]. I do agree with Bob, and

the rest of the Task Force, that recommending another Committee be convened

for recommendations to the SBOE is definitely warranted. Perhaps after that

Committee reports its findings and receives a reply from the SBOE, FSH5400 can be revisited.

Al