Engineering faculty senate at KU asks university to reconsider
The president of the Kansas conference of the American Association of University Professors wants to see state legislation passed to remove what he says are barriers to cooperation between academics and the private sector.
Ron Barrett-Gonzalez, an associate professor at The University of Kansas School of Engineering, says university policies requiring faculty to sign over inventions hamper academics who want to work for companies in the summer, and ultimately harm the economic interests of Kansas.
“It’s only right that the university has some claims” to patent and licensing rights, Barrett-Gonzalez said, but he argues universities, including his own, are going too far.
Last spring, the faculty senate at the School of Engineering, which has more than 130 faculty members, passed a resolution asking KU to scrap agreements that new employees sign as a condition of employment, conceding their rights to any inventions they might develop during the course of their work there.
The senate also asked KU to nullify any such agreements employees already signed.
The agreements say inventions belong to the university if they result from the employee’s work for KU, are related to KU’s anticipated research, or relied on KU resources.
Barrett-Gonzalez says this causes conflicts for faculty who want to work in the private sector over the summer. He argues professors don’t work for KU in the summer months, and though they receive university benefits then, they pay for those during the academic year.
Barrett-Gonzalez said Friday the Kansas conference of the AAUP is working on a proposed bill challenging policies like KU’s, which has been in place since 2008.
KU isn’t alone in asking faculty to sign such agreements. Kansas State University has a similar policy, which is common at research universities.
Julie Goonewardene, president of KU Innovation and Collaboration (KUIC), says the agreements help bring the fruits of faculty research to the world and can help safeguard faculty rights.
“The last thing I want to do is prohibit the faculty’s ability to engage with industry,” Goonewardene said. “I want them engaged with industry — but I want them engaged with industry in a way that’s fully informed.”
Companies seeking control of intellectual property sometimes try to overreach, she said, and faculty can end up receiving a relatively small consulting fee from a company that gains control of intellectual property worth much more.
She noted the university’s patenting and commercialization efforts have made strong gains. KUIC reported 37 patents issued in fiscal 2013, up from 16 two years earlier, while annual gross revenues rose from less than $2 million to nearly $12 million.
“We do more transactions, we do them more profitably, we do them faster,” she said.
Meanwhile, she added, the innovation center is working with a committee of faculty members to review any issues related to the agreements.
“There’s a balance here in my mind,” Goonewardene said. “You have the university making remarkable investments that enable these discoveries.”
KU communications director Jill Jess, meanwhile, said faculty hired prior to 2008 weren’t required to sign the agreement, but many employees at KU’s campuses did so voluntarily.
Faculty patent rights are a debate in other states, too.
The national AAUP published a report last fall describing a “sea change” in employment conditions.
The report says more universities pushed for faculty to sign pre-invention agreements after 2011, when the U.S. Supreme Court determined that even when federal funds help pay for the research, universities don’t have automatic control of employees’ inventions.
Cary Nelson, an English professor at the University of Illinois Urbana-Champaign who wrote the report, argues universities can protect their financial interests by sharing in invention profits — as KU and its faculty do — without asking employees to sign over patent rights.
“We think academic freedom extends to how you distribute and disseminate the results of your research,” Nelson said, dismissing arguments that universities should function like private companies, where employees give up patent rights. “Corporations don’t offer free speech, let alone academic freedom.”
Ada Meloy, general counsel of the American Council on Education in Washington, D.C., an association of post-secondary institutions, said Nelson’s conception of academic freedom goes beyond the common understanding of the concept.
Universities secure invention rights to facilitate the process of licensing the inventions to companies that can help take a product from its basic, patentable stage to something that is ready for commercialization, Meloy said.
“I don’t see a need to revamp the system,” she said, “in the way that is suggested by some.”