SACUA debates rights to intellectual property

The University has many ways of generating revenue independent of tuition and state appropriations, including funds spawned from the inventions of faculty members.

But debate recently has been sparked on campus regarding the alteration of the percentage of faculty compensation if the invention is successful.

Mary Mandeville, a Senate Advisory Committee for University Affairs research associate, said if a faculty member invents something while employed by the University, they are obligated to sign an agreement to give the rights of the "intellectual property" - the invention - to the University.

The faculty member and the University then agree upon a set percentage of the invention's revenue that the inventor receives, Mandeville said, when the creation is introduced to the world. But at the invention's introduction, Mandeville said many faculty members are unaware of the true value of their creation.

"Sometimes you don't know if it's a good thing or not - if it's worth $10,000 or $10,000,000," Mandeville said. "If you make something that's big money, some faculty members are afraid that the University will take a bigger percentage."

SACUA Chair William Ensminger said he recognized the University's right to change the faculty member's royalty distribution retroactively, because the inventor signs an agreement and not a contract. But Ensminger expressed concern that not all faculty members are aware the agreement can be changed.

"The faculty needs to know that this is not a contract, that it's an obligation for the faculty to disclose their invention to the University," Ensminger said. "What you get might be different than what you think."

Ensminger's concern with the issue lead to his request that Vice President and General Counsel Marvin Krislov and Associate Vice President for Research Marvin Parnes be present at yesterday's Senate Assembly meeting. At the meeting, the two men, who have had extensive experience with the intellectual property policy debate, engaged members of the faculty in a casual discussion of the topic.

Parnes admitted the University has the power to retroactively alter the percentage the faculty member receives, but only in select situations.

"There are circumstances where we might choose to do that," Parnes said. "I'm not going to give a flat-out 'no' to that question because that wouldn't be completely true.

"In practice, we have always left the inventor's share as is; when the agreement is made, we honor it," Parnes added. "But over time, the University sometimes proposes to modify the agreement."

Krislov added that he doesn't see the policy changing in the near future, since it is based on a University Board of Regents bylaw that has not been altered in years.

"I don't see this as a bilateral contract that should be debated between the faculty and the University," Krislov said. "The regents govern us and they can make any decision they choose."

04-20-99