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4/24/96

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COMMENT: Patricia Gumport, Education (415) 723-7727

Who owns what creative product? Scholars find no easy answers

STANFORD - A professor of mechanical engineering whiles away the hours on a plane trip to Japan by toying with an idea that might be patentable. Should he call a private patent attorney when he gets home, or let Stanford's Office of Technology Licensing in on the idea?

This was one of the dilemmas raised in a panel discussion of intellectual property issues at the annual meeting of the Stanford chapter of the American Association of University Professors on April 22. Panelists were chemistry Professor Steven Boxer, a member of the faculty committee that established Stanford's new policy on intellectual property; Charles Kruger, vice provost, dean of research and the leader in implementing that policy; and professor of English Diane Middlebrook.

The issue of intellectual property rights has come under increasing scrutiny since the university instituted a new policy on conflict of interest in 1994. The whole question of who owns which creative product is in flux, panelists agreed. It is driven in part by rapid changes in information technology that make copyright laws out-of-date, and by the speed with which potentially patentable new laboratory techniques are transferred to industries like biotechnology.

"The simple fact is that in the past, universities didn't generate very many ideas that had practical value," Boxer said.

The same intellectual property questions are fermenting in universities and colleges across the nation, according to Patricia Gumport, professor of education and president of the Stanford chapter of the American Association of University Professors.

Gumport said she organized the panel to help air questions being raised by Stanford faculty in cocktail-party and water-cooler conversations about the patent and copyright agreement. Nationally, Gumport said, some observers are concerned that such agreements are changing the role of faculty in universities - from independent scholars to work-for-hire employees.

Faculty balks at new patent policy

Kruger outlined the history of intellectual property rights at Stanford. Over the years, the university has considered both patents and copyrights to belong to the creators, with a major exception: Universities are required to take ownership of patentable ideas that result from federally sponsored research. That policy was established by Congress to speed up the transfer of technology from the lab bench to commercial development.

Under that policy, Stanford owns the patents to techniques ranging from gene splicing to a way to speed the growth of alfalfa.

Three years ago, the Committee on Research of the Faculty Senate began work on a new intellectual property policy that would include provisions on conflict of interest. The National Institutes of Health and the National Science Foundation were about to require such policies, Kruger said. For example, he said, "there was a perception that gift-sponsored research had potential for substantial conflicts of interest."

Gift-sponsored research is based on donations by private foundations and corporations - including companies owned or partly owned by university researchers. There was a concern that such gifts can be used to develop inventions using university resources without any reward to the university and that professors may be tempted to use graduate students' work to further their own gain.

A distinguished faculty committee headed by biological sciences Professor Craig Heller worked 18 months to hammer out a policy, Kruger said. The final result includes an intellectual property section with a Solomonic distinction between patentable inventions on the one hand and copyrightable books and most software on the other. Traditionally, copyrights reside solely with a work's creator unless a specific contact says otherwise; the new policy does not change that.

But inventions, including some software, belong to the university if they are patentable and produced during the course of university duties or with substantial university resources. As with earlier patents, the royalties are shared equally among the inventor and the inventor's department and school.

None of the panelists believes that the issue of who owns what rights has been settled for all time by the new standard on conflict of interest and commitment for faculty, adopted by the Faculty Senate and the university trustees in 1994. In January 1995, one outcome of that policy was distributed to faculty, staff and graduate students: a written agreement to assign patent and some copyright privileges to the university.

As of April 16, the research dean's office reports that one-third of the faculty still had not signed this document.

The faculty's response is partly a reflection of misunderstandings about the patent and copyright agreement, said Kruger. "There was a sense that it was over-reaching. People didn't understand that Stanford is not claiming intellectual property unless it was created with use of Stanford resources."

The "Steve Boxer's Mother Test"

Boxer said his work on the committee taught him how many of the issues in intellectual property and conflict of interest are open to interpretation.

"It was surprising how interesting this series of problems is," he said. "My opinion changed 180 degrees at least 20 times, and so did the opinions of others. We found ourselves arguing on both sides of many issues."

The committee adopted the "Steve Boxer's Mother Test" for especially complex questions.

"The point of invoking my mother is that it's not at all clear what is right or wrong. When all is said and done, common sense has to prevail," he said.

At one point, the committee reviewed 10 case histories to try to determine how they might be handled. "Ten people did not reach universal agreement. Yet we expect a university dean or administrator to do so," Boxer said. Turning to Kruger, he asked how well the "Boxer's Mother Test" has worked as conflict-of-interest questions arose during the year.

Kruger said there has been at least one "fairly serious" case per quarter involving conflict of interest since the new policy was established. Issues have come up in the sciences, social sciences and humanities.

"Two cases resulted in internal inquiries into the actions of the faculty member, but none have resulted in faculty disciplinary proceedings," he said. In a couple of cases, he said, a faculty management group now oversees the research groups.

In practice, Kruger said the policy is being managed on two principles: that the university is not trying to bar faculty members from making money; and that conflicts of interest can be equitably managed.

Kruger said there were several reasons why some faculty balked at signing the patent and copyright agreement.

"Their main concern was that the university is trying to assert ownership of faculty ideas," he said. "My reading of that is, no - very few patents are based on ideas alone. They require some practical application."

He used himself as an example: He turned to Stanford's Office of Technology Licensing to patent an idea developed on his own time, during a trip to Japan.

"But I see no reason why I could not just as well have pursued [the patent] on my own," Kruger said. "The idea you dream up while shaving is your own."

Boxer said he was concerned that the university policy could lead to invasions of privacy.

"I don't want my department chair to have undue information about me," he said. "I get along well with my department chair, but I say this because there have been conflicts between department chairs and faculty. I think this should be adjudicated at a higher level."

Boxer said there are several potential flashpoints between faculty members and department chairs. For example, one well-established way to solve conflicts of interest is to request a leave of absence to pursue commercial work. This puts a strain on other members of small academic departments.

Kruger said one of the main roles of his office has been to mediate between members of departments about conflict questions.

Gumport said later that from a faculty perspective, it might be preferable to establish an independent ombudsperson to work out difficult conflict questions.

The devil in the details

In practice, panelists and members of the audience agreed, most of the definitions in the field require case-by-case interpretations. Middlebrook pointed out that the tradition of assigning copyright to a scholarly author may have evolved because scholarly works have little commercial value. But that may change as corporations like Microsoft begin putting literature and biography online, said civil engineering Professor Raymond Levitt. The question of who owns the profits from online resources is volatile and, so far, unresolved.

Middlebrook said that up to now, the line between her teaching and writing has been clear. Her 1991 biography of poet Anne Sexton, which she called "an accidental best seller," took 10 years to write, with all the research and writing being done during the summer months when she was not teaching. Except for the use of a computer and for the "intellectual culture" at Stanford, her position as a professor of English was more of an impediment than a help in her work as a biographer, she said.

However, her next book, a biography of a jazz musician, calls for a new technological approach. "Visual information and music will be essential to presenting the information," she said. "It is irresistible to think of transferring the narrative to CD-ROM." The result may well be a multimedia book-plus-CD, produced with the technical advice of Stanford's multimedia experts and in collaboration with several graduate students. Should her department and school get a cut of the proceeds because she's using university resources?

"Stanford is the place to do this," she said. "So now I must establish what is the royalty relationship between me and the university."

Boxer is co-founder of a company that makes real-world use of the new ideas he and his students are exploring in the lab. How does he set up guardrails on what he calls the "slippery slope" between enhancing his students' education and exploiting their work for his personal gain?

He said his work often results in ideas that interest the biotechnology industry. In years past, he said, many of Stanford's research-commercial links resulted in a slow technology transfer that allowed for some distance between a faculty member's academic and commercial work. Nowadays, particularly in biotechnology, things move much faster, he said: "If something excites me, I try to work on it as quickly as I can and by whatever means I can."

Sometimes that means working one day a week with industry, as university policy allows.

"If my lab comes up with a new gimmick, it may be attractive to investors who want to put it into practice immediately," he said. "If I have a discussion about it, even with a student, should I take it outside my office? If I learn something, some little trick, from someone in industry, is there a quid pro quo?

"Because people are so good at Stanford, I think these are areas where we can be put on a slippery slope," he said. "The bottom line is open research and disclosure. The more one talks about [the work], the less that one will find oneself compromised, the students will find themselves compromised, and so forth."

Yet sometimes the best use of research is to transfer it to private enterprise, Boxer said, and there open discussion is not favored.

"On the committee, my perspective was one of trying to maintain maximum openness but also trying to maintain maximum freedom," Boxer said.

-jb-

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