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Queen's University
 

Report of the Senate Ad Hoc Committee on Intellectual Property

Approved by Senate, June 27, 1991
Approved by Board of Trustees, May 8/9, 1992


Table of Contents

  1. Terms of Reference, Membership and Activities
  2. Background
  3. A Policy for the Whole University
  4. Objectives of a Policy for the University
  5. Principles of a Policy for the University
  6. Implementation
  7. Concluding Comments

1. Terms of Reference, Membership and Activities

On November 24, 1988, the Senate received a report on intellectual property from the Advisory Research Committee, together with a draft policy statement that had been proposed earlier by the Principal's Advisory Group on Intellectual Property [1-2]. The positions outlined in the two reports with regard to ownership and commercialization of intellectual property were not compatible. Because of the importance of the issue as a policy matter and its many ramifications for the entire University community, the Senate established an ad hoc committee to review the two documents and to develop a policy for the University.

The Committee included broad representation from all sectors of the University community as follows:

  • Dr. K. Stegemann (Chair), Department of Economics
  • Ms. J. Harris (Secretary), Senate Office
  • Dr. D.H. Akenson, Department of History
  • Dr. M.A. Breslow, Department of Drama
  • Ms. R. Chan, Department of Computing and Communications Services
  • Dr. A.R. Giles, Department of Pathology and Medicine
  • Mr. M. Hong, Department of Pharmacology and Toxicology Professor
  • M. Pickard, Faculty of Law
  • Dr. M. Sayer, Department of Physics
  • Dr. S.E. Tavares, Department of Electrical Engineering

The Committee met nine times during the period October 1989 to May 1990. At some of these meetings discussions were held with Dr. A.J. Daugulis, a faculty member familiar with the University's patenting process; Dr. A.R. Eastham, Director of Research Services, who had chaired the Advisory Research Committee when it prepared its report on intellectual property; Mr. R.J. Hicks, Director of Patents and Licensing; Vice-Principal W. McLatchie; and Vice-Principal D.G. Sinclair, who had chaired the Principal's Advisory Group on Intellectual Property. Individual members held discussions with other members of the University community. The Committee also reviewed documents outlining the history of patenting and licensing at Queen's, including the new structure and terms of reference of the University Inventions Committee proposed in 1978 [3], the Technology Transfer Policy document of 1987 [4], and the recommendations for a computer software policy drafted by a subcommittee of the Advisory Research Committee [5]. In addition, the Committee studied practices at other institutions, using a recent survey of sixteen Canadian universities [6], a full set of relevant documents from five Ontario universities [7-15] and one American [16-18]. These sources reveal a remarkable variety of arrangements for practically all dimensions of university policies on intellectual property. In May 1990, the Committee completed a draft report which was received by the Senate at its June 1990 meeting. The draft report was subsequently published in the Queen's Gazette in order to give all members of the University community an opportunity to review it and to submit comments [19]. The Committee has received sixteen written and several oral responses, including opinions from the Queen's University Faculty Association, the Staff Association and the Graduate Student Society. Most comments supported the Committee's principal recommendations and suggested improvements of details. A few respondents expressed strong disagreement with the basic philosophy of the report.

From October 1990 to February 1991, the Committee held seven more meetings to consider the comments received and to discuss possible revisions of our recommendations. At several of those meetings, the Committee had discussions with persons who had submitted comments: Professor Marvin G. Baer, President of the Faculty Association; Dr. Leda Raptis, Department of Microbiology and Immunology; Dr. John H. Spencer, Department of Biochemistry; Vice-Principal Duncan G. Sinclair; and Mr. Bernard W. Burgess, a member of the Board of Trustees and a former President of the Pulp and Paper Research Institute of Canada. In addition, individual members of the Committee had numerous discussions with individuals and groups in the University.

This revised report recognizes the issues raised by respondents and many of their valuable suggestions by giving a fuller discussion of the reasons that form the basis for our recommendations. The Committee is grateful for all the help it has received.

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2. Background

Historically, formal policies on intellectual property have been applied only to those disciplines in which there has been an opportunity for patenting and licensing. Furthermore, the documentation of the policies pertaining to this activity reveals a shift in emphasis over the years. For example, in an early description of the University Inventions Committee it was stated that "the University Inventions Committee exists to provide information and advice to potential inventors" [20]. Yet, in the responses to questions in the Senate with regard to the 1987 position paper on the Technology Transfer Policy, it was considered an obligation for faculty, staff and students to offer all inventions to the University for commercialization, and that a property would only be returned to the inventor should it prove to have insufficient commercial potential [21]. Therefore, it appeared that what had started as an option to facilitate technology transfer had, without University-wide discussion, become a requirement in that it was now the administration's rather than the creator's decision as to whether a person's creation should be the University's property.

The University traditionally has not expressed an interest in owning intellectual property rights in books, works of art and other creations of its members that are protected by copyright. However, there have been two notable exceptions. In May 1975, the Senate approved a policy statement on the copyright of audio-visual recorded materials for instructional use [22] which recommended that copyright should normally vest jointly in the University and the faculty members who create such materials [ibid., section 9]. Also, following the establishment of the Canadian Enterprise/Innovation Centre (now PARTEQ) with start-up funding from the provincial government in 1985, the revised terms of reference for technology transfer included computer software that may be protected by copyright [23]. This expansion of the University's claim was termed "a logical extension" of the earlier policy because computer programs had become "an important form of intellectual property having commercial value" [4, Appendix C]. The Senate deleted the reference to computer software when it reviewed, apparently for the first time, the revised technology transfer program in early 1987 [21]. Later in 1987, the Advisory Research Committee recommended that intellectual property in computer software should, with few exceptions, be owned by the creators [5].

At about the same time, the Principal's Advisory Group on Intellectual Property, consisting of Vice-Principals, Deans and other senior administrators, issued a statement intended to describe "the rights and obligations of members of faculty, staff and student body with respect to intellectual property created by them while employed by, affiliated with, or registered at Queen's University" [2]. The Advisory Group's policy statement started with the presumption that all rights to intellectual property of any kind created by any member of the University "shall, in the first instance, be vested in Queen's" [1]. This proposal was endorsed by the Council of the School of Graduate Studies and Research and was forwarded to the Senate, together with the Advisory Group's proposal, in November 1988. At that point the present Committee was established to resolve the apparent impasse [24].

On reviewing the history of the University's policies relating to intellectual property, it became clear to the Committee that (1) at no time had there been University-wide discussions on the issues involved, and (2) the policies that evolved were vague and inconsistent in their application to the various areas of intellectual activity. Thus, it was felt that the formation of this Committee offered an opportunity for the whole University community to consider a matter which is central to the definition and purpose of the University, and that this effort should result in the development of a policy on the ownership and use of intellectual property that would have strong support in all areas of the University community.

 

3. A Policy for the Whole University

The Committee has a mandate to develop a policy on intellectual property for the University as a whole. Indeed, the Committee considers it highly desirable to develop a policy that applies equally to faculty, staff and students, to all disciplines in the University, and to all types of intellectual property.

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3.1 Consistency with Related University Policies

The University's policy on intellectual property should be viewed in the context of other University policies that define the rights and obligations of its faculty, staff and students, and especially policies that deal with aspects of research and other creative professional activity. Four documents describing such policies are most relevant: The University Appointment: Freedom and Responsibility [25]; the closely related Guidelines on Conflict of Interest [26]; the University's "open" research policy expressed most clearly in the 1972 Guidelines concerning Publication of Research Results [27]; and the Code of Research Ethics [28]. The University's policy on intellectual property should be consistent with these previously established policies. It should also be understood that a policy for the University as a whole has to be broad enough to fit the diverse circumstances of all its units. Thus, more specific rules may be required for implementation in particular circumstances. As is the case for other University policies, the procedures for implementation may have to be decided in a decentralized manner. All such specific rules and procedures must be consistent with the general policy guidelines.

3.2 The University and the Industry Model

There exists a legal tradition that the employer owns intellectual property created by an employee because, presumptively, the employee does what he or she does for the employer. Thus, one may read into a contract of employment a provision that the employer owns an invention made by an employee, and only the employer has the right to apply for a patent, unless the stated terms of a contract exclude this inference. For copyright, the Canadian statute provides much the same pattern; works made in the course of employment "under a contract of service or apprenticeship" belong to the employer, unless there is an explicit agreement to the contrary [29]. Most industrial contracts of employment contain no such agreements, and most industrial employees work under contracts "of service or apprenticeship." Therefore, a policy that insists on all intellectual property rights being vested, in the first instance, in the employer is referred to as "the industry model" of intellectual property.

In a university the role of a creator of intellectual property, in most cases, is substantially different from that of an employee in industry. Faculty and researchers at a university are expected to create intellectual property, but they are not normally hired to create for the employer; and the industry construct would apply even less for students. Moreover, the operating environment of a university is markedly unlike that of a firm. Indeed, the four documents setting forth the rights and responsibilities of researchers recognize as much [25-28].

The Committee does not wish to suggest that any of the previous proposals in this area of policy was an attempt to impose "the industry model" on Queen's. Indeed, we have felt reassured by the almost unanimous recognition among responses from the campus that the industry model would be inappropriate for the University. However, we are concerned about the approach taken by the Principal's Advisory Group [2], because it shows a tendency of claiming, in the first instance, all that is legally possible for the institution. Such an approach, if it was intended to be enforced, would require elaborate administrative monitoring if not outright interference; it could also entail a large amount of discretionary decision making that might be used to influence the direction and results of creative activity in a manner that would endanger academic freedom.

To sum up, the Committee believes that "the industry model" is fundamentally at odds with the mission of the University and the agreed purposes and collegial principles of the vital and free intellectual community that should exist within a premier university such as Queen's. Thus, the Committee, whilst acknowledging what is currently legally enforceable with regard to ownership in terms of employer/employee relationship within an industrial context, stresses the need to consider what the University, by virtue of being a university, and not an industrial employer, should in fact do.

3.3 Definitions

Intellectual property is defined as any result of intellectual or artistic activity, created by a member of the University in his or her professional capacity, that can be owned by a person. Specifically, this includes inventions, publications, computer software, works of art, industrial and artistic designs, as well as other creations that can be protected under patent, copyright, or trademark laws.

Members of the University include members of faculty, staff and student body, while employed by, affiliated with, or registered at Queen's University.

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4. Objectives of a Policy for the University

Various groups in an institution are understandably inclined to regard their own objectives as paramount. Therefore, it is essential for the definition of an important University policy, such as this one, to start with a recital of the prime commitments of the University. The more specific objectives of a policy on intellectual property should then be seen to follow from the institution's prime commitments, in that the specific objectives support the prime commitments or are constrained by them. This institution's prime commitments are stated most succinctly in section 2.2 of The University Appointment: Freedom and Responsibility [25].

"The University's prime commitments are to foster intellectual inquiry, to provide instruction and supervision to all registered students, and to set high standards of education and training. Intellectual inquiry includes research and other creative, reflective and scholarly work and involvement of faculty members in such professional service, consulting, and related work as may complement the primary commitments of the University. The University must also arrange for the efficient conduct of its own affairs."

4.1 Fostering Intellectual Enquiry

The cited statement of the University's objectives contains no explicit reference to intellectual property. Yet, intellectual property is created as a result of research and other creative, reflective and scholarly activity. Fostering of intellectual enquiry is a prime commitment of Queen's University. The University's policy for the ownership and disposal of intellectual property should be such that it serves to enhance the level and quality of intellectual enquiry in the University, and this should serve simultaneously to enhance the standards of education and training.

4.2 Transfer of New Knowledge and Creative Work to Society

"The University, as an institution of intellectual enquiry, functions to the benefit of society" [ibid., section 3.1]. Queen's has been transferring new knowledge and other fruits of creative and scholarly activity to society since it started its existence 150 years ago: through teaching students who go out into the world, through publication of books, articles and plays, participation in conferences, concerts, exhibitions of art work, films and video tapes, professional exchanges, sponsored research, consulting for industry and governments, patenting of inventions, as well as through institutional commercialization of technology as described by the 1987 Technology Transfer Policy [4].

Clearly, there exists more than one method of transferring results of intellectual inquiry to society, and not any one method is necessarily better than any other, provided the University's established policies and guidelines are observed. The overriding objective should be to make results accessible through publication for scrutiny and for wider utilization because "universities serve as our society's principal repository of open inquiry" [27]. Thus ownership of intellectual property must not be used to suppress or distort results of research or creative work produced by members of the University.

In some cases, legitimate reasons may exist for deferring publication of findings for a reasonable period. Time may be required, for example, to apply for patent protection prior to publication, as a patent which ends uncertainty about the ownership of an invention can lead to fuller utilization of new knowledge. A deferment of publication for a reasonable period may also be justified in some cases of sponsored research. Such exceptions should be regulated by the University to assure that considerations of intellectual property do not lead to restrictions that are inconsistent with the University's open research policy.

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4.3 Freedom of Choice and Responsibility to the University

To foster free intellectual inquiry and creative activity, the University depends on its members to make their own choices. Yet members of the University are under an obligation to make choices that serve to fulfill the University's commitments to society. This balance is the central theme of The University Appointment: Freedom and Responsibility [25] which should be read jointly with the Guidelines on Conflict of Interest [26]. In the present context, the critical provisions in the University Appointment are those dealing with "professional service, consulting and related work" [25, sections 5 and 6], because they apply, by extension, to activities that members of the University might undertake to secure or commercialize intellectual property. The University Appointment requires that the "nature of professional service, consulting and related work should be such as to complement the primary commitments of the faculty member to the University" [ibid., section 5.2]. Furthermore, the "nature and extent of a faculty member's participation in professional service, consulting and related work and the use of the University's facilities in connection with such work are matters to be agreed upon beforehand with the University," though occasional professional service, consulting and related work of limited scope may be undertaken without prior agreement [ibid., section 5.3]. Finally, the document requires that details of completed or ongoing activities be reported, and it provides for decentralized enforcement.

The Guidelines on Conflict of Interest [26] also deal with professional service, consulting and related work on behalf of individuals or agencies outside the University community; the Guidelines, however, are addressed to all members of the University, rather than only faculty, and they specifically focus on activities for the purpose of commercialization of intellectual property owned by members of the University.

"Each faculty, staff and student member of the University shall be responsible for discussing with the Department Head and Dean of the Faculty or School concerned or other person delegated by the Dean, all proposed activities in which the individual is or proposes to be involved as an employee, consultant, manager, director, substantial shareholder, or owner of any venture operated for the purpose of commercializing inventions or other intellectual property in which the individual has a proprietary interest originating directly from his or her responsibilities to the University." [ibid., section 1]

The document then names four specific "situations that must not be entered into" [ibid., section 2] and also sets out procedures for decentralized implementation [ibid., section 3]. Thus the two described documents contain detailed provisions that are directly applicable to the acquisition and disposal of intellectual property and do not require further elaboration in this report.

4.4 Equity across the University

It is important for a new University policy not to introduce new inequities and, where possible, to reduce existing ones. The rules of the University's policy on intellectual property should apply equitably to all members of the University community. This objective will be achieved by adopting a unified policy for all types of intellectual property, rather than separate policies. In addition, the objective of equity will be furthered by applying comparable rules for all types of professional service, consulting and related work, as set out in the previous paragraph.

 

4.5 Efficiency of Application

"The University must also arrange for the efficient conduct of its own affairs" [25, section 2.2]. This objective can be achieved by adopting a policy on intellectual property that is based on a few clear principles establishing the rights and responsibilities of researchers and creators, so that only exceptional cases have to be regulated in detail. This policy should be implemented on a decentralized basis as has proven effective for related University policies. Furthermore, all specific arrangements should be discussed early to avoid disputes or becoming entangled in conflicts of interest unknowingly.

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5. Principles of a Policy for the University

To devise a policy on intellectual property that serves the University's mission, the Committee decided to focus on three questions:

  1. Who should own intellectual property that is created by members of the University?

  2. What rights and obligations should ownership of intellectual property encompass?

  3. How should net revenues resulting from commercialization of intellectual property be distributed?

Although these issues are clearly related, each is independent of the others. This section summarizes the principles of a policy on intellectual property; issues of implementation are discussed in a subsequent section.

 

5.1 Ownership of Intellectual Property

The Committee recommends that the ownership of all types of intellectual property and for all members of the University should rest with the creators, unless other arrangements have been agreed to in advance for certain categories of employment, for certain types of funding, or by individual contract. Ownership by creators is inextricably bound up with academic freedom; some would say it is its chief safeguard. As well, creative people often choose to join the University because it offers them intellectual freedom. It is these people that the University should most want to attract.

Two possible exceptions to this principle of "creator owns" should be recognized: (1) Work for hire and (2) work under a contract between the University and an outside sponsor. Intellectual property should be owned, in the first instance, by the University if it is created by a faculty, staff or student member under a contract of employment or service that assigns responsibility specifically for the creation of such intellectual property. Intellectual property that is created under a contract between the University and an outside sponsor should be owned by the University or the sponsor only if the sponsor insists on such an arrangement as a condition for funding, and this is acceptable under prevailing University guidelines for contract research [30].

5.2 Rights and Obligations of Ownership

Ownership presumptively creates rights, but it is a separate matter how extensive the rights should be, and it is a separate matter as well what obligations to the University and society the owners of intellectual property should have.

The University's research policy has consistently defended the principle that all members of the University should be free to make their own decisions concerning their research, scholarship, creative artistic work, and related professional activity, as long as they abide by established rules and guidelines [25-28]. This principle should extend to the use of intellectual property resulting from creative activities. Within the University's rules and guidelines, the creator must be free to decide what questions are worth investigating, when a piece of work is finished, when and in what form results should be published and whether intellectual property should be put to commercial use. As regards the latter, the owners of intellectual property should be free to choose whether they wish to make use of means of commercialization related to the University, or whether they wish to use other options that may provide a more suitable vehicle for the use of their property. Therefore, in answer to the second question, the Committee recommends that the owners of intellectual property should be free to make all decisions concerning the development and use of their property, including commercial use, as long as such decisions are consistent with the University's research policy and contractual constraints that may apply in individual cases.

The obligations of members of the University as owners of intellectual property are covered by the four University policies cited earlier: Thus all professional activities in pursuit of intellectual property should be such as to complement the primary commitments of a faculty member to the University [25]; owners of intellectual property must avoid conflicts of interest and conflicts of commitment [25, 26]; they have an obligation to transfer new knowledge and results of other creative activities to society [25, 27]; and they must observe the University's Code of Research Ethics [28]. The existing policies establish an obligation for owners of intellectual property to inform the University of the nature and extent of their professional activities. This includes an obligation to report regularly on commercial activities related to intellectual property [25, 26] and to consider actively the means by which intellectual property will be put to use in society [25, 27].

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5.3 Revenues from Intellectual Property

Vigorous intellectual and artistic activity by members of the University produces many benefits that are shared by the creating individuals with the University and society at large. Creative achievements improve the quality of teaching and learning, they enhance the University's prestige, help increase grant support, and also make it easier to attract outstanding faculty and students. These benefits accrue to the University automatically when it devotes a share of its resources to supporting intellectual enquiry and artistic endeavours of its members.

In some cases, creative activities can generate revenues if intellectual property is put to a commercial use. The question is under what conditions and arrangements the University should receive a share of net revenues resulting from the commercialization of its members' intellectual property. This question should be approached with due regard for past practice, the need to avoid inequities among types of intellectual property and types of professional activity, the need to provide incentives for creative people to join the University, as well as the need for efficient administrative arrangements that prevent abuse and limit the potential for disputes.

Past practice has been for the University to claim a share of net revenues only for: (1) discoveries or inventions by a staff member using University equipment and facilities for research and also using the University's technology transfer mechanism for commercialization [4, Appendix C]; (2) audio-visual recorded materials for instructional use if produced with the University's facilities [22, sections 1 and 22]. In both cases, the identifiable use of substantial University resources is the basis for revenue sharing, and such sharing is arranged for in advance by specific agreement between the creator and the University. The policy statement of the Principal's Advisory Group on Intellectual Property in 1987 proposed a third case following the same pattern: For specific cases of "in-house publishing" in which "the use of institutional resources and services constitutes an identifiable and unusually substantial contribution to the creation of a copyright work ... the University will negotiate a suitable arrangement to share equitably with the author(s) any benefits derived from the commercialization of that work" [2, p. 46]. Indeed, this pattern is embodied also in the University's policy governing the nature and extent of consulting and professional service on behalf of outside individuals and agencies [25, sections 5 and 6].

It is desirable to have a common and consistent policy for all comparable circumstances. Therefore, the Committee recommends that the University should receive a share of net revenues from the commercialization of intellectual property owned by members of the University in accordance with this policy when the intellectual property has been developed through substantial use of identifiable, specific University resources. The University's claim on a share of net revenues should be established in advance, which means prior to commercialization of the member's intellectual property. The creator and owner has a responsibility to approach the University prior to making arrangements for the commercial use of intellectual property.

The Committee thought it unwise to devise rules to fit the varying circumstances of particular agreements, but considered that it would be appropriate for the University to seek an agreement on revenue sharing where it makes a specific contribution to enable the creators to develop intellectual property, to develop its commercial use or to assist in its protection. The University's claim to a share of net revenues could be justified, for example, by the provision of paid release time for the purpose of developing a particular item of intellectual property with commercial potential or the funding or acquisition of expensive particular facilities to promote such development. Similarly, the sharing of revenues is justified and should be settled by contract if the University (or its agent) assists the creators and owners in expanding the commercial potential of intellectual property or pays the costs of patenting. In the Committee's view, the fact that the creators are employed by the University or happen to be students here is not in itself a sufficient justification for the University to tax net revenues from the commercialization of their intellectual property.

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6. Implementation

6.1 Declaration of Policy

In contrast to institutional ownership, the principle that people own what they create is relatively simple to make operational and does not require an elaborate administrative structure. The only possible difficulty would arise if, as a matter of law, university employees were no different from industrial employees who often do create for their employer. But the law allows parties to explicitly alter the law's presumptive pattern of ownership, and a solemn declaration that at Queen's intellectual property vests in the creator would suffice. Thus, to implement the Committee's recommendations, the University should adopt the Committee's report as a statement of governing principle, and the main feature of ownership vested in creators would be in place.

6.2 Decentralized Application

Specific administrative arrangements have to be made to regulate the exceptions from the principle of "creator owns" named under (5.1), to implement the reporting requirements under (5.2), and to develop more specific procedures and guidelines for the sharing of net revenues as recommended under (5.3). Most of such arrangements can be made at the Faculty or department level, using procedures that have been established for similar purposes. A few University-wide policies [4, 22, 30] should be amended to make them consistent with the recommended policy on intellectual property.

6.3 Cases of Contested Creation and Other Disputes

Whenever people work together, there can be disputes about each individual's contribution to their joint product. The Committee decided against recommending University-wide guidelines to govern questions of who is the "true" creator. It believes that the environments are sufficiently different from Faculty to Faculty and department to department that the best solution is to leave the rule-making to the appropriate bodies in each area. The University Code of Research Ethics [28] contains general rules for collaborative research and provides for departments and other units to make their own specific guidelines. According to the Code, "all departments and academic units which establish and maintain ancillary guidelines with regard to such practices must make these available to all who contribute to the research activities of the department or unit. All such guidelines shall be submitted to Senate for review by the Advisory Research Committee and approval by Senate" [ibid.]. An analogous approach should be used to incorporate issues of intellectual property, if they are not covered already by existing guidelines. The dispute settlement procedure described in the Code should, in analogous fashion, apply to disputes that might arise under this policy.

6.4 Arrangements Already Entered Into

Whenever a policy is adopted, questions can arise whether it should be applied to past transactions. If, for instance, the policy represents a radical departure from conventional expectations, it would be considered unfair to apply it retroactively. Insofar as the policy is primarily an elaboration of existing arrangements, it might make sense to apply it retroactively; indeed, fairness may require retroactive application.

The present case is complicated because the University's policy with regard to ownership of intellectual property has been inconsistent and the perceived rules have shifted over time. Yet, the retroactive application of our recommendations to past transactions could be a practical issue only for a relatively narrow area of intellectual property: inventions for which the creators assigned all ownership rights to the University because the University or its agent had desired these properties for patenting and had agreed to bear the costs of patenting and commercialization. The University owns about one hundred such properties that were assigned to it by members of the University community; twenty or thirty of these are "active" properties in the current portfolio being marketed by PARTEQ. For all other inventions and for any other type of intellectual property, the adoption of the proposed policy will confirm what has been past practice, i.e., the creators for all practical purposes were the owners of their intellectual property, and they remain the owners, unless they gave up their ownership rights in some other way.

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As regards the subset of inventions for which the creators have assigned ownership to the University, the Committee recommends that, as a rule, all past transactions should stand. Such a rule is warranted when the University typically has spent significant resources, for example, to secure patent protection for an invention and/or to commercialize an intellectual property. Moreover, such a rule protects the University's investment in a portfolio of patents that might one day generate a net return; the continued validity of assignments is necessary also to avoid legal complications for all cases where the University has made arrangements with outside parties, e.g., in the form of license agreements. The fairness of this rule is supported by a presumption that the majority of inventors assigned their properties to the University because the University, in exchange for ownership and a share of uncertain revenues, was willing to make an investment in technology transfer that the creators might not have made on their own.

But given the history of the University's technology transfer policy, the Committee is concerned about possible unfairness of past transactions where inventors might have preferred strongly to make different arrangements. Therefore, the Committee recommends that there should be jurisdiction in the Grievance Board to hear cases where creators allege a substantial unfairness if a particular past transaction were required to stand. Challenges concerning the validity of past transactions should be allowed for only one year from the adoption of the recommended policy by Senate. Furthermore, if a past assignment is declared invalid, the creator(s) should indemnify the University for costs plus interest and a share of the risk that the University bears by investing in a portfolio of patents, or a property could be re-assigned to the University on terms that are mutually agreeable.

6.5 Future Role of PARTEQ

Although it is the Committee's recommendation that there should be no general legal obligation to make intellectual property available for University ownership, it fully recognizes that the creative members of the University, in carrying out their responsibility to consider how intellectual property will be made available to society, will need expert advice and active assistance to secure their intellectual property and to transfer it, where appropriate, for commercial use. The Committee further recognizes that significant efforts have been made to establish an expert technology transfer agency in the form of PARTEQ and that this has resulted in major benefits to those members of the University working in the areas of science and technology in providing readily accessible assistance and advice in matters relating to the securing of their intellectual property and its subsequent disposition. Consequently, although the Committee emphasizes the individual right of each member of the University to determine the procedure that he or she wishes to follow, it strongly endorses the continuation and even expansion of the services currently conducted by PARTEQ. An "in-house agent" can offer many advantages, such as ease of access and familiarity with the operating philosophies of a university. An expanded role for PARTEQ would include a greater emphasis on the education of potential owners of intellectual property concerning its protection and development. Thus, the Committee recommends that the University continue to make deliberate institutional efforts to meet society's expectations of technology transfer, without compromising seriously the nature of the University community.

 

7. Concluding Comments

This report recommends a policy on intellectual property for the University. Accordingly, the principles of this policy are designed to support the prime commitments of the University to society: to create knowledge, to disseminate knowledge, to be creative and to teach how to be creative. Furthermore, the principles of the recommended policy apply equally to all members of the University and to all types of creative work. Thus, the scope of the University's policy on intellectual property is much broader than the considerations of patentable inventions and technology transfer that have historically dominated the University's actions in this area. The University's policy should be clear, equitable and consistent, and enforcement of its rules should not cause a substantial administrative burden. It is important for all members of the University to recognize that the adoption of a clearly stated policy is a matter of urgency because all types of intellectual property could be adversely affected by a lack of clarity and consistency in the University's existing arrangements. If it were true, for example, as asserted by some members of the administration, that currently all intellectual property created by employees belongs to the University, this would imply that all contracts for books, computer software, artistic creations, as well as video and performance rights entered into by the creators with outside parties are invalid, since the creators did not own the intellectual properties in question. Finally, while the term "intellectual property" may suggest that this report is primarily concerned with the distribution of pecuniary rewards from commercialization, the Committee is convinced that in the vast majority of cases the rewards from creative activity for the creators and the benefits for the University are not derived from the commercial use of intellectual property. Strong creative activity adds quality to the fabric of the University for all its members, and the University can count on its most creative members to attract outstanding students and colleagues. On these rests the renown of a university.

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References

  1. Advisory Research Committee, "Intellectual Property," report dated 9 May 1988, reprinted in Agenda Paper for the Senate meeting of 24 November 1988, pp. 38-43.
  2. Principal's Advisory Group on Intellectual Property, "Policy on Intellectual Property," draft dated 12 November 1987, reprinted in Agenda Paper for the Senate meeting of 24 November 1988, pp. 45-47.
  3. "Inventions Committee -- Proposed New Structure and Terms of Reference," Queen's Gazette, Vol. 10, No. 5 (7 February 1978), pp. 39-40.
  4. Technology Transfer Board, "Technology Transfer Policy: Position Paper," Supplement to Queen's Gazette, Vol. 19, No. 3 (3 February 1987).
  5. Advisory Research Committee, "Software Policy: Recommendations from the ARC Subcommittee," mimeo, dated 26 November 1987.
  6. A.H. Headlam, "Distribution of Income from License Fees," a survey of 16 Canadian universities, prepared by Director of Research Services, University of Waterloo, mimeo, dated 26 January 1990.
  7. University of Guelph, Research Policies Handbook, dated 1 February 1989.
  8. McMaster University, "Patent Policy and Procedures," draft dated 12 December 1990.
  9. University of Toronto, "University Policy on Copyright and Other Proprietary Rights," approved 19 May 1977.
  10. University of Toronto, "University of Toronto Policy on Computer Software," approved 14 April 1988.
  11. University of Toronto, "University of Toronto Inventions Policy," approved 3 May 1990.
  12. University of Waterloo, "Computer Software," policy No. 61, effective 1 July 1982.
  13. University of Waterloo, "Patent Policy," policy No. 42, effective 1 December 1983.
  14. University of Western Ontario, "Patents," policy No. 7.4, effective 28 April 1983.
  15. University of Western Ontario, "Copyrights," policy No. 7.3, effective 1 July 1988.
  16. Cornell University, "Patent Policy," effective 1 February 1989.
  17. Cornell University, "Copyright Policy," May 1990.
  18. Cornell University, "Cornell University Conflicts Policy," April 1986.
  19. "Report of the Senate Ad Hoc Committee on Intellectual Property," draft report received by the Senate on 28 June 1990, Supplement to Queen's Gazette, Vol. 22, No. 25 (17 September 1990).
  20. "Inventions Committee," Queen's Gazette, Vol. 10, No. 26 (4 July 1978), p. 204.
  21. Minutes of the Senate meeting of 26 February 1987, Queen's Gazette, Vol. 19, No. 9 (24 March 1987), pp. 110-112.
  22. "Policy Statement on the Copyright of Non-Print Materials Prepared for Instructional Use," approved by the Senate on 22 May 1975, Supplement to Queen's Gazette, Vol. 7, No. 48 (2 December 1975).
  23. "Proposed organization for technology transfers," Queen's Gazette, Vol. 18, No. 10 (26 March 1986), pp. 138-141.
  24. Minutes of the Senate meeting of 24 November 1988, Queen's Gazette, Vol. 20, No. 37 (12 December 1988), pp. 420-423.
  25. "The University Appointment: Freedom and Responsibility," originally printed as a Supplement to Queen's Gazette, Vol. 4, No. 43 (6 December 1972); printed in amended form as a Supplement to Queen's Gazette, Vol. 18, No. 32 (11 November 1986), pp. 2-3.
  26. "Conflict of Interest and Conflict of Commitment," Supplement to Queen's Gazette, Vol. 18, No. 32 (11 November 1986), pp. 1-2.
  27. Guidelines Concerning Publication of Research Results," Queen's Gazette, Vol. 4, No. 44 (13 December 1972), p. 236.
  28. "A Code of Research Ethics," Supplement to Queen's Gazette, Vol. 19, No. 34 (8 December 1987).
  29. Canada, Copyright Act, R.S.C. 1985, c. 42, as amended by Bill C-60, 1988 (4th Supplement, 1989, c. 10), section 12.
  30. "Guidelines Pertaining to Grant and Contract Research" with model "Research Agreement between a Company and Queen's University," Office of Research Services, December 1988.

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