Please see below for an
announcement from Dr. Foley, Senior Vice Chancellor for Research and Graduate
Studies. Related policy and procedure documents and forms will be posted to the
OSPA website shortly.
Please see
below and attached and please distribute to the faculty in your colleges.
The form referenced in the letter below is included in the attachment
above. Thank you.
May 8, 2014
Dear
Colleagues,
Today we
announce a change in the University’s position regarding intellectual property
(IP) that could result from industry-funded research. For the last thirty
years, the University of Missouri, like other universities, has taken the
stance of avidly guarding the ultimate ownership of IP that might be generated
in the course of an industry-funded project. Analysis shows that much less IP
is generated in such projects when compared to projects that are funded by
other sources, especially federal agencies. Experience also teaches that, in
many such cases, faculty prefer to have the funding in hand rather than to lose
funding due to failed negotiations over potential IP that may not come to
fruition. Funding to support students, postdoctoral fellows, laboratory
expenses, and faculty effort has a real and present value that goes to the core
of the University’s missions in education and research. This present value is
often worth more than the hypothetical value of IP that is as yet not created
and may never be created.
With this in
mind, the University will relax its stance on the disposition of potential IP
from industry-funded research. We will empower faculty to guide the University
in making such decisions. I very much hope that this position will lead to
smoother negotiations, faster response times from my office, and shorter
contracts.
The University
will continue to preserve publications rights and the ongoing use of your work
for future research; we will not warrant our research under any circumstances.
Publication rights and other key contract terms can sometimes be problematic
with certain companies, and when they are, negotiation times inevitability
increase. However, with the obstacle of potential IP ownership off the table,
usually these other issues do not arise with reputable companies.
When the
investigator and University give up IP rights, an additional five percent (5%)
F&A will be assessed on those line items of the budget that can be charged
F&A. This is a typical practice utilized to close the gap between a
university’s nominal facilities and administrative (F&A) rate and actual
F&A costs. Experience teaches that most companies are willing to pay this
small extra increment for rights to IP.
So how will
this work? We do have to add a form in order to implement this process,
and that form is attached for you to peruse. When you fill out this form, it
will indicate to staff in OSPA and OTMIR how you wish to proceed. You now have
three options:
- If
you, the faculty member, do not want to protect your rights as an
inventor and you do not want the University to negotiate for ownership of
any invention that may result from the work, then you should indicate such
on the form, and we will not negotiate for the ownership of IP. You might
decide to choose this option when you are doing fundamental research and
when you are seeking to develop a relationship with researchers at the
company.
- If,
on the other hand, you, the faculty member, do indeed want to protect your
rights as an inventor and you do want the University to negotiate for
ownership of any invention that may result from the work, then we will do
that for you. This may be a good stance to take if you are working in an
area of high, applied impact that may produce an invention or inventions
of value.
- If
you, the faculty member, are just not sure of which you want to do, then
you should call the Office of Technology Management and Industry Relations
(OTMIR) to have a discussion of the matter. They will walk you through the
issues and help you find answers for your particular case.
Let’s also be
clear on some other issues: We cannot and will not relax our stance on
ownership of IP on federally-funded research. Federally-funded research is
governed by the Bayh-Dole Act, which has had a hugely positive effect on
innovation in this country. Also, if the company is passing through federal
funds to the University, we have to treat that funding as if it came directly
from the federal agency (though the company may argue otherwise). Thus, we
cannot relinquish control of IP ownership.
I hope that
this will smooth the flow of funding to those faculty who seek to work with
industry and that the new approach will lead to better industry-university
relations in the present and future.
Sincerely,
Henry C. Foley,
Ph.D.
Senior Vice
Chancellor for
Research and
Graduate Studies.