A long-running dispute over licensing of prostate cancer drugs has ended in the University of California’s favor.
California’s Supreme Court last week upheld lower court rulings in favor of the University of California Board of Regents. The decision effectively awards the university $32 million in additional licensing income while also resolving contract claims against the regents and confirming a jury verdict clearing a drug inventor of fraud.
Litigation was first filed in the dispute more than five years ago, in May 2011. At issue was the licensing of two prostate cancer drugs -- one called Xtandi and another referred to as A52. The regents licensed Xtandi to biopharmaceutical company Medivation Inc. But Medivation claimed breach of contract against the regents after they licensed the other drug, A52, to a different company, Aragon Pharmaceuticals. Medivation claimed it should have received the A52 license.
Information came to light during the litigation process that led the regents to file a cross complaint claiming they were underpaid on drugs licensed to Medivation. The regents won a bench trial in that matter, and lawyers won a jury trial on whether University of California, Los Angeles, Professor Michael Jung -- a drug inventor -- defrauded Medivation out of rights to A52. The regents also won a summary adjudication that eliminated the company’s contract claims against them and established that it had no rights to A52, according to a press release from the law firm representing the regents, Crowell and Moring.
Medivation appealed the decision, but the First Appellate District for the California Court of Appeal affirmed the rulings in September. The state’s Supreme Court upheld that Court of Appeal’s findings Dec. 14.
Inside Higher Ed is also one of Crowell and Moring’s clients.
Over the last 30 years, universities have become increasingly aggressive about securing the rights to faculty intellectual property (IP) that is patentable and thus potentially profitable. The operative distinction in many current policies is between faculty IP that can be protected by copyright, versus IP that is patentable.
In a major new 100,000-word report issued this month -- Recommended Principles & Practices to Guide Academy-Industry Relationships -- the American Association of University Professors argues that this distinction is not grounded in any rational analysis of the nature of faculty research and productivity. It is essentially an opportunistic maneuver to gain administrative control over IP that may be income producing. We urge that the administrative distinction between ownership of copyrightable and patentable intellectual property be abandoned. Faculty members should have primary authority over the disposition of all their IP, subject to legal and contractual restrictions and subject to principles articulated by campus faculty collectively.
This recommended IP Principle does not, I should make clear, apply to IP that is contractually negotiated as an additional individual faculty responsibility separate from the teaching and research that are encompassed by a faculty member's general appointment conditions. Universities can negotiate with faculty members over optional tasks specifically identified as work for hire, in which case rights and ownership are subject to mutual agreement. Unfortunately many universities are now claiming ownership of faculty IP that is a product of ordinary and continuing research and scholarship.
Since 2007, that approach has had assistance from the National Association of College and University Attorneys (NACUA). That year Beth Cate (Indiana University), David Drooz (North Carolina State University), Pierre Hohenberg (New York University), and Kathy Schulz (New York University) presented a paper recommending IP policies at NACUA''s annual meeting.
A version of "Creating Intellectual Property Policies and Current Issues in Administering Online Courses" with numerous appendices is on the members' only section of NACUA’s web site. Perhaps unsurprisingly, the paper, which I have read, urges comprehensive university ownership of faculty IP whenever substantial use of university resources has been involved in its creation. (NACUA agreed to make this copy of the paper available, noting that while it reflected the authors' views at the time, some issues and some of their thinking may have changed since then.)
"Substantial resources," the paper argues, "might include specialized computer resources or other equipment and significant use of student or research support." A number of income-producing activities, including textbook authorship, could easily fall under that umbrella. The paper also stipulates that products of faculty consulting may not be transferable to third parties if "the faculty member is involved with university research in the same area as the consulting" or if the consulting implicated the faculty member’s teaching activities. The faculty right to make software they have created be freely available through open-source licensing is subject to review as to whether "the goals of the institution would be better served through commercialization."
In the AAUP’s view, we are now in the terrain of serious infringements on faculty academic freedom.
Interestingly enough, it was not always so. A look at the history of how IP has been handled at universities makes it clear that current policies in many cases diverge from foundational IP principles. Seattle-based IP authority Gerald Barnett recently posted a blog entry -- "Blasts from the Past" -- that highlights university IP policies from the mid-20th century. Some institutions at the time already sought comprehensive control over faculty IP. Stanford University had a patent review committee that could recommend the university president assert control over any "valuable invention."
The Massachusetts Institute of Technology's 1932 policy was firm: "Inventions or other developments, whether or not subject to patent, resulting directly from a program of research financed entirely by the Institute shall be the exclusive property of the Institute, and the Institute shall be entitled to all benefits and rights accruing from such inventions or developments and may acquire the title to any patents based thereon."
On the other hand, the University of California’s 1943 policy was unambiguous in asserting faculty rights to control their IP: "Assignment to the regents of whatever rights the inventor or discoverer may possess in the patent or appointment of the board as the agent of the inventor or discoverer shall be optional on the part of the faculty member or employee."
The 1945 University of Texas policy similarly asserted that "the title to a patent for any discovery or invention made by an employee of the University of Texas belongs to the said employee and he is free to develop or handle it in any manner he sees fit." The University of Arizona in 1939 also declared that "no inventor shall be compelled to submit an invention to the Patent Committee." Both institutions did mandate modest profit-sharing, Arizona specifying that 10 percent of income derived from a patent go to the university and Texas established a tiered schedule for profit-sharing. Texas’s top level — at which 20 percent of profits were due the institution -- came after net royalties exceeded $5,000, which equals about $60,00 in today’s dollars. These policies certainly count as enlightened in the current scene.
The more restrictive policies assume a model of faculty appointment that conceives of faculty as very much comparable to corporate employees, where everything you create belongs to the employer. Since its founding 1915 Declaration, of course, the AAUP has argued that faculty are not employees in that narrow and restrictive sense. They are appointed to exercise independent judgment and carry out independent research. In fact the NACUA guidelines implicitly recognize that faculty are different. They dismiss the IP rights of non-faculty employees with a wave of policy assertion: "The intellectual property created by employees (other than faculty), acting within the scope of their employment (whether as administrators or as participants in research), should be owned by the university under applicable law." The rest of the lengthy document amounts to an effort to make it possible to treat faculty in the same way.
The AAUP's new report lays out carefully why this impulse is fundamentally misguided. The effort to control faculty IP relies on an unsupportable logic: faculty research and scholarship is guided by academic freedom up to the point when a faculty member creates a profitable invention. At that point the university steps in and takes over. Academic freedom apparently does not cover how patentable research is produced and disseminated, even though faculty publications about their inventions remain under their own control and can be disseminated as faculty see fit. The AAUP argues instead that inventions are a product of faculty research and scholarship and properly encompassed by it. There is no fair and reasonable distinction between the research and creative thinking that produces a plan for an invention and the invention itself.
There is no reason to suppose, moreover, that either administrators or university technology transfer offices are better suited to decide how an invention should be shared, marketed, or distributed. Certainly they are not better positioned to understand the research or technology involved. That is not to say any of the potential parties to a patent negotiation — a faculty member, an industry sponsor, a university office, or a university management agent — is necessarily enlightened. Greed, ignorance, or self-deception can distort any stakeholder’s perception and negotiating strategy.
That is partly why the AAUP’s Principles create a clear role for collective faculty governance in setting IP policy. Greed or indifference might, for example, lead any party to a negotiation to dismiss the social utility of assuring that a lifesaving technology be commercialized in such a way as to guarantee its availability and affordability in the developing world. A contract with a company might allow it sit on such a technology and delay its manufacture indefinitely. These and other risks can be minimized if the faculty senate mandates principles to guide IP management.
We are not assuming a university faculty will want to embrace progressive policies for distributing lifesaving medicines or technologies in the developing world, though we do recommend that practice, but we certainly recommend that the senate have the authority to debate and enforce such a policy if it chooses. Similarly, a senate might establish time frames for commercialization and time limits for exclusive licensing. It is much more difficult for responsible administrators to include such conditions in research contracts with industry sponsors without firm campus-wide policies.
As the AAUP has argued since its founding, research policy falls within the area of faculty professional responsibility and expertise. We have issued our report to help reassert that authority for the benefit of the common good.
Cary Nelson has just completed six years as president of the American Association of University Professors.
"This is the first stride towards making SUNY the economic engine that it can be and should be for this state. SUNY is poised to be a great economic engine." That was New York State Governor Andrew Cuomo last August, signing a bill that gave the four SUNY centers $140 million to drive regional economic development.
Since I work there, it’s the case I’m most familiar with, but SUNY is hardly the only school to label itself an economic engine in recent years. Indiana University, the University of Iowa, Rutgers University, Ohio State University: there’s hardly a public university out there that hasn’t let legislators know that investing in it will pay off economically.
The "economic engine" model implies a certain story about why the university matters. Universities do the research that drives technological innovation, the story goes. The inventions of faculty are spun off into start-ups, or transferred to existing companies, where they create new products, jobs, industries, and economic growth.
In some ways this is true, of course. Google was started at Stanford University, Genentech at the University of California at San Francisco. But lately, selling the university as an economic engine seems to be the only way to gain legislators’ support in a climate of scarcity.
Metaphors matter. If we think of universities as economic engines, we’re going to encourage some activities — like technology transfer and public-private partnerships. And these may indeed be things we want to
encourage. Choosing some priorities, though, means not choosing others. Some implications of the economic engine model, like the defunding of the humanities, are fairly obvious. Others, though, get less attention. Here are five reasons we should think twice about what we lose, as well as gain, when we turn our universities into economic engines.
The short-term beats out the long-term. The private sector, reasonably enough, wants to collaborate on research that will impact the bottom line within a few years. But sometimes it’s the research that will take a decade or more to bear fruit that matters most.
Take public plant breeding, for example. Big agricultural companies have huge programs that support research in plant breeding. But they only focus on a handful of commercially viable crops, and while they fund some academic science, they’re mostly interested in research that will have short-term results.
But plant breeding is slow work — after all, generations of crops have to grow. Though genomics is speeding things up, developing a new crop variety can easily take 10 years. And it’s the ambitious, long-shot research — on perennial grains that could make better use of marginal lands, or minor crops, like millet and tef, that are important to the developing world — that won’t get done unless academics do it.
Yet public plant breeders are rapidly becoming an endangered species. Plant breeders attract six-figure salaries in industry, but face declining budgets in academe, even though they’re probably among our most important scientists. By valuing short-term priorities that work for industry over longer-term investment, the current model pushes them closer to extinction.
Profitable products are favored over more diffuse benefits. The economic engine model focuses on discrete inventions that can be transferred to the private sector for development. What it deprioritizes is research whose economic benefits are not so easily captured.
Universities are very fond of research on pharmaceuticals and medical devices, for example. A blockbuster drug, while a long shot, can result in payoffs in the hundreds of millions of dollars from licensing revenues.
But the payoffs from public health interventions, which often keep people from getting sick in the first place, can be just as large. Yet public health research is chronically underfunded in relation to medical science. Improvements in workplace safety, disease prevention, infectious disease control, and food safety transformed life in the twentieth century. But no one will ever launch a campaign for universities to drive economic
development by studying how to prevent heart disease. There’s just no money in it.
Not all economic growth is created equal. The purpose of an economic engine is to drive economic development. But development is good because it creates human benefits, not for its own sake. Making
economic development the mission of the university doesn’t distinguish between the kind of growth we want, and the kind that deserves our skepticism.
The American Economic Review, for example, recently published an article on the environmental externalities created by different industries. Nicholas Muller, Robert Mendelsohn, and William Nordhaus estimate
that the air pollution produced by some industries, notably oil- and coal-fired power plants, costs more than the economic value they create.
Universities, then, might want to think twice about the real benefits of the growth they hope to create. Hydraulic fracturing, for instance, creates opportunities for public-private partnerships that many universities would like to take advantage of. But using the university to drive the expansion of fracking before its environmental costs are clear is not a winning strategy.
Innovation is prioritized over education. In the economic engine model, universities’ impact comes from their scientific inventions. But research is only one part of what universities, even research universities, do. And in a zero-sum budget climate, sinking support into scientific research can come at the expense of education.
To pick an example close to (my) home, the State University of New York at Albany is very proud of its College for Nanoscale Science and Engineering. It has attracted many billions of dollars in investment from
companies like IBM, Intel, and Samsung, and has world-class facilities. President Obama stopped by recently to hold it up as an example of what the U.S. should be doing more of.
But the CNSE is almost purely a research operation. The $1.2 billion contributed by the state of New York over the last 11 years has produced only 135 graduates to date.
Now, education is clearly not CNSE’s main purpose. But while it expanded, the rest of the university — whose budget is separate from CNSE — lost 30 percent of its state support, some $30 million, over three years. Notoriously, this resulted in plans to close three language departments, classics, and theater.
There are lots of reasons CNSE has received so much money from the state, not least that it’s attracted even more from the private sector. And it’s not like someone stole the funds from French and gave them to CNSE. Yet at some level these tradeoffs are real — we’re choosing to fund innovation, but not education.
Non-economic benefits are discounted entirely. All the tradeoffs above are, in some sense, economic. But there is one more tradeoff that is at least as important. By focusing on universities’ roles as economic engines, we devalue their noneconomic contributions.
Universities produce not only workers, or technology, but citizens— ideally, ones who can think clearly, critically, and independently. Having more such citizens is vital to our democracy, not just our economy. And at their best, universities transform people’s lives through the love of learning and the pursuit of knowledge, not just by improving their job prospects.
When the economy is stagnating and university budgets are being cut, it may make sense, strategically, for universities to declare themselves economic engines. It may even be inevitable. But if we do, we should be
very aware of what is lost, as well as gained, when we make this call.