Questions and answers

UC policy authority structure for granting rights to future research results arising from university relationships with extramural parties

What prompted the development of the proposed UC Policy on Granting Rights to Future Research Results arising from University Relationships with Extramural Parties?

In the last fifteen years, research agreements with industry have increased in number, cumulative dollar amounts, and as a percentage of overall UC research funding. At the same time, the varieties of research arrangements with industry and the kinds of issues that arise have increased in number and complexity. These research relationships include collaborations and consortia among University, industry and governmental participants; transfers of research materials both into and out of the University; "bridging" technology licensing agreements to follow-on research agreements; exchanging scientific personnel; and other research arrangements involving commercial interests.

As the extent of these changes has become evident, the view has been expressed by many at the campuses and Laboratories--and in the Office of the President--that existing policy governing agreements with research partners is under stress: it is too compartmentalized and narrow, insufficiently sensitive to differences in industries, and insufficiently faculty-centered.

In 1997 President Atkinson convened University administrators, research faculty, and selected industry representatives for a two-day retreat to discuss candidly UC's emerging relationships with industry. Throughout the retreat, the point was made repeatedly that the University must encourage research partnerships with industry and become less risk-averse in those relationships. It was also agreed that the University must become more flexible in its policy applications to different industry sectors, and the University's processes should be made more "user-friendly" for industry partners. Strong consensus existed that teaching, openness of publication and discussion, and the search for new knowledge should underlie all University interactions with industry.

The draft policy and the related proposed changes in authority structure were developed in response to the recommendations that were put forward at the retreat and also in response to a specific request from the President (see Exhibit 2, President's Retreat Priority Action Items 2 and 3).

Back to top

Why do we need such a statement of principles to be established as policy?

In Action Items 2 and 3, the President called for a new policy and for changes in organization, staffing and accountability. These go hand in hand. * It would not be possible to accord local negotiators the flexibility they need with a rigid centralized policy. But a policy that defines important principles can afford local negotiators greater authority and flexibility together with appropriate accountability. It can remind negotiators of what is really important to the University and why. It should serve as a compass and a tool that will guide them, rather than a single rigid road map. In short, this policy would be the underpinning of the proposed new structure of "distributed authority." The core policy principles would also provide University negotiators with a basis to justify positions taken during difficult contract negotiations. The principles would provide the institutional rationale to explain to faculty and to University management the negotiating positions taken by University administrators. Such principles would provide direction for the growing number of faculty and administrators involved in new forms of research relationships with industry and other extramural parties, and would help the University to maintain a basic philosophical consistency across its campuses and Laboratories.

Back to top

What is the scope of this proposed policy?

This policy would apply to all forms of UC relationships with extramural research partners, including traditional sponsored research arrangements; collaborations and consortia among university, industry and governmental participants; transfers of research materials, both into and out of the University; exchanges of scientific personnel; and other arrangements. That generates research results. The policy would not be limited to agreements related to patents, but would apply to all forms of research results, including inventions, patents, copyrights, tangible property, and data generated by University employees, or through the use of University facilities or funds under UC's research relationships with extramural partners. The policy would apply to agreements whether they were administratively classified and managed within UC's contract and grant, procurement, sales and services, or other organizational structures. Although the policy was initiated as a result of discussions about relationships with industry, the principles are universal and the policy would also apply to research sponsored by the Federal government, nonprofits, and other non-commercial sponsors.

Back to top

What process was used to develop the draft policy?

As noted above, the policy was requested by the President, as a direct result of recommendations made at the 1997 retreat on UC relationships with industry. The draft was developed by a working group of representatives from campus contract and grant and licensing offices, the Office of the President Research Administration Office, and OTT. The proposal was then reviewed by the Technology Transfer Advisory Committee (TTAC) and the Council of Vice Chancellors for Research (COVCR) and changes were incorporated to address suggestions and concerns raised by both groups. But perhaps the most important part of the policy development begins with this communication. It is hoped that this draft policy and these explanatory materials will be widely circulated and discussed thoroughly at campuses and Laboratories. It is of particular importance that there be full consultation with the Academic Senate and that the views of all interested faculty be heard.

Back to top

This policy is very general. Would campuses and Laboratories be given any more specific guidance and assistance?

The Office of the President (primarily through OTT) would provide campuses and Laboratories with guidance and assistance. The centerpiece of this guidance would be the University Intellectual Property Negotiator's Handbook (IPNH). The IPNH would be available, perhaps on the Worldwide Web, on a proprietary basis to front line University research agreement negotiators.

Each Handbook chapter would focus on an issue likely to arise during intellectual property negotiations with extramural research partners, such as Ownership (Title)/Assignment, License Grants, Scope of Right, Royalties, Patent Expenses, Publication, Background Rights, Foreign Rights, and the range of other issues that must be addressed regularly by campus and Laboratory negotiators.

The IPNH guidance would provide background information, rationale, and arguments in support of University positions on given issues, and recommended University "fall back" positions for each issue under defined circumstances. Finally, each chapter would define negotiating parameters beyond which formal exceptions would be required. IPNH guidance, in conjunction with the proposed Presidential "principles" policy would help the University maintain fundamental philosophical consistency across its campuses and Laboratories in this new distributed authority environment.

The IPNH would serve as the basis for future training programs for contract and grant staff and others with delegated authority in this area.

Back to top

What assurance would campuses and Laboratories have that such planned Guidance documents could not harden into a proposed set of rigid rules?

The whole purpose of the proposed new distributed authority structure is to give the campuses and Laboratories maximum flexibility consistent with their interests and capabilities while protecting UC against inappropriate risk. In general, the role of OTT would change from monitoring and permission- granting to advice, assistance, education, support and guidance.

Under the -proposed policy and distributed authority structure, each campus and Laboratory would have the opportunity to negotiate a unique Memorandum of Understanding (MOU) with UCOP. The MOU would address: 1) local authority to grant exceptions to systemwide policy guidance; 2) commitment of local staffing and organizational resources to manage complex intellectual property rights arrangements and negotiations with UC research partners, including industry; and 3) accountability. By this approach, the level of local authority, flexibility, and ability to make exceptions locally would be clearly defined and the relationship of each campus/Laboratory to central guidance materials would be determined by mutual agreement.

In addition, it is important to remember that the IPNH and other guidance materials would be developed in collaboration with the campuses and Laboratories. They would represent the collective views of experts at both the campuses/Laboratories and OTT and would be the product of years of hands-on UC experience in negotiations.

Back to top

Would campuses and Laboratories assume any new responsibilities under this proposed approach?

With this new autonomy would come new responsibilities, as the success of the proposed policy and authority structure would rely upon a meaningful system of accountability--both to the needs of UC researchers and to UC policy guidance. The following accountability mechanisms are proposed:

  • Immediate feedback for local negotiators: a series of electronic list servs would be established for campus, Laboratory, and UCOP personnel to raise "real-time" questions and concerns and receive immediate constructive feedback and guidance from their colleagues. This would allow systemwide discussion and consensus to be achieved for unique circumstances or for proposed non-standard arrangements. It might also serve as a valuable cross-training tool.
  • Reporting exceptions to UCOP: Campuses/Laboratories that are granted greater levels of local authority and flexibility might be required to report certain types of exceptions made within their local authority to UCOP. This could be done on a case-by-case basis or cumulatively on a periodic basis. Such reporting would be limited to the minimum necessary to ensure the integrity of the proposed policy/authority structure. Reporting requirements could be developed with campus input and agreed to in the MOU between each local site and UCOP.
  • Periodic assessments: Periodic (perhaps triennial) peer-based assessments of the campus/Laboratory implementation of its expanded authority under an MOU could be conducted by a campus/Laboratory- appointed committee. The findings of such committees would provide collegial guidance and support to ensure efficient and effective management of the University's research relationships with industry and other extramural partners. Findings would be reported to campus/Laboratory and UCOP management and could serve as the basis for renewals and any needed modifications to campus/Laboratory MOU's.

Back to top

How would differences in interests, capabilities, and commitment of resources among campuses and Laboratories be accommodated?

It is proposed that the MOU system would be the basis of accommodating differences among local sites. Based on the new policy and authority structure, each Chancellor and Laboratory Director would submit a proposal to UCOP indicating the level of local exception authority being sought and describing the local organizational and staffing capabilities to manage such authority. A direct call for such proposals would be issued shortly after the new policy and authority structure is approved by the President.

UCOP might establish minimum requirements for campuses/Laboratories to obtain certain levels of exception authority. Campus/Laboratory proposals for increased authority would be evaluated by a systemwide task force charged for that purpose, consisting of campus/Laboratory and UCOP personnel with experience and expertise in negotiating rights to research results with extramural parties. OTT would then develop and negotiate appropriate MOU's with each site for consideration by the Senior Vice President--Business and Finance.

Back to top

See full policy statement, including information on its applicability.