IP policy almost done

IP policy almost done McGill University

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McGill Reporter
January 25, 2001 - Volume 33 Number 09
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IP policy almost done

The long saga of McGill's proposed Intellectual Property Policy is drawing to a close.

At the next session of Senate, senators will be asked to vote on the proposed policy. At issue will be about a dozen provisions on which Vice-Principal (Research) Pierre Bélanger and a Senate workgroup chaired by economics professor Myron Frankman have agreed to disagree.

In many cases, their disagreements are subtle. On other points, the disagreements are more substantive.

While Senate will have its say, Principal Bernard Shapiro made no promises about the extent to which Senate's views on the policy will affect the version of the document that ultimately goes to the Board of Governors for a final vote.

The proposed policy was presented to Senate last week for its consideration. The document contained duelling versions of some of the policy's provisions, one version reflecting Bélanger's views, the other representing the workgroup's take on things.

The main points of contention revolve around issues of ownership and inventor control.

At last week's session of Senate, Bélanger spoke about some of the facets of the new policy.

He said that the new policy makes it "explicit" that researchers don't have to commercialize their discoveries if they don't want to.

But if a researcher is interested in taking his discovery to market, he has to disclose that fact to the University and play by McGill's rules governing the process.

The proposed policy, once it's implemented, will set out those rules as they apply to the ownership, distribution and commercial rights to intellectual property developed by McGill academic staff, administrative and support staff and students.

In the case of students, "the policy won't apply to them unless they are co-inventors with their professors or they choose to come to the Office of Technology Transfer" to commercialize their discovery, Bélanger said.

One of the policy's chief aims is to clearly determine who will do the negotiating once a McGill invention is targeted for commercialization.

When dealing with potential investors, Bélanger believes it is crucial that there is one single voice clearly representing the University in such talks. That's why, in most instances, rights to inventions would be transferred to the University with inventors still receiving the lion's share of profits.

"Somebody has to be able to negotiate with full power."

But some senators, including microbiology and immunology professor Malcolm Baines, expressed concerns about the University having all the say in such talks.

"This is a commercial negotiation, not a union negotiation," Bélanger retorted. "We can't keep coming back to [inventors] to see if it's okay. We need to have the full authority to make a deal right there."

He added that, "if the inventor has come up with a viable plan [to commercialize], the University will transfer its rights to [the inventor]." Bélanger doubts that will happen very often, though and professors would probably be best served in leaving the negotiating in the hands of technology transfer pros.

"I have seen profs come up with what they thought were super deals and it turned out they weren't so great," Bélanger said of academics new to commercializing their wares.

While Bélanger is pressing for the University to acquire sole ownership of all rights to inventions and software being commercialized - except in cases where inventors take on the lead role in commercialization -- the workgroup believes that joint ownership should be the norm.

Frankman argued in favour "of inventor involvement for a much longer period than what is stated in the proposed policy."

Educational and counselling psychology professor Bruce Shore and political science professor Sam Noumoff both worried about what would happen if, during the course of commercialization talks, inventors had second thoughts about the ethical implications of what might be done with their work.

"What if an inventor becomes aware of ethical concerns only after the [commercialization] process has started ?" asked Noumoff.

Shore raised the example of Universitas 21, an international group of universities that includes McGill, and its talks with Rupert Murdoch and Thomson Corp about potential deals to market distance education courses, deals that would exploit the schools' "brand names."

"The question of what gets taught in our name is extremely important," said Shore.

Bélanger said that the proposed policy "offered enough protection on the ethical front." A detailed appeals process regarding a new creation, sets out what to do in the event of a serious dispute between the University and an inventor.

As for Shore's concerns, Bélanger said the IP policy wouldn't give McGill the right to sell a professor's teaching materials to an outside corporation.

In the case of works created for courses or for other academic purposes by McGill employees, such as distance education materials, McGill would retain the right to use the materials indefinitely "for its own academic purposes.

"If you look at the example of Gilles Thériault's distance education courses in occupational health," Bélanger stated, "the University would have the right to use that even if Professor Thériault left the University. We wouldn't have to ask for permission," although Thériault would continue to own the material.

This is one area where the workgroup sees things somewhat differently.

The workgroup's phrasing proposes more explicit restrictions on what McGill can do with academically related works created by and belonging to McGill staff.

Bélanger stated that there was a complicating factor afoot that could supersede some aspects of McGill's proposed IP policy.

The Quebec government is expected to come out with a new science policy shortly. One of the areas that will be addressed will be the commercialization of university research.

In the future, if researchers wish to acquire funding from Quebec granting agencies, they may be required to adhere to the province's own set of rules governing intellectual property.

While Bélanger doesn't know for certain what the government has in mind at this point, he does believe that, when it comes to commercializing inventions created by university researchers, Quebec City will expect "universities to be the principal ball carriers, not professors."

The discussion of the proposed IP policy wasn't as contentious as previous Senate sessions dealing with the same topic. Frankman said that Bélanger and his workgroup were now " in accord" on many issues. For his part, Noumoff gave Bélanger credit. "I can think of no policy that has been vetted so often and that has been developed so transparently."

Anyone interested in examining the proposed policy can download the document in PDF format.

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