From the November UFS Newsletter:

Copyright/Patent Policies Under Scrutiny by Central Administration 

By Manfred Philipp

During Fall 2000 Chancellor Goldstein convened an Intellectual Property (IP) Committee.  This was an administrative committee with token faculty representation.  Vice Chancellor Schaffer chaired the committee.   

CUNY’s current IP policies were issued in the early 1970s and revised by the RF in the mid-1980s. There are  two documents, one each for patents and copyrights. They are listed at http://www.cuny.edu/abtcuny/policies/ under the heading “Research Foundation Policies.” The IP committee was asked to review current IP policies and was given a prepared draft of a proposed new policy, written in VC Schaffer's office, which formed the basis of the discussion. 

The new policies differ from the old policies in several important ways: 

1.     Copyright and patent policies will be combined in one document.

The purpose of this is apparently to make changes in policies that result in securing more of the revenue stream that accrues to copyrights of software and computer code.

The problems with this are three-fold:

·        Copyrights and patents are handled very differently in law;

·        The proposed policy will lead to an encroachment of the more restrictive patent policy into other activities; and

·        Such a change creates selective new disadvantages for those faculty members who are active in generating computer-related copyrighted material.

 Capturing the revenue stream from the copyrights on software and computer code may result in the eventual capture of the revenue stream that accrues from all books, paintings, music, performing art works, and other intellectual property. However, the express intent of the document is to exclude these kinds of intellectual property from the scope of the document and Vice Chancellor Schaffer has, in conversation, agreed that this part of the draft must be revised. 

2.The document has set up a dispute resolution process.

Disputes are to be reviewed by a panel consisting of a representative of the Creator of the intellectual property and designees of the Executive Vice Chancellor for Academic Affairs, the Executive Director of the Research Foundation, and the Provost of the Creator’s College. The panel’s decision may be appealed to the Chancellor. Although this  is a positive feature, the Research Foundation should not be part of the dispute resolution since it is not part of the academic process inherent in the university.

3.The document codifies specific disclosure requirements for new intellectual property.

These new requirements are so stringent that they may make it difficult for people to comply, especially for those who write computer code every day.

4.The document proposes a 10% fee for filing patents and copyrights.

Such a fee is appropriate for complex patent filings, but it may be less appropriate for simpler copyright matters.

5.The proposed IP policy covers students as well as the faculty.

There may be difficulties in applying the policy to students whose only connection to the university is the fact that they registered for a class and wrote computer software on a university-owned machine.

6. The policy can be changed by the Board of Trustees without faculty input. 

The IP policy should result from collective bargaining negotiations, not from an act of the Board of Trustees.

Good points to the new policy are

1.Royalties to Creators are increased.

The Draft Policy grants Creators 100% of royalties on copyrightable works owned by the Creator. There are many important exceptions to this policy, such as IP generated with grant support. Under the current copyright policy, the Creator’s royalties are based on the extent of CUNY support, and may be as low as 25% of net royalties.

2.Patentholders get a larger part of the proceeds of their patents.

The Draft Policy grants Creators 50% of net proceeds from CUNY-owned IP, an increase from 35% in the current patent policy. In addition, 25% of CUNY’s share is distributed to the Creator’s college, with 50% of such amount going to the Creator’s academic or research units(s) for the support of research and scholarly activity.

3.The university must act on IP disclosures in a timely manner.

If CUNY fails to act within six months of a disclosure, the Creator may request that the IP be released. CUNY must respond to a release request within a set period. CUNY may condition a release on the assignment from the Creator of a percentage of net royalty income, not to exceed 10%. CUNY will also retain a license to use the IP for internal educational and research purposes.

4.Members of the University have the right to negotiate agreements for terms different from those set forth in the General Rule, or to request waivers of other policy terms.

The new Draft Policy is available at http://www.cuny.edu/abtcuny/policies/policy10.html .The old policies are available at http://www.cuny.edu/abtcuny/policies/patents.html and http://www.cuny.edu/abtcuny/policies/copyrights.html.

The University is planning to hold hearings shortly.  The UFS will hold a panel and a hearing on this proposal at its plenary on November 20 at 6:30 in room 9206/9207 of the Graduate School.