Revamping the intellectual property policy


DANIEL McCABE | Vice-Principal (Academic) Luc Vinet announced that several McGill faculties would be revising their admissions criteria for CEGEP applicants. Instead of using grades to judge whether or not potential students have the right stuff for McGill, the University will be using the cote de rendement au collégial (cote R), a system already widely used by the province's universities in assessing CEGEP applicants.

Vinet stated that the cote R "would be a better indicator of performance at McGill;" it measures how well students perform in a course as compared to their fellow students. In terms of grading practices, some CEGEPs are tougher than others, so a B+ at one institution, in McGill's eyes, is worth more than it is at other CEGEPs. The cote R ought to compensate for the different grading practices and enable McGill to make quicker admissions decisions.

The changes will be in effect for September 2000 and will apply to the Faculties of Arts, Science, Management, Engineering and Education.

Most of Senate's time was taken up with a discussion about McGill's revamped policy on intellectual property. Vice-Principal (Research) Pierre Bélanger outlined the proposed changes and discussed the reasons behind the revisions. "This document is still in a state of flux," he said, welcoming suggestions for improvements.

He said, "University research... generates results that in some cases may have the potential for development that is socially beneficial. However, in order for that potential to be realized, it is necessary for universities to have the capability to develop the intellectual property from research.

"A naïve view has it that good things will happen by simply making discoveries available to the world through publication; in fact, since the investments needed to bring a research result to the market are many times greater than the amounts invested in the research, the private sector is loath to make such investments without the assurance that it is building upon protected technology."

The new policy would swallow and update McGill's existing policies on software creation and copyright of written works, "in order to bring policies on all forms of IP under one roof."

Bélanger said McGill's old IP policies were created at "a time when the annual number of patent applications could be counted on the fingers of one hand." McGill currently deals with 25 licences and eight spinoffs resulting from University discoveries each year, and it needs a quicker, more organized approach for dealing with IP.

Bélanger said the revamped policy would make everyone's obligations regarding the development of IP more explicit.

"The current policy carries an obligation to commercialize 'as appropriate.' This time, it is made clear that no one is obliged to seek commercial development; anyone may just go ahead and publish, even if that does give away potentially valuable IP."

But in cases where the inventor is interested in commercializing, she will have to allow the University to own the IP and will have to agree to a 50/50 split of its net income. The current split is 65/35 in favour of the inventor.

"This is quite lopsided in favour of the inventor," said Bélanger. "The Canadian norm is 50/50 while U.S. schools are much less generous."

In cases where the inventor does more than just create the IP (someone who takes an active hand in the nitty-gritty of commercializing the work), the inventor would be in line for a bigger percentage of the income.

Bélanger said that "university ownership is the norm in the U.S. and is seen in about half of Canadian institutions. Inventor ownership exists in the other half of Canadian institutions."

Belanger opposes joint ownership--he believes investors are better served dealing with one party. It also allows the University to move ahead more quickly in securing deals--it wouldn't have to run everything by the inventor first. Another reason is to protect McGill from the sudden emergence of a co-inventor it didn't know about who shows up "at the last minute, attracted by the scent of money."

Bélanger is reluctant to let inventors steer the commercialization process because "for most inventors, this is their first experience in commercialization. This is not science, it is business--and it needs to be handled by pro-fessionals." He adds that McGill wants to give Canadian partners first crack at commercializing McGill research and it would be "more tempting for an inventor to seek an immediate big payoff in the U.S."

The new policy would apply to students in cases where a student is a co-inventor with a professor. The policy includes an appeal mechanism, something the current policy doesn't have.

History professor Robin Yates was uneasy about the inclusion of students in the new policy. "Our faculty are paid employees with a contract with the University. Students pay the University to come here to study. I don't see why the University should take over ownership [of innovations produced by students]."

Bélanger said the policy would only be applied to students collaborating with professors--it would be too complicated to have two different sets of rules for dealing with the co-inventors of a single item.

Yates also questioned the fairness of the proposed dispute mechanism given that the vice-principal (research) would have the final say. Yates would prefer a final arbiter who was more "hands-off" from the IP portfolio. It was a concern that was echoed by John Hobbins, associate director, administration, of the Libraries. "This seems to go against the tenets of natural justice--no one can judge in his own case."

Bélanger said he was open to alternatives as long as the process proposed "was quick. In this game, we can't wait around for months before we apply for a patent," lest someone beat McGill to the punch.

Microbiology and immunology professor Michael DuBow had a different concern. He discussed a provision in the revamped policy whereby the inventor, if he is willing to play the lead role in commercializing his innovation, takes over control of the process. McGill would still be entitled to 20 per cent of income in those situations.

DuBow said such a policy would hamper inventors in their discussions with investors. He said many investors "would walk away" from situations where they had to agree to McGill receiving such a significant chunk of earnings from the get-go. He asked Bélanger to "soften" this part of the policy, to give inventors more elbow room in their negotiations with inventors.

Bélanger replied that the University of Toronto insists on 25 per cent of the income in such cases.

Dean of Science Alan Shaver worried about the implications of the University being in control of both the ownership and commercialization of IP. "[University] inventors do research with the intention of bringing about new understandings for the benefit of society."

He said university scientists have "a moral responsibility" regarding what is done with their inventions. He believes they should have a say in who is offered the opportunity to commercialize their work.

Engineering student senator Anjali Mishra followed up on Shaver's point, saying that inventors should be given the right "to refuse to commercialize" if they don't like who McGill has selected to do business with.

Bélanger was dubious, saying the idea was "noble, but may be practically impossible."

Psychology professor Morton Mendelson wondered if the proposed policy was fair in how it treated different kinds of McGill professors. A music professor retains control of her compositions, while an English professor would retain control of a screenplay. But computer science professors creating software in their capacity as professors would have to reckon with McGill taking control of such work.

Bélanger called on Senate to create an ad hoc committee to assist him in drafting the revamped policy. The most current version of the proposed policy can be viewed at ww2.mcgill.ca/fgsr/.