At the November 2021 Council meeting, the “Inventions and Enterprise Creation Policy – For Council Approval – November 2021” was presented for approval by vote. The Collective Agreement between the University of Saskatchewan and the USFA governs intellectual property (IP) involving faculty under Articles 25 and 26, and an associated Memorandum of Agreement (MoA). Recognizing that a policy that does not align with the MOA would be unworkable, Council members voted to defeat the motion. To all Council members, we request that you read and consider the following before voting on this motion when it returns to Council. Council members should consider the value of approving this policy before terms have properly been discussed and negotiated with the USFA.
The policy appears to have been inspired by laudable goals of trying to provide researchers with some choice and freedom to pursue commercialization of IP, attempting to be consistent with policies at other institutions, and in efforts to be sensitive to Indigenous knowledges and cultural expressions. Certainly, many if not most faculty who have to deal with the existing policy will agree that neither the policy nor the university commercialization office (under its various guises and names before it was disbanded) are appropriate, and that both need modernization.
However, Council members should be aware that the policy as proposed will have little to no benefit for faculty members. It will not make the commercialization process any less slow and cumbersome (quite the opposite, in fact). Created in the absence of consultation and—most importantly—negotiation of new agreements with the USFA, the matters of IP that this policy attempts to address will continue to be governed by the current Collective Agreement and MoA.
Regardless of what the proposed policy states, the Collective Agreement—a legally binding document that cannot be invalidated by policy—states that the employee is the sole copyright holder of creative works and, with some limitations, books, articles, computer programs, and recordings. The proposed policy states that faculty will be asked to voluntarily assign or license code to the University in order for commercialization activities to proceed. It also states that the University acknowledges that mobilizing Inventions having computer code as an integral part of a product or service requires ownership of code to be consolidated. How would a “voluntary requirement” play out in this process?
Regardless of the proposed policy’s claim that the employee is the default owner of new inventions and creations with some limitations, the MoA agreed upon by the USFA and the Employer stipulates that the employee assigns inventions to the university and cannot engage in commercialization except as permitted by the agreement.
Regardless of the proposed policy’s stipulation that inventors must disclose to OVPR an invention conceived in the course of their university responsibilities or with more than incidental use of university resources, the Collective Agreement stipulates only that employees are required to give the university notice of any patent application.
Regardless of the proposed policy’s intent regarding fair income sharing, none of this pertains to faculty members who must abide by the terms of the MoA.
Just as troubling, the policy proposed at Council does not use accepted legal definitions of intellectual property, invention, patent, copyright, and so on, upon which Canadian caselaw is based. There is no explanation of why these idiosyncratic definitions were used or the implications of their variance from standard legal definitions.
The statement in the proposed policy at section 2.4 that it “does not supersede, limit or amend the terms of collective agreements at the University” is moot. The proposed policy before Council is not enforceable against USFA members because it cannot supersede the MOA. At best, approving this policy will harmlessly change nothing. At worst, it will create confusion, make the process more cumbersome and time consuming, potentially result in lengthy grievances, and could in fact do harm to members and their research teams simply trying to operate in good faith.
So yes, let’s talk about changing how faculty researchers can commercialize IP, but the process for that is through negotiations and not through endorsement of ineffectual policies by University Council.
University Council meetings are open to anyone interested in attending and you need not be a member of Council to speak. Council agenda and meeting materials are online and can be found at https://secretariat.usask.ca/council/meetings.php#Agendas.