Research Administration Office

University of California

C& G Memo 22-76

March 12, 1976

I-3. Patent Agreement Requirements--Graduate Students

Attachment 2 is a copy of President Saxon"s January 14, 1976 reaffirmation of the University policy under which students, who even though they are not University employees, participate in extramurally sponsored research projects are required to sign the Patent Agreement. As part of that action on January 14 President Saxon reissued the Statement Patent Agreement Requirements-Graduate Students to Chancellors and Laboratory Directors, asking that they have the Statement distributed to appropriate personnel.

It is the responsibility of the Contract and Grant Officers to make certain that principal investigators understand the requirement for a signed Patent Agreement from each person participating in a sponsored research project. The graduate student participation referred to in the President's Requirements Statement of January 14 includes (1) participation based on the award of and student support which relates the student in any manner to the project; and (2) any other direct participation in the project by a student, in graduate status or otherwise, and whether or not the student receives support from, or through, or related to the project.

Please refer to C& G Memo 10-70, item I-l, entitled University Patent Agreement Requirements and Procedures. The advice there presented is still in effect and will be incorporated into the current revision of the Contract and Grant Manual, as will Attachment 2 to this Memo.

Refer: P. Klenz, 2-2593

Index:

Patent Policy

Terms and Conditions of Contracts


ATTACHMENT 1 to C& G MEMO 22-76

CHANCELLORS

LABORATORY DIRECTORS

Dear Colleagues:

Procedures and requirements to have certain graduate students sign the University's Patent Agreement were issued on July 13, 1966. A copy of that memorandum is attached for your convenient reference.

The need to have graduate students who are engaged in extramurally funded research projects sign the University's Patent Agreement continues to be mandated by the University' contractual obligations to sponsors of research.

I am therefore reaffirming the policy and reissuing the Patent Agreement 'requirements for graduate students by means of the attached statement dated January 14, 1976. Please have this statement distributed to appropriate personnel on your campus, such as Deans, Directors, faculty, and staff.

Sincerely,

David S. Saxon President

Attachments

cc:

Vice Presidents

Assistant Presidents

University Provost Taylor

Special Assistant Paige

Principal Officers of The Regents

Chairman Mark Owens, Board of Patents


ATTACHMENT 2 to C& G MEMO 22-76

Office of the President

January 14, 1976

Re: Patent Agreement Requirements--Graduate Students

The University does not impose patent obligations upon students who are not employed by the University or who are not involved with any research project funded by an Outside agency or company. However, there are situations, described below, where signed Patent Agreements must be obtained from students in order to meet research sponsors' patent requirements.

Research conducted by graduate students is often funded by outside sources, such as the National Science Foundation, Office of Naval Research, Air Force, United States Public Health Service, nonprofit agencies, and private industry. Funds obtained from such sources carry with them, almost without exception, very definite patent obligations. The requirement to obtain signed Patent Agreements from all persons connected with the research project may be expressed or implied. In either event, it is imperative that graduate students, not otherwise employed by the University, sign the University's Patent Agreement, without qualification, and that they be fully apprised of their specific patent obligations to the University and to the sponsor of research. To not obtain signed Patent Agreements from persons connected with a research project is a breach of the research contract or grant. (Where the students happen to be employees, they presumably will have already signed the Patent Agreement in compliance with the University 's employment regulations, as set forth in memorandum dated November 14, 1969, from Charles J. Hitch to all Chancellors, et al. and it is not necessary to obtain another signed agreement in those cases.)

There are certain situations where graduate students may be actually employed in private industry and their education subsidized by their employers. In these circumstances, the students often retain their employee status with their industrial employers and also remain bound by their employers' patent agreements. In no circumstances should such graduate students be permitted to participate in research projects funded by outside sources that carry patent obligations unless those students have signed the University's Patent Agreement and unless those students have assured their respective Deans or department heads that they have no overriding patent obligations to an outside employer that would preclude the student and the University from meeting their respective contractual requirements to a sponsor of research.

There can be no exceptions to these Patent Agreement requirements for graduate students since such obligations are imposed upon the University by its sponsors of research.