Research Policy Analysis and Coordination
The basic aim of the University of California patent program is to promote the progress of science and technology, to assure that inventions are used to benefit the public, and to provide appropriate royalty revenues to the University and the inventor. It is University policy to retain ownership of inventions developed from research. At the University of California, patentable discoveries and inventions are usually fortuitous by-products, rather than the direct objective, of scientific investigation. Scientists working in University laboratories generally pursue their research without thought to the patentability of results. Yet new ideas, discoveries and inventions arising out of experiments and investigations, frequently undertaken with quite a different purpose, may have applications that will be put into commercial use for public benefit only if the invention is protected by a patent. The University, as owner of the patent, encourages commercial development by licensing the patent to industrial companies. The companies are required to develop and market the invention. Royalty income is then shared between inventors and the University, and first consideration for use of the University's share is to support University research.
11-210 University of California Patent Policy
In November 1985, the President issued the University of California Patent Policy, pursuant to his authority under Standing Order 100.4 (mm). This policy was subsequently revised, and the current Patent Policy, which was issued on October 1, 1997, generally applies, except with respect to certain University inventors who were eligible and elected to be governed by the 1985 version of the Patent Policy. The policy includes: Section I, Preamble, an outline of the principles upon which the policy is based; Section II, Statement of Policy, which sets forth the requirement that employees and certain others agree to assign inventions and patents to the University or other parties as appropriate, to promptly report and fully disclose potentially patentable inventions, and sets forth royalty-sharing provisions with the inventor and use of royalty income; and Section III, Patent Responsibilities and Administration, detailing responsibilities of the Intellectual Property Advisory Council, now replaced by the Technology Transfer Advisory Committee, chaired by the Provost and Executive Vice President--Academic Affairs, and the assignment of responsibility for implementation of the policy to the Provost and Executive Vice President-- Academic Affairs.
11-220 Patent Acknowledgment
The University of California Patent Policy requires all employees, users of University research facilities, and those receiving gift, grant or contract funds through the University to agree to assign inventions and patents to the University, except those resulting from permissible consulting activities without use of University facilities or those covered by State of California Labor Code 2870.
Students are required to sign the Patent Acknowledgment only if they are employed by the University, receive contract or grant funds through the University, are engaged in a sponsored research project, or use University research facilities.
The Patent Acknowledgment binds the individual to perform those acts and to provide such data as are necessary to satisfy patent commitments made by The Regents to grantors of funds for research or to contracting agencies.
All persons employed by the University since July 1, 1963 have executed a Patent Acknowledgment or (prior to 1997) a Patent Agreement at the time of their employment; non-employees who use University funds or research facilities or who work on a sponsored research project must execute a Patent Acknowledgment before such use or work commences.
When there is no use of University research facilities or use of University contract, grant or gift funds, exemptions to signing the Patent Acknowledgment may be authorized for: military personnel on assignment at the University but who are not compensated by the University; University Extension teachers and lecturers; teachers and lecturers of regular University curricula and visiting scholars on special short-term assignment of one-year or less; lecturers making one-time or series appearances; and clinical appointees who are not compensated by the University, pursuant to the established University-wide procedures promulgated in Business and Finance Bulletin G-40, University of California Patent Program. A full-text copy of the Patent Acknowledgment is included in this Bulletin.
The Patent Acknowledgment requires full disclosure of all inventions, whether or not the invention was developed as a part of, or outside of, any University duties or use of University facilities. After disclosure, the equities of the parties are assessed, as are the interests of the University in confirming assignment of patent rights for filing of patent applications. Absent obligations to third parties, the University's interests, if any, may be released to the inventor subject to a shop right to the University. The campus Authorized Licensing Office may release rights in inventions to inventors in accordance with the following criteria:
When the invention has been conceived and reduced to practice without any University support, without using University research facilities (exclusive of libraries), not on University time, and when the invention is not within the scope of the inventor's assigned University activities, or is within the scope of consulting activities permissible under campus policies and APM-020 - rights to be released to the inventor. An invention is considered to have been made under a “permissible consulting” activity (and thus an invention in which patent rights may be released to inventors) if that invention is made:
- pursuant to an outside professional activity (as discussed under APM-025);
- without utilization of University research facilities and/or gift, grant, or contract funds administered through the University (University Patent Policy);
- without incurring any University obligations to other parties (University Patent Policy and Patent Acknowledgment); and
- outside an individual’s employment obligations (“scope of employment”) to the University.
When the invention has been conceived or reduced to practice with University support; or while using University research facilities (exclusive of libraries); or on University time, or when the invention is within the course and scope of the inventor's assigned University activities and in the absence of an overriding obligation to third parties--rights may be released to the inventor, subject to the inventor's intending to actually file a U.S. patent application.
11-230 Responsibility for Patent Clauses in Sponsored Agreements
The Patent Policy, Section III C, assigns the responsibility for implementation of the policy to the Provost and Executive Vice President – Academic Affairs. Two of the responsibilities assigned to the Provost impact contract and grant administration:
"...3. Negotiating licenses and license option agreements with other parties concerning patent and/or analogous property rights held by the University..."
"5. Assisting University Officers in negotiating agreements with cooperating organizations concerning prospective rights to other agreements to be funded in whole or in part by such cooperating organizations, and negotiating with Federal agencies regarding the disposition of patent rights..."
It is the responsibility of those Contracts and Grants Officers who have the delegated authority for entering into sponsored agreements to negotiate and accept agreement terms on prospective patent rights which are consistent with Guidelines outlined in this Manual. Contracts and Grants Officers are assisted in this activity by the Office of the President, Research Policy Analysis and Coordination (RPAC) which will specify what is and is not acceptable under patent policy. While it is the Contracts and Grants Officer's responsibility to negotiate and accept patent clauses consistent with Guidelines expressed in this Manual and other guidance issued from time to time by RPAC, the Provost retains the authority to determine exceptions to these Guidelines, and has delegated this authority to the Executive Director, RPAC.
11-240 Procedures for Accepting Patent Clauses in Sponsored Agreements
Sections 11-240.1 through 11-250.3 outline the general procedures used for the development, approval, and dissemination of acceptable patent clauses in sponsored agreements.
11-240.1 Clauses That May Be Used by Contracts and Grants Officers
- Campuses and Laboratory Contracts and Grants Officers may accept patent clauses independently of the Office of the President, Research Policy Analysis and Coordination (RPAC) if a standard or tailored patent clause is acceptable to the sponsor and is within University policy.
Standard patent clauses may also have been approved by RPAC (or its predecessor Office of Technology Transfer (OTT)) for continuing use with a particular sponsor. Contracts and Grants Officers must assure that such clauses are appropriate to the individual case at hand.
- If the sponsor will not accept the standard clause, Contracts and Grants Officers may negotiate clauses with the sponsor which conform to Office of the President Guidelines developed by RPAC. General Guidelines applicable to all sponsors and specific Guidelines for five types of sponsors are promulgated in 11-300 of this Chapter.
- Section 11-300, General Guidelines for Patent Clauses
- Section 11-310, Preferred Patent Provisions
- Section 11-320, Guidelines for Patent Clauses in Agreements with Federal Sponsors
- Section 11-330, Guidelines for Patent Clauses in Agreements with State, County, and Municipal Governments
- Section 11-340, Guidelines for Patent Clauses in Agreements with For-Profit Sponsors
- Section 11-350, Guidelines for Patent Clauses in Agreements with Non-Profit, Charitable Sponsors
11-240.2 Exceptions to Patent Guidelines Approved by RPAC
When a Contracts and Grants Officer and a sponsor are unable to negotiate a standard patent clause or patent provisions consistent with the appropriate Guidelines promulgated in Section 11-300, exceptions to these Guidelines shall be discussed by the Contracts and Grants Officer with RPAC, and the agreed-upon variation may be used in the contract or grant. However, such exceptions to the Guidelines must be reapproved by RPAC before they can be used in another contract or grant with the same sponsor.
11-240.3 Review by Provost and Executive Vice President--Academic Affairs
Where agreement cannot be reached between the sponsor, Contracts and Grants Office, and RPAC, the Chancellor or Laboratory Director may request a review by the Provost and Executive Vice President--Academic Affairs.