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G-40, University of California Patent Program
August 1, 1994
I. REFERENCES
A. Regental Standing Order 100.4 (gg): Duties of the President of the
University.
B. Regental Standing Order 103.1 (a)(b): Service Obligations.
C. University Regulation Series No. 4 - Special Services to
Individuals and Organizations, June 23, 1958.
D. Office of the President Administrative Statement - Patent
Agreements and Non-University Compensated Users of Computer
Facilities Within the University, October 13, 1964.
E. Office of the President Administrative Statement - Summer and
Incidental Employment of Faculty and Staff Members, June 20, 1966.
F. Office of the President Administrative Statement - Reimbursement
of the University for Costs Incurred in Faculty Conduct of
Consulting or Private Practice Activities, July 14, 1967.
G. Regental Action - Schedule of Support and Patent Privileges,
February 21, 1968.
H. Contract and Grant Manual, Chapter 1, 1-410 and 1-420:
Restrictions on Rights to Publish or Disseminate Information
Resulting From Work Under Sponsored Projects.
I. Office of the President Administrative Statement - Patent
Obligations to Sponsors of Research, August 5, 1971.
J. Presidential Administrative Statement - Reporting of Inventions
to the Board of Patents [now Office of Technology Transfer or
Appropriate Licensing Office], July 13, 1973.
K. Presidential Administrative Statement - Patent Agreement
Requirements--Graduate Students (includes 11/15/63 Regents' Action
concerning Patent Agreements and Certain Exemptions),
January 14, 1976.
L. Presidential Administrative Statement - Patent Policy;
Non-Compensated Researchers, Visiting Scholars, July 14, 1976.
M. Academic Personnel Manual, Section 025 - Policy on Outside
Professional (Consulting) Activities of Faculty Members.
N. University of California Patent Policy (as amended April 16, 1990).
O. Guidelines on University-Industry Relations, May 17, 1979.
P. University Policy on Integrity in Research, June 19, 1990.
Q. Redelegation to Associate Vice President Pastrone from Senior Vice
President Administration Brady: Execution of Documents for
Administration of University Patent and Other Intellectual
Property Matters, April 23, 1985.
R. Delegation of authority (0957), to Chancellors from President
Gardner: Authority to Solicit and Except or Execute Certain
Extramural Grants and Contracts , March 29, 1988.
S. Delegation of authority (0966), to Senior Vice President
Administration Brady from President Gardner: Execution of
Documents for Administration of University Patent and Other
Intellectual Property Matters, June 15, 1988.
T. Redelegation to Director Wootten from Associate Vice President
Pastrone: Execution of Documents for Administration of University
Patent and Other Intellectual Property Matters, November 14, 1990.
U. Academic Personnel Manual, Sections 660-667: Additional Compensation.
V. Contract and Grant Manual, Chapter 1, Sections 1-410 and 1-420.
W. Contract and Grant Manual, Chapter I 1: Intellectual Property and
Related Matters.
X. Reassignment of Responsibility for Administration of University
Patent and Other Intellectual Property Matters, to the Director,
Lawrence Berkeley Laboratory, from Senior Vice President Brady,
effective 9/18/87.
Y. Reassignment of Responsibility for Administration of University
Patent and Other Intellectual Property Matters, to the Director,
Lawrence Livermore National Laboratory, from Senior Vice President
Brady, effective 9/18/87.
Z. Reassignment of Responsibility for Administration of University
Patent and Other Intellectual Property Matters, to the Director, Los
Alamos National Scientific Laboratory, from Senior Vice President
Brady, effective 9/18/87.
AA. Reassignment of Responsibility for Administration of University
Patent and Other Intellectual Property Matters, to the Chancellor,
Los Angeles Campus, from Sr. Vice President of Administration
effective 01/01/90.
BB. Reassignment of Responsibility for Administration of University
Patent and other Intellectual Property Matters, to the Chancellor,
Berkeley Campus, from Sr. Vice President of Administration
effective 01/01/90.
CC. California Fair Political-Practices (Fair Political Practices
Commission, West's Government Code sec. 83, 101-83,123).
II. INTRODUCTION
Business and Finance Bulletin G-40 sets forth the administrative
procedures implementing the University of California Patent Policy of
November 18, 1985 as amended April 16, 1990.
Within a major research university, innovative research results often
give rise to patentable inventions, even though the research is
conducted for the purpose of gaining new knowledge. The University's
patent program provides a comprehensive system for determining the
rights and responsibilities associated with patentable inventions
arising from University research and for administering these rights.
Technology transfer is an important part of the public service mission
of the University, and is encouraged and legislated by both Federal and
State laws and initiatives. The patent program is administered for the
benefit of the inventors, the University and the public. The
procedures used in carrying out the program are guided by University
of California Presidential policy and are implemented so as to
maximize the transfer of technology for the public benefit. In order
for the program to be successful, close coordination between the
University inventors and the various offices established to assist in
technology transfer is required. The procedures outlined herein are
issued to assist in this coordination.
III. SCOPE
The policies and procedures described in this Bulletin apply to the
Office of the President, the campuses, the Department of Energy (DOE)
Laboratories, and all other University facilities. The DOE
Laboratories participate in the patent program to the extent that the
University's patent procedures do not conflict with contractual
obligations with the Department of Energy or applicable law. This
Bulletin does not include policies and procedures on copyrights,
trademarks, or tangible research property.
IV. DEFINITIONS
Appropriate Appropriate Licensing Office (ALO) -
Licensing Office: The Office of Technology Transfer or the office
of those campuses and Laboratories that have been
delegated patent and licensing authority.
Assignment: A transfer by the owner of rights in an invention
to another party.
Disclosure: The communication to the University by an
inventor or another of a potentially patentable
invention in sufficient detail for the recipient
to understand and use the invention.
Invention: A new and useful process, machine, or composition
of matter, including any new variety of asexually
propagated plant, or any new or useful
improvement thereof.
Laboratories: The three major University Laboratories which are
funded primarily by the U.S. Department of
Energy--Lawrence Berkeley Laboratory, Lawrence
Livermore National Laboratory, and Los Alamos
National Scientific Laboratory.
Option Agreement: An agreement which holds open a right to do or
elect to do certain acts. In the ALO, the
agreement is used to extend the term of election
of a right to negotiate a license.
Office of Tech- Office of Technology Transfer (OTT) - Within the
nology Transfer: Office of the President, the Universitywide
office responsible for the operation, management
and performance of the patent program.
Patent: A property right to an invention granted by the
government to an inventor conferring the right to
exclude others from manufacturing, using or
selling the inventions defined by the claims in
the printed patent.
Patent A document filed with a government comprising a
Application: written description of an invention and the
process and manner of using it.
Patent The person on each campus assigned to assist the
Coordinators: (PC) faculty in interactions with the ALO.
Patent License: A contract in which a patent owner grants to
another party an exclusive or a non-exclusive
right to make, use and/or sell the patent owner's
invention covered by the patent with a defense
against infringement based on the licensed patent.
Royalty: Consideration paid by a licensee to licensor for
the right to make, use or sell an invention.
Secrecy Agreement: A contract that requires someone to hold
specified information in confidence and not
disclose it to others, most often for the purpose
of protecting patent rights through what might
otherwise be a public disclosure. Often includes
a "non-use" statement.
Shop Right: The employer's right to use employees' inventions
in the employer's business. Specifically, the
University's right to use certain employee
inventions for noncommercial purposes, without
payment of a royalty.
Sponsor: An extramural provider of research funds or other
support.
Technology Liaison The office established on a campus that serves as
Office (TLO) an assistance to OTT for faculty interaction,
disclosure processing and, in some cases,
licensing.
Technology Transfer The University's Technology Transfer Advisory
Advisory Committee Committee that recommends operational and
(TTAC): intellectual property policy considerations to
the appropriate Senior Vice President.
V. UNIVERSITY OF CALIFORNIA PATENT POLICY
The major objectives of the patent program are to promote the progress
of science and technology, to assure that inventions are made available
to the public, and to provide appropriate royalty revenues to the
University and to inventors.
These objectives form the basis for the University of California Patent
Policy, the full text of which appears as part of Appendix A. Briefly
summarized, the Policy provides that the University retains all patent
rights to inventions resulting from University research or employment.
University employees and those using University facilities or funds
under the control of the University agree to promptly disclose the
conception or development of potentially patentable inventions to the
University and to assign all rights to all such inventions and patents
conceived or developed in the course and scope of their University
employment or through use of University facilities or funds under the
control of the University. Royalty income is shared between inventors
and the University.
VI. ADMINISTRATION
The patent program is administered by the Office of the President and
by the Appropriate Licensing Office on those campuses and Laboratories
that have been delegated patent licensing authority.
A. University Patent Agreement
An agreement to assign inventions and patents to the University,
except those resulting from permissible consulting activities
without use of University facilities, is mandatory for University
employees, for persons not employed by the University but who use
University research facilities, and for those who receive gift,
grant, or contract funds through the University. Persons signing
the Patent Agreement agree to disclose promptly all potentially
patentable inventions to the University. The University of
California Patent Agreement is included in Appendix A.
1. Students
Students generally are not required to sign the Patent Agreement.
However, graduate and undergraduate students are required to
sign the Patent Agreement if they are also University employees
or if they participate in an extramurally funded research
project (see: Administrative Statement dated 1/14/76, President
Saxon to Chancellors, Laboratory Directors: "Patent Agreement
Requirements-Graduate Students" (includes 11/15/63 Regents'
Action concerning "Patent Agreements and Certain Exemptions")).
Graduate students who conduct research funded by outside
sponsors must sign the University's Patent Agreement, and they
must be fully apprised of their specific commitments to the
University and to the sponsor of the research. There are
certain situations where students, particularly graduate
students, may be actually employed in private industry and their
education subsidized by their employer. In these circumstances,
the students often retain their employee status with their
industrial employer and remain bound by their employers' patent
agreements. In no circumstances should such students be
permitted to participate in research projects funded by outside
sponsors unless those students have signed the University Patent
Agreement and unless these students have assured their
respective Deans or department heads that they have no
overriding patent obligations to an outside employer.
2. Consulting/Outside Employment
University employees who engage in consulting, or in summer or
incidental employment, outside the University are advised to
consider any proposed agreements carefully to insure that no
conflict exists with the University's Patent Agreement. (See:
6/20/66 Official Statement - Cunningham - "Summer and Incidental
Employment of Faculty and Staff Members"). Employment
agreements used by commercial firms normally contain language
which places severe restrictions on the individual where matters
of publication or inventions are concerned, and these
restrictions frequently extend to post-employment obligations.
Many of these agreements are not enforceable if the University
employee has already signed the University Patent Agreement and
can be the source of significant legal problems. It is
recommended that the contents of proposed employment agreements
be carefully studied by the employee, that the outside employer
be informed of the employee's obligations to the University, and
that any agreement concerning patent or invention rights contain
the phrase "subject to prior obligations to the University of
California."
3. Visiting Scientists
Visiting scientists who are not employed by the University but
who visit the University and use University funds and facilities
are required to sign the University Patent Agreement. This is a
particular concern if such a visitor participates in an
extramurally funded research project. The main purpose of this
requirement is to prevent a conflict with obligations under
sponsored research agreements and to prevent outside
organizations from reaping the benefits from work that was
performed at or paid for by the University.
4. Exemptions
Four categories of individuals are exempt from signing the
University's Patent Agreement subject to the condition that the
individual does not use University research facilities or
contract, grant, or gift funds obtained through the University.
(See: 7/14/76 Administrative Statement, President Saxon to
Chancellors, Laboratory Directors, "Patent Policy; Non-
Compensated Researchers, Visiting Scholars"). The exempt
categories are:
a. military personnel on assignment at the University but who
are not compensated by the University;
b. teachers and lecturers of University Extension, and teachers
and lecturers of regular University curricula (including
visiting scholars) on special short-term assignments of one
year's duration or less;
c. lecturers making one-time appearances or series appearances;
and
d. clinical appointees who are not compensated by the University.
Exemptions which fall into the four categories noted above may be
authorized by the head of the employing department and must be
documented in the exempted individual's personnel file. A copy
of an appropriate exemption document is included as Appendix B.
Exemptions other than the four categorical exemptions described
above may be authorized pursuant to the Patent Policy, Section
II. A. in those circumstances when the mission of the University
is better served by such action, provided that overriding
obligations to other parties can be met, and provided such
exemptions are consistent with other University policies.
Campus personnel have not been delegated authority for approving
exemptions to the requirement for signing the Patent
Agreement, except for the exemption categories 1. through 4.
specified above. Requests for such exemptions should be
referred to the OTT Campus Liaison Group for review by OTT and
approval by the President or his/her delegate. All approved
exemptions will be reported by the Director, OTT to the TTAC, as
requested.
The approved use of University owned computer facilities by non-
University personnel is not considered a use of University
research facilities and such users are not required to sign the
University's Patent Agreement unless there are overriding patent
obligations to outside sponsors. (See: 10/13/64 Administrative
Statement, Owens to Chief Campus Officers: ("Patent Agreements
and Non-University Compensated Users of Computer Facilities
within the University."))
B. Patent Clauses in Contract and Grant Agreements
Contract and grant agreements with sponsors supporting University
research projects or transferring materials for research purposes
often contain patent provisions. Those provisions establish the
rights of the various parties interested in potentially patentable
inventions. The existing patent obligations of all parties
concerned need to be fully understood so as to avoid conflicting
obligations in proposed new agreements. (See: 8/5/71
Administrative Statement, Owens to Chancellors: "Patent Obligations
to Sponsors of Research.") Therefore, early consideration of patent
rights during negotiations with research sponsors is an important
element of the patent program. The level of sponsor support
determines the extent of patent rights available to the sponsor.
In order to obtain a first right of negotiation to an
exclusive license, an industrial funding sponsor must fund all the
costs of the University research, including overhead costs and a
pro-rata share of the principal investigator's salary. The Summary
of Sponsor Patent Rights Applicable to Funding Agreements with
Industrial (For-Profit) Sponsors of Research is included as
Appendix C. A deviation from this Presidentially-issued
administrative statement can be made only by the President or
his/her delegatee.
In the negotiation of intellectual property clauses in contracts and
grants, Contract and Grant Officers are guided by operational
guidance issued by OTT, including the Contract and Grant Manual,
Chapter 11. Chapter 11 contains guidelines and model clauses which
have been approved by the OTT. A deviation from Chapter 11
guidelines and from other OTT-issued guidance requires the approval
of the Director of OTT or his/her delegatee. OTT Campus Liaison
Group will assist Contract and Grant Officers and/or Patent
Coordinators in accordance with any OTT/campus Memoranda of
Understanding in the negotiation of modifications to standard
intellectual property clauses with sponsors and in requesting
exceptions to OTT-issued guidelines.
It is important to note that neither the delegation of patent and
licensing functions to appropriate campuses nor the delegation of
contract and grant authority includes the function or authority of
approval of patent clauses that fail to conform to OTT-issued
guidelines. (See: Letter of September 11, 1989, Sr. Vice
President R. Brady to Chancellor Ira Heyman "Reassignment of
Patent and Licensing Responsibilities;" Letter of April 17, 1989
Sr. Vice President R. Brady to Chancellor C. Young,
"Reassignment of Patent and Licensing Responsibilities;" and Letter
of March 29, 1988, President to Chancellors "Authority to Solicit
and Accept or Execute Certain Extramural Grants and Contracts.")
In cases where campus personnel and OTT cannot reach agreement on an
acceptable patent clause, a Chancellor, Laboratory Director, or Vice
President may request review by the Senior Vice
President--Administration. Such requests for review may take the
form of a letter signed by the Chancellor, Laboratory Director, or
Vice President.
C. Reporting of Inventions
Individuals signing the Patent Agreement must disclose all
potentially patentable inventions whether or not the invention was
developed as part of, or outside of any University duties or use of
University facilities. Rights to non-University inventions would
be returned to the appropriate party(s) per Section VI.F. of this
Bulletin. The ability of the University to meet its obligation to
research sponsors and to transfer the results of research to the
public through the patent and licensing process depends on early
reporting of potentially patentable inventions to the University.
Potentially patentable inventions include any new or useful process,
device or apparatus, article of manufacture, composition
of matter (including chemical compounds, microorganisms, and the
like), asexually propagated plant, or related improvement to any of
the foregoing, or a new use for a known material or device. Such
inventions are reported on the University's Record of Invention
Form which is submitted by the inventor either to the ALO, or to
the Technology Liaison Officer (TLO) or the Patent Coordinator
(PC), as appropriate. The TLO or PC checks the Record of Invention,
for completeness and forwards it to OTT for action. The Record of
Invention Form provides some of the information necessary for the
University to evaluate patentability, inventorship, assignment
obligations, the desirability of obtaining patent coverage, and
patent obligations to research sponsors. A copy of the Record of
Invention Form used by the OTT is included as Appendix D. The
information reported in the Record of Invention is
confidential and should be kept confidential by the inventor. If
details of an invention are to be communicated, it should be
accomplished under Secrecy Agreement procedures established by the
ALO.
Carefully kept records can be very useful in determining patent
rights because similar inventions by others may occur at about the
same time. Therefore, documentation of research data as they are
being compiled and analyzed is encouraged. Suggestions for
Invention Record Keeping are included as Appendix E.
The administration of the patent program is conducted so as not to
delay the prompt publication of research results through normal
academic channels. However, the timing of communications to the
academic community or public can be a factor in the determination
of patent rights. Prompt disclosure of an invention to the
University allows the University and the inventor to plan the
further communications regarding the invention so that U.S. and
foreign patent rights will not be lost.
United States patent law allows for the filing of a patent
application within a one year grace period after the first
"publication," the definition of which is highly technical under
U.S. and foreign patent laws. Any one of the many and various
forms of academic communications or public use may well establish
the date from which the one-year filing period is measured. Public
disclosure of an invention before filing a U.S. patent application
will preclude patent rights in nearly all foreign countries.
The ALO reviews all new invention disclosures for patent obligations
owed to sponsors of research. The ALO takes appropriate action
reporting such obligations to the sponsor as required. Inventors
are not required, and should not, report inventions directly to
sponsors. Consultation and advice on these highly technical
matters are available from the TLO's, PC's and professional staff
in the ALO.
D. Evaluation of Inventions
A preliminary evaluation of the Record of Invention is made by
professional staff in the ALO. Factors such as patentability,
benefit to the public, commercial potential, and patent rights of
outside parties are considered in selecting cases to pursue
further. The cost of patent prosecution, which can be many
thousands of dollars, and any impending publication bar date are
also considered. Complicated cases may take several months to
review and analyze, and inventors are urged to keep the ALO
professional assigned to the invention apprised of any action they
are contemplating, especially any public disclosures that
might affect rights in the invention. The ALO's preliminary
evaluation normally takes about 30 days.
If evaluation by the ALO determines that a case qualifies for
further consideration, marketing of the invention to find a
qualified licensee is started. The goals of marketing are to
access commercial interest in the invention and to
find qualified licensee(s). When sufficient information on the
patentability and the commercial viability has been gathered and at
a time determined by the ALO, the case may be referred to a patent
attorney, who upon express authorization and instructions may (1)
conduct a prior art search in the United States Patent and Trademark
Office, (2) render a preliminary opinion on patentability, or (3)
file a patent application. The attorney's opinion is normally
issued within 60 to 120 days.
E. Filing of Patent Applications
If it is decided to proceed with filing a patent application, the
ALO authorizes and coordinates the process, and a patent attorney
is engaged to draft the patent application. In doing so, the
inventor works closely with the attorney to complete the
application. The completed patent application is submitted in the
inventor's name to the United States Patent and Trademark Office.
At the time of filing of the application, the inventor executes
legal documents assigning the patent to the University pursuant to
the inventor's Patent Agreement.
Once an application is filed, the patent process is a negotiation
with the patent examiner in the United States Patent and Trademark
Office. Normally a series of communications is required. During
this phase, the patent attorney, the ALO, and the inventor work
together to respond to the examiner's requests (called "Office
Actions") and to seek the broadest possible protection for the
invention. In general, about a year elapses before the first
substantive action is taken by the examiner on the newly filed
patent application. The whole process normally takes at least two
years. Most applications filed by the University result in an
issued patent.
Procedures for filing applications in foreign countries vary, and
are very costly. The ALO files foreign patent applications only
when the cost is likely to be recovered from a licensee. If a
publication has been made after a U.S. patent application filing,
a preliminary foreign filing date must be made within one year of
the U.S. filing date in order to preserve rights in other
countries.
F. Patent Rights to Sponsors and Inventors
Upon review of the disclosure, it may be determined that the
invention was not made in the course and scope of University
employment, or through use of University funds and facilities, or
was made within the scope of permissible consulting. In such
cases, assignment of the invention to the University would not be
required. For those inventions subject to assignment, if a
decision is made that the University will not file a patent
application on an invention or will not attempt to market it, the
University may be required to return patent rights to Federal
sponsors or to other outside sponsors. Where no sponsor rights
exist, patent rights may be released to the inventor when the
University elects not to file or market an invention
or when the equity of the situation clearly indicates such release
should be given. Once released to the inventor, however, no further
research or development on that invention may be conducted using
University support or facilities, and the University retains a shop
right to the invention. An inventor may address a request for
release of patent rights to the ALO. (See: March 6, 1987, Contract
and Grant Manual Sec. 11-120, "Authority for Intellectual
Property"). Releases of patent rights to inventors will be
documented in writing and signed by the Director of the ALO,
subject to receipt of a binding shop right agreement signed by the
inventor. (See: 6/16/88, (DA0966) President to Sr. Vice President-
-Administration, "Execution of Documents for Administration of
University Patent and Other Intellectual Property Matters;"
4/23/85, Redelegation to Assoc. Vice Pres, "Execution of Documents
for Adm. of Univ. Patent and Other Intellectual Property
Matters;" and 11/14/90 Redelegation to Director OTT, "Execution of
Documents for Adm. of Univ. Patent and Other Intellectual Property
Matters.") Even if outside sponsorship is involved, the inventors
may be able to obtain their rights; ALO personnel will assist the
inventor in these procedures and in the procedures necessary for
the inventor to obtain clear title from sponsoring federal agencies,
if applicable.
G. Licensing
The purpose of licensing University inventions to industry is
threefold: 1) to provide a mechanism for transferring the results of
University research to the public for the public benefit; 2) to
meet obligations to research sponsors; and 3) to generate royalty
income for the benefit of the University and the inventor. To
pursue the licensing of a patent, the ALO contacts appropriate
qualified companies to assess their interest in obtaining a license.
Central coordination of all licensing contacts serves the interest
of both the inventor and the University, but information provided
by the inventor as to potential licensees is important to this
process. If a private company contacts an inventor directly, the
inventor is responsible for referring the company to the
ALO. The inventor must also report any direct or indirect financial
interest in each potential licensee to the ALO prior to the time of
licensing negotiations and at the time of execution of the license.
The definition of financial interest in this case is the same as
that promulgated by the California Fair Political Practices
Commission requirements. The University may permit evaluation of
an invention by potential licensees prior to the issuance of a
patent through use of a Secrecy Agreement executed by the ALO.
If the potential licensee wishes to fund an inventor's future
research, the inventor must disclose any financial interest that
he/she has by means of a written disclosure. The written
disclosure statement must be reviewed and approved independently
and substantively by local campus committees before funding can be
approved. [See: May 17, 1989, Guideline No. 5, "Guidelines on
University-Industry Relations"]. Final acceptance of such funding
would be accomplished under standard contracts and grants policies,
procedures, and authorities.
The ALO negotiates and signs the license agreement on behalf of The
Regents. Terms and conditions for licensing agreements vary, and
are negotiated on a case- by-case basis. If a company needs time
to evaluate an invention, an option agreement may be negotiated.
An exclusive license may be granted in instances where all of the
funding for the research was provided by one commercial sponsor, or
when it is the best way to assure development of the invention. An
exclusive license must provide for diligent development of the
invention (See: 35 USC 200 et seq.), and it usually includes a
minimum annual payment.
In some instances a licensee may wish to engage an inventor as an
independent consultant to assist the licensee in transferring the
technology from the academic to the private sector. The University
does not usually become party to such consulting agreements, but
University policies on faculty and employee consulting apply to the
situation, and the inventor should insure that any such agreements
concerning patent or invention rights contain the phrase "subject
to prior obligations to the University of California." (See:
Standing Order 103.1 and University Regulation No. 4).
If an invention was conceived or reduced to practice in whole or in
part under a research agreement with a federal agency, the U.S.
government also receives a royalty-free license for government use
which is issued by the ALO as part of its reporting requirements to
the agency.
E. Royalties
Royalty rates are negotiated as part of the license agreement.
Rates depend on a variety of factors such as the value of the
invention, the cost of commercializing the invention, and whether
the license is exclusive or nonexclusive.
Proceeds from licensing income are shared between the inventor, the
State and the University. When there are two or more inventors, or
two or more inventions in a single license, each shares equally in
the income unless the inventors agree on an alternative
distribution. When a joint invention arises involving another
institution, royalties are shared with that institution and/or
its inventor. The University's patent income is used to finance
the administration of the patent program and to support research.
Accounting for patent income and expenses is done by the ALO.
Royalty payments are made to inventors in November of each year on
amounts received in the previous fiscal year.
1. Acceptance of Patents as Gifts
Patent applications and issued patents may be accepted as gifts
to the University depending on the particular circumstances.
All offers of patents and patent applications should be referred
to the Director of the ALO, accompanied by a copy of the patent
or patent application. A decision to accept any patent or
patent application is made by the Director of the ALO in
coordination with the Director of Development Policy, Gifts and
Endowments. In general, the underlying invention must have
obvious commercial potential, and the patent must be free of
contingencies and liabilities.
If a gift of a patent is accepted by the University, the
University will agree to pay reasonable legal fees for
transferring title to The Regents and, if mutually agreeable,
the University will agree to attempt to commercialize the
invention within the normal procedures and constraints of its
licensing program. If a patent received as a gift is licensed,
the distribution of royalty income will normally be as agreed
between the donor and the ALO.
VII. Exceptions
Because administration of the patent program involves many technical
and legal issues and because the circumstances of each case vary
widely, it is not possible to anticipate and address all potential
needs for exception to patent policies and guidelines. Instead, all
University academic and administrative staff and students are
encouraged to seek case-specific consultation and advice from the
TLO, PC or the ALO whenever patent questions arise. Most concerns
and problems can be resolved through discussions without formal
"exceptions." Administration of the University patent program
involves consideration of at least four distinct circumstances that
are commonly referred to as "exceptions."
First, the University Patent Policy, Section II.A, establishes an
obligation, under certain defined circumstances, for employees and
others to sign an agreement to assign inventions and patents to the
University. The Patent Policy provides that "exemptions" from such
agreements to assign may be authorized under some circumstances.
Such exemptions shall be authorized in accordance with Section VI.A,
herein.
Secondly, any action or decision in the administration of the patent
program which does not involve an "exemption" from signing the
University Patent Agreement, but which otherwise deviates from the
University Patent Policy itself, shall be made by the President or
his/her delegatee.
Thirdly, in the negotiation of intellectual property clauses in
sponsored or collaborative research agreements or material transfer
agreements, Contract and Grant Officers are guided by
Presidentially--issued administrative statements as codified in the
Contract and Grant Manual, Chapter I 1, and by other operational
guidance issued by OTT. A deviation from such guidance requires
approval pursuant to Section VI.B, herein.
Finally, an exception to other procedures authorized in this Bulletin
can be authorized by the Director, OTT, if the exception is in the
University's best interest. If a situation arises where resolution
of a problem cannot be reached in discussions between University
personnel and the Director of the OTT, a Chancellor, Laboratory
Director, or Vice President may bring the case to the attention of
the Senior Vice President-- Administration for review.
VIII. Responsibilities in Patent Matters
The following paragraphs define responsibilities of various offices
as related to patent matters.
A. President of the University
The President is responsible for the University of California
Patent Policy and its implementation.
B. Senior Vice President--Administration
The Senior Vice President--Administration is responsible for
administration of the patent program.
1. The University Controller oversees the operational and
procedural aspects of the patent program.
2. The Director of OTT is responsible for the operation,
management, and performance of the patent program and for
approving intellectual property clauses which represent
deviations from OTT-issued guidelines.
3. The Director, Research Administration, is responsible for
policies and procedures concerning the administration of
extramurally funded research contracts and grants and for
publication of the Contract and Grant Manual which contains
detailed information on the negotiation of patent provisions
in research agreements.
C. Senior Vice President - Academic Affairs
The Senior Vice President - Academic Affairs is responsible for
implementation of the patent program within his/her area of
jurisdiction. He/she is also responsible for the development,
revision and oversight of the Patent Policy upon the advice of
the Technology Transfer Council.
D. Technology Transfer Advisory Committee
Under the direction of the Senior Vice President,
Administration and the Senior Vice President, Academic Affairs,
the Technology Transfer Advisory Committee is responsible for
reviewing and preparing operational, budgetary and intellectual
property policy guidelines for these respective Senior Vice
Presidents.
1. Provide senior level oversight for the Office of Technology
Transfer and appropriate campus licensing offices in matters
of organization, budget, operational methods and new
initiatives in technology transfer;
2. Review and propose University policy on intellectual property
matters including patents, copyrights, trademarks and
tangible research products;
3. Provide oversight on exceptions to established policies
granted by the Office of Technology Transfer; and
4. Advise the President on related technology transfer and
intellectual property matters as requested.
E. Office of the General Counsel
The Office of the General Counsel is responsible for the
provision of legal advice to the University, and for the
preparation or approval of all contracts, grants,
licenses and other legal documents including those relating to
the University's patent program. The University official having
execution authority for such documentation (e.g, campus Contract
and Grant Officers for research contracts and grants and the
Director, ALO for licenses) coordinates legal review with the
Office of the General Counsel prior to execution of these
documents.
F. Chancellors, Laboratory Directors, and Vice Presidents
Chancellors, Laboratory Directors and Vice Presidents are
responsible for the participation of faculty, employees, and
others in the University's patent program and for the submission
of requests for exceptions to patent policies and procedures.
All Vice Presidents have similar responsibilities for their
offices, including but not limited to, the Senior Vice President
- Administration for the Library Automation Program and the
Vice President - Agriculture and Natural Resources for the
Agricultural Experiment Station and Cooperative Extension.
Laboratory Directors may exercise additional responsibilities
involving necessary coordination with the Department of Energy.
1. Campuses
a. Contract and Grant Officers are responsible for the
acceptance of sponsored research agreements and for
liaison with the ALO and OTT on related intellectual
property matters. When entering into an agreement
with an outside sponsor, Contract and Grant Officers must
be aware of existing patent obligations and guard against
entering into a new agreement with conflicting
obligations.
b. Department Chairpersons or other department heads are
responsible for including a signed Patent Agreement or
exemption document in the file of all department
employees, for obtaining a signed Patent Agreement from
other individuals involved with departmental research
projects, and for disseminating information about the
patent program to all members of the department and
others.
c. Principal Investigators are responsible for developing and
adhering to a well-defined scope of work for each
extramurally sponsored research project and for complying
with the terms and conditions on intellectual property in
extramural agreements.
d. All employees and others who have signed the Patent
Agreement are responsible for promptly reporting all
potentially patentable inventions and for assigning
certain inventions to the University.
IX. Reporting
The President reports annually to The Regents on patent activity. The
Director of the OTT gathers and coordinates reports from other ALO's
and reports statistical data to the University Controller. This
report includes patents held, patent applications filed, U.S. patents
issued, option and license agreements issued, licenses in effect, and
royalty income. This report is ultimately forwarded to The Regents.
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