PPM Section 250-15

All University employees, non-employees who use University facilities, and others who receive gift, contract, or grant funds through the University must agree to assign patents and inventions to the University. To encourage and assist the University inventor in the use of the patent system in a manner that is equitable to all parties involved, the University of California Patent Policy has been adopted.

Responsibility

All matters relating to patents with which the University is in any way concerned are the responsibility of the President. The President is advised on such matters by the Intellectual Property Advisory Council (IPAC), which is chaired by the Senior Vice President--Academic Affairs.

Patent Agreement

All University employees and non-University-compensated persons who use University research facilities or who interact with University personnel engaged in research are required to sign the University Patent Agreement (Form UPAY 585, Calcode 71443-180).

Exemptions to Signing Patent Agreement

There are personnel titles that may not require the person to sign the University's patent agreement. In most cases these persons will not use University research facilities other than libraries and will not use extramural funds obtained by or through the University. Examples of exempt personnel titles are:

Military instructors not compensated by the University.
University Extension instructors.
Visiting scholars on special short-term assignment.
Lecturers making one-time or series appearances.
Non-University-compensated clinical appointees who do not use University research facilities.

Statement of Exemption

Granting an exemption to signing the patent agreement within the limitations set forth above is the responsibility of department chairs. In all cases where an exemption is made, a statement of exemption (Exhibit B) must be prepared and signed and must be retained in the individual's file in the Accounting Office, which is the office of record.

Patent Provisions in Gifts/Contracts/Grants

Patent provisions in gift, contract, or grant documents should preserve the potential equities of both the inventor and the University, as well as of the sponsor if the sponsor wishes to claim such equity.

Terms and conditions of the agreement executed between the University and the sponsor will define the actual patent rights of the sponsor. Exhibit C shows a sample of acceptable patent language for profit-making sponsors and for nonprofit sponsors.
An agreement may provide a time-limited right of first refusal to the sponsor for commercial rights to patentable inventions. See Exhibit D for a summary of sponsor patent rights.

Negotiation of Patent Provisions

The Office of Research, on behalf of the President and the principal investigator, will negotiate patent provisions with the sponsor. These negotiations are coordinated with the University Patent, Trademark, and Copyright Office (PTCO).

Possibly Patentable Invention

The possibility of a patentable invention is related to discovery or development of a new and useful process, device or apparatus, article of manufacture, composition of matter, chemical compounds, microorganisms, plant or related improvement, or to a new use for a known material or device.

Patent Process

University personnel must report promptly to the Director of the PTCO any possibly patentable invention. The following steps occur during the patent process:

1. The investigator completes the University of California Disclosure and Record of Invention Form (refer to Exhibit E for sample form and instructions for completion). The PTCO and the Office of Research maintain a supply of these forms.

2. The investigator submits the Disclosure and Record of Invention Form to the PTCO. This information is confidential; the form is sent ONLY to the PTCO. The Disclosure and Record of Invention provides information to enable the staff in the PTCO to evaluate patentability, inventorship, desirability of obtaining patent coverage, and patent obligations to research to sponsors outside the University.

3. After the preliminary evaluation of the Record of Invention, the PTCO notifies the research sponsor(s).

4. All licensing of inventions and the terms and conditions of licensing agreements are negotiated on a case-by-case basis by the PTCO.

References

Office of the Board of Patents: Patent Agreements and Non-University Compensated Users of Computer Facilities within the University, 10/13/64.

University Bulletin: Summer and Incidental Employment of Faculty and Staff: Conflict Between University Patent Agreement and Private Agreements for Summer or Consulting Work, 6/20/66.

Office of the President: Schedule of Support and Patent Privileges, 2/21/68.

Office of the Board of Patents: Patent Obligations to Sponsors of Research, 8/5/71.

Office of the President: Policy and Procedures for Reporting Inventions to the Board of Patents, 7/13/73.

Office of the President: Patent Agreement Requirements-- Graduate Students, 1/14/76.

Office of the President: University Patent Agreement Requirements and Procedures [for Non-Compensated Researchers, Visiting Scholars, Consultants], 7/14/76.

Office of the President: University of California Patent Policy, 11/18/85; revised 4/16/90.

UC Contract and Grant Manual Chapter 11, Intellectual Property and Related Matters, 3/6/87.