UC clarifies patent ownership rights with amendment; all faculty must sign new agreement
By Brendan Jackson
Feb. 22, 2012 12:55 a.m.
Most University of California employees in the past months have received an email with the subject line, “Please Sign Now: UC Patent Amendment.”
The UC recently amended its patent agreement between faculty and the university, known as the Patent Acknowledgment, and all university faculty members are required to agree upon the change by next week.
The university’s Patent Acknowledgment was set by the 1980 Bayh-Dole Act, which stated that government entities have the right to federally funded government intellectual property. The act permits a university to pursue ownership of research or inventions by its faculty.
The amendment clarifies that the patent for faculty members’ research or inventions discovered at a different university or an outside company still belongs to the UC if they continue to be employed by the university.
This clarification to the original agreement will ensure that the UC owns inventions made by faculty members using university resources and facilities, said Dianne Klein, a UC spokeswoman. By doing this, the university intends to meet legal obligations to properly manage these assets and meet its responsibilities as a public trust under the state constitution, she said.
Mary Trachta, a patent prosecution specialist at UCLA, said she is not familiar with the specifics of the amendment’s effects, but she received an email reminding her to sign the revised agreement.
“This is really a formality but (all faculty members) will have to sign the amendment (by the deadline),” Trachta said.
The amendment was emailed to 225,000 faculty members across the UC so they can electronically sign the change before the Feb. 29 deadline, Klein said.
Staff hired by Nov. 1, 2011, however, will not have to sign the amendment because they already signed the revised acknowledgment when they were hired.
The amendment, which is a technical change clarifying the wording of the original patent agreement, came after the U.S. Supreme Court’s decision in Stanford University v. Roche Molecular Systems in 2011, Klein said.
In the high-profile case, the court held that if a university faculty member’s potential future inventions are discovered while working at both the university and an outside company, the two entities share patent rights over the invention, said Neil Netanel, a UCLA law professor who specializes in intellectual property.
In this particular case, a Stanford faculty member had signed a patent assignment agreement with the university for potential future inventions, while also signing an agreement with Roche Molecular Systems, a health care company specializing in molecular treatments for diseases, before working for the company. While at Roche, the researcher invented HIV test kits and was legally bound to both Stanford and Roche under the agreements.
The court found that Stanford could not sue Roche for patent infringement because both agreements meant that patent rights were shared between the two entities.
This decision has caused the UC to re-evaluate its Patent Acknowledgment and to clarify that any patented invention or research from a UC faculty member belongs to the university, Klein said. By amending the Patent Acknowledgment, the university will avoid a similar situation to the one Stanford was put in, she said.
“This is nothing new,” Netanel said. “The amendment serves as a clarification of the language that has previously been agreed upon and that is in place.”
