Triggered by a recent U.S. Supreme Court case, the University of California is embarking on a systemwide project to update its existing patent policy to protect the university from inadvertently losing rights over its inventions.
All UC employees are required to sign an amendment to the policy by Feb. 29 clarifying the university’s rights over all inventions and patents made using university resources or facilities.
“Our patent policy hasn’t changed,” said UC spokesperson Dianne Klein in an email. “The clarification will ensure that the University owns inventions that are made using University resources and facilities, thus meeting its legal obligations to properly manage these assets and meet its responsibilities as a public trust under the state constitution.”
Last November, UC Berkeley launched an email campaign to ask campus employees to electronically sign the amendment made to the university’s patent policy.
Chancellor Robert Birgeneau and Executive Vice Chancellor and Provost George Breslauer sent an email Feb. 9 reminding all campus employees to sign the amendment because the campus suspected that many employees had disregarded the previous email. The first email was sent from the third party vendor VR Election Services, and no notices were sent out about the amendment beforehand.
The electronic signature is only required from employees hired on or before Oct. 31, 2011 since the amendment was already included in the Patent Acknowledgement form for all employees hired after Nov. 1, 2011, according to Klein.
Monetizing existing patents has been a source of revenue for the campus for years. Last year, the campus finalized an agreement to monetize a patent for an antibody that brought in $87.5 million and used the revenue to fund research facilities and biological sciences.
The amendment was spurred by a recent Supreme Court case that brought into scrutiny the language of Stanford University’s patent policy. In February 2011, Stanford’s board of trustees filed a lawsuit against an outside research company reclaiming ownership of a faculty member’s medical invention that measures the amount of HIV in a patient’s blood.
In June 2011, the court declared that Stanford’s patent language was insufficient and granted the research company entitlement to inventions arising from Professor Mark Holodniy’s research, even though he signed a patent agreement with the university at the beginning of his tenure, according to a court document.
In response to the court’s decisions, the UC took measures to protect its own rights over inventions from future agreements with outside consulting companies, according to William Tucker, executive director of Innovation Alliances and Services at the UC Office of the President.
“In light of the way the court ruled on that particular case, the UC decided it needed to change its policy,” Tucker said. “We’re just making our documents comply with the Supreme Court’s ruling.”
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UC, like most employers in the U.S. (including the Federal government and virtually all universities), requires as a condition of employment that the employee agree to assign (transfer) to the university rights to inventions made in the course of the work the employee is being paid to perform, using the employer’s facilities and equipment. (The agreements typically do not require the employee to assign to the employer inventions they make outside of work, on their own time, and without the use of the employer’s facilities or equipment. So, if you’re a university scientist paid to research cancer treatments, and come up with a new baseball on the weekend, you’re not required to assign it to your university, but if you come up with a new cancer treatment in the course of your research, you are required to assign the treatment.)
What happened at Stanford is that an inventor who had signed an employment agreement requiring him to assign his patent rights to the University instead assigned his rights in an invention to a company with which he was collaborating. The Supreme Court said that if Stanford’s employment agreement had read that the employee “hereby assigns” his rights in any inventions he made in the course of his work for Stanford, the invention would have belonged to Stanford at the time is was made and the assignment to the company would have been without effect, but because Stanford’s contract said the employee “agreed to assign” his rights, that required the employee to take a further action when an invention was actually made and the assignment he made to the collaborator after he made the invention but before he assigned to the university was therefore valid, even though it was in breach of his contractual agreement with Stanford (Stanford was left with a right to sue the employee for breach of contract). To avoid a loss of rights happening again because an employee breached an agreement they had already made, employers are now changing their employment agreements to read that the employee “hereby assigns” his rights to inventions made in the course of employment. UC is acting prudently in light of the Supreme Court decision to amend its agreements. (Note: while I’m a patent lawyer and represent a number of universities, I don’t currently represent UC.)
This is rather disappointing. I mean, I get some terms of sharing or partial credit, but it kind of sucks to see a university to try and take credit. I guess it all depends on the specific language, which isn’t really disclosed, because I do agree that if using University resources they have some claim on innovations, and it’s fair they should, but it also sucks to try and have a university become a ‘patent troll’.
This article is massive FAIL (aka standard fare at the DailyCal)
How can you neglect this case from last week when discussing “monetizing patents”:
http://www.wired.com/threatlevel/2012/02/interactive-web-patent/
The UC lost big in this one, but that was a good thing. Had the UC won, they’d be running around acting like the UC owned the WWW, and charging $$$ from everybody in sight.
(Also, fuck you for using the term ‘monetizing’, by doing so you are implicitly buying into the obscene profit driven world view of the administration, but there’s nothing new about that.
Moreover I don’t suggest that the UC shouldn’t bring in revenue from patents related to research generated at the university, only that the use of this term is a sad sign of the times.)