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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