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• UC Patent Policy
• UC Copyright Policy
• See also Basic Copyright
Information
This
section contains information and documents relevant to faculty, students,
and staff who have questions about their rights and responsibilities
in the creation of or created intellectual property.
UC Patent Policy
On September 4, 1997, President Atkinson issued a new University of California
Patent Policy that will be effective October 1, 1997. The principal change
to the policy involves a new formula for the distribution of royalty income
generated by licensed inventions as explained in the
Summary of Changes. The President also transmitted
a new Patent Acknowledgment form to be signed
by all new employees and visitors as of October 1st. This form replaces
the University Patent Agreement.
Dear Colleagues:
The enclosed University of California Patent Policy will be effective October
1, 1997. This policy supersedes the November 18, 1985 policy, and rescinds the
April 16, 1990 revision to
that policy (a one-page Summary of Changes is
provided). Inventions reported on or after October 1, 1997 will be subject to
the new policy. Inventions reported before the effective date will be governed
by the November 1985 policy.
Also enclosed is a Patent Acknowledgment form to
be signed by all new employees as of October 1st. This form replaces
the "Patent Agreement."
The purpose of the new policy is to simplify and restructure the formula for
distributing royalty income from inventions, and to establish a new campus and
Laboratory research allocation. This policy is the result of extensive review
and discussion within the University community. Additional information regarding
implementation of the new policy will be published in the near future by the
Office of Technology Transfer.
The enclosed policy applies to all employees and others specified within the
policy, except individuals in the following collective bargaining units: Research
Support Professional, Technical, and Police. Until collective bargaining agreements
have been ratified by both parties in these units, affected employees will remain
subject to the requirements of the April 16, 1990 Patent Policy.
Sincerely,
Richard C. Atkinson President
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UC PATENT POLICY
(effective October 1, 1997)
I. PREAMBLE
It is the intent of the President of the University of California, in administering
intellectual property rights for the public benefit, to encourage and assist
members of the faculty, staff, and others associated with the University in the
use of the patent system with respect to their discoveries and inventions in
a manner that is equitable to all parties involved.
The University recognizes the need for and desirability of encouraging the broad
utilization of the results of University research, not only by scholars but also
in practical application for the general public benefit, and acknowledges the
importance of the patent system in bringing innovative research findings to practical
application.
Within the University, innovative research findings often give rise to patentable
inventions as fortuitous by-products, even though the research was conducted
for the primary purpose of gaining new knowledge.
The following University of California Patent Policy is adopted to encourage
the practical application of University research for the broad public benefit;
to appraise and determine relative rights and equities of all parties concerned;
to facilitate patent applications, licensing, and the equitable distribution
of royalties, if any; to assist in obtaining funds for research; to provide for
the use of invention-related income for the further support of research and education;
and to provide a uniform procedure in patent matters when the University has
a right or equity.
II. STATEMENT OF POLICY
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A. An agreement to assign inventions and patents
to the University, except those resulting from permissible consulting
activities without use of University facilities, shall be mandatory for
all 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. Such an agreement may be in
the form of an acknowledgment of obligation to assign. Exemptions from
such agreements to assign may be authorized in those circumstances when
the mission of the University is better served by such action, provided
that overriding obligations to other parties are met and such exemptions
are not inconsistent with other University policies.
B. Those individuals who have so agreed to assign inventions
and patents shall promptly report and fully disclose the conception and/or
reduction to practice of potentially patentable inventions to the Office
of Technology Transfer or authorized licensing office. They shall execute
such declarations, assignments, or other documents as may be necessary
in the course of invention evaluation, patent prosecution, or protection
of patent or analogous property rights, to assure that title in such
inventions shall be held by the University or by such other parties designated
by the University as may be appropriate under the circumstances. Such
circumstances would include, but not be limited to, those situations
when there are overriding patent obligations of the University arising
from gifts, grants, contracts, or other agreements with outside organizations.
In the absence of overriding obligations to outside sponsors of research,
the University may release patent rights to the inventor in those circumstances
when:
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(1) the University elects not to file a patent application and the inventor
is prepared to do so,
or
(2) the equity of the situation clearly indicates such release should be given,
provided in either case that no further research or development to develop that
invention will be conducted involving University support or facilities, and provided
further that a shop right is granted to the University. |
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C. Subject to restrictions arising from overriding obligations
of the University pursuant to gifts, grants, contracts, or other agreements
with outside organizations, the University agrees, following said assignment
of inventions and patent rights, to pay annually to the named inventor(s),
or to the inventor(s)' heirs, successors, or assigns, 35% of the net royalties
and fees per invention received by the University. An additional 15% of
net royalties and fees per invention shall be allocated for research-related
purposes on the inventor's campus or Laboratory. Net royalties are defined
as gross royalties and fees, less the costs of patenting, protecting, and
preserving patent and related property rights, maintaining patents, the
licensing of patent and related property rights, and such other costs,
taxes, or reimbursements as may be necessary or required by law. Inventor
shares paid to University employees pursuant to this paragraph represent
an employee benefit.
When there are two or more inventors, each inventor shall share equally in the
inventor's share of royalties, unless all inventors previously have agreed in
writing to a different distribution of such share.
Distribution of the inventor's share of royalties shall be made annually in November
from the amount received during the previous fiscal year ending June 30th, except
as provided for in Section II.D. below. In the event of any litigation, actual
or imminent, or any other action to protect patent rights, the University may
withhold distribution and impound royalties until resolution of the matter.
D. The DOE Laboratories may establish separate royalty distribution
formulas, subject to approval by the President. Distribution of the inventor's
share of
DOE Laboratory royalties shall be made annually in February from the amount
received during the previous fiscal year ending September 30th. All other elements
of
this policy shall continue to apply.
E. Equity received by the University in licensing transactions, whether in the
form of stock or any other instrument conveying ownership interest in a corporation,
shall be distributed in accordance with the Policy on Accepting Equity When Licensing
University Technology.
F. In the disposition of any net income accruing to the University from
patents, first consideration shall be given to the support of research.
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III. PATENT RESPONSIBILITIES AND ADMINISTRATION
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A. Pursuant to Regents' Standing Order
100.4(mm), the President has responsibility for all matters relating
to patents in which the University of California is in any way concerned.
This policy is an exercise of that responsibility, and the President
may make changes to any part of this policy from time to time, including
the percentage of net royalties paid to inventors.
B. The President is advised on such matters by the Technology Transfer Advisory
Committee (TTAC), which is chaired by the Senior Vice President--Business and
Finance. The membership of TTAC includes the Provost and Senior Vice President--Academic
Affairs, the Director of the Office of Technology Transfer, and representatives
from the campuses, DOE Laboratories, Academic Senate, the Division of Agriculture
and Natural Resources and the Office of the General Counsel. TTAC is responsible
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1. reviewing and proposing University policy on intellectual
property matters including patents, copyrights, trademarks, and tangible
research products;
2. reviewing the administration of intellectual property operations to ensure
consistent application of policy and effective progress toward program objectives;
and
3. advising the President on related matters as requested. |
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C. The Senior Vice President--Business and Finance is responsible
for implementation of this Policy, including the following: |
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1. Evaluating inventions and discoveries for patentability, as well as scientific
merit and practical application, and requesting the filing and prosecution
of patent applications.
2. Evaluating the patent or analogous property rights or equities held by the
University in an invention, and negotiating agreements with cooperating organizations,
if any, with respect to such rights or equities.
3. Negotiating licenses and license option agreements with other parties concerning
patent and or analogous property rights held by the University.
4. Directing and arranging for the collection and appropriate distribution
of royalties and fees.
5. Assisting University officers in negotiating agreements with cooperating
organizations concerning prospective rights to patentable inventions or discoveries
made as a result of research carried out under gifts, grants, contracts, or
other agreements to be funded in whole or in part by such cooperating organizations,
and negotiating with Federal agencies regarding the disposition of patent rights.
6. Approving exemptions from the agreement to assign inventions and patents
to the University as required by Section II.A. above.
7. Approving exceptions to University policy on intellectual property matters
including patents, copyrights, trademarks, and tangible research products. |
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UC Copyright Policy
The following document was taken from the University's Copyright Policy issued by the Office of the President and dated August 19, 1992.
POLICY ON COPYRIGHT OWNERSHIP
I. PREAMBLE
The creation of copyrighted works is one of the ways the University fulfills
its mission of contributing to the body of knowledge for the public good. The
University encourages the creation of original works of authorship and the free
expression and exchange of ideas.
II. PURPOSE AND SCOPE
This statement sets forth the University's Policy on the Copyright Ownership
for works produced at, by, or through the University of California, its campuses,
and the Department of Energy Laboratories. This Policy applies to University
employees, students, and other persons or entities using University facilities
or acting under contract with the University for commissioned works. This
Policy addresses ownership of copyright; it does not address ownership or
access to
the underlying research results or data, as covered in Academic Personnel
Manual, Section 020, University Regulation 4. It does not change or affect
obligations
under the University of California Patent Policy. If, in any case, the application
of the two policies gives rise to a conflict, the ownership principles of
the Patent Policy shall apply.
III. DEFINITIONS
For purposes of this Policy, the following definitions shall apply:
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A. Copyright
Copyright is the intangible property right granted by Federal statute for an
original work fixed in a tangible form of expression. Copyright provides
the owner with the following exclusive rights in a work: to reproduce, to
prepare derivative works, to distribute by sale or otherwise, to perform
publicly, and to display publicly. B. Designated Academic Appointees
Those University employees who have a general obligation to produce scholarly/aesthetic
works. Included are all appointees in the Professor series, In-Residence
series, and the Professional Research series. Appointees in other academic
titles may also be designated by the appropriate Chancellor or Vice President
as having the obligation to produce scholarly/aesthetic works.
C. Independent Academic Effort
Inquiry, investigation, or research carried out by designated academic appointees
to advance knowledge or the arts when the specific choice, content, course,
and direction of the effort is determined by the designated academic appointee
without direct assignment or supervision by the University. The general obligation
of designated academic appointees to produce scholarly/aesthetic works is
considered independent academic effort.
D. License
A contract in which a copyright owner grants to another permission to exercise
one or more of the rights under copyright.
E. Originator(s)
One who produces a work by his or her own intellectual labor. When there is
more than one originator, the ownership of each originator's contribution
shall be considered separately pursuant to this Policy.
F. Permissible Consulting Activities
Professional or scholarly services provided by University employees for compensation,
which do not interfere with regular University duties, do not utilize University
resources, and are not prohibited by terms of the University employment contract
or other applicable University agreements or policies.
G. Royalties
A payment made to an owner of a copyright for the privilege of practicing a
right under the copyright.
H. Sponsor
An organization or agency which provides funding, equipment, or other support
for the University to carry out a specified project in research, training,
or public service pursuant to a written agreement. Sponsors include Federal,
State, local, and other governmental entities as well as private industry,
educational institutions, and private foundations.
I. University Facilities
Buildings, equipment, and other facilities under the control of the University,
that are designated by the appropriate Chancellor, Laboratory Director, or
Vice President as requiring an advance agreement, from non-University personnel
and University personnel acting outside the scope of their employment, concerning
the disposition of any copyrighted works that are originated with the use
of these facilities. Such facilities normally include campus computer centers
and normally do not include University libraries. For purposes of this Policy,
the Department of Energy Laboratories are considered to be under the control
of the University.
J. University Funds
Funds, regardless of source, that are administered under the control, responsibility,
or authority of the University.
K. University Resources
University funds or facilities.
L. Work
Any copyrighted material, including literary work (written lectures are included);
musical work, including any accompanying words; dramatic work, including
any accompanying music; pantomimes and choreographic work; pictorial, graphic,
and sculptural work; motion pictures and other audiovisual work; sound recordings;
and computer software.
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IV. COPYRIGHT OWNERSHIP BY CATAGORY OF WORK
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A. Scholarly/Aesthetic Work
A scholarly/aesthetic work is a work originated by a designated academic appointee
resulting from independent academic effort.
Ownership of copyrights to scholarly/aesthetic
works shall reside with the designated academic appointee
originator, unless they are also sponsored works or contracted
facilities works, or unless the designated academic appointee
agrees to participate in a project which has special provisions
on copyright ownership pursuant to Section VI.C. of this
Policy.
B. Personal Work
A personal work is a work that is prepared outside the course and scope of
University employment (except for permissible non-University consulting activities)
without the use of University resources. Ownership of copyrights to personal
works shall reside with the originator.
C. Student Work
A student work is a work produced by a registered student without the use of
University funds (other than Student Financial Aid), that is produced outside
any University employment, and is not a sponsored, contracted facilities,
or commissioned work. Ownership of copyrights to student works shall reside
with the originator.
D. Sponsored Work
A sponsored work is a work first produced by or through the University in the
performance of a written agreement between the University and a sponsor.
Sponsored works generally include interim and final technical reports, software,
and other works first created in the performance of a sponsored agreement.
Sponsored works do not include journal articles, lectures, books, or other
copyrighted works created through independent academic effort and based on
the findings of the sponsored project, unless the sponsored agreement states
otherwise. Ownership of copyrights to sponsored works shall be with the University
unless the sponsored agreement states otherwise. Any sponsored work agreement
which provides for ownership by other than the University generally shall
provide the University with a free-of-cost, nonexclusive, world-wide license
to use and reproduce the copyrighted work for education and research purposes.
E. Commissioned Work
A commissioned work is a work produced for University purposes by individuals
not employed at the University or by University employees outside their regular
University employment. When the University commissions for the production
of a work, title normally shall reside with the University. In all cases,
copyright ownership shall be specified in a written agreement. Any such agreement
which provides for ownership by other than the University, generally shall
also provide the University with a free-of-cost, nonexclusive, world-wide
license to use and reproduce the copyrighted work for education and research
purposes.
F. Contracted Facilities Work
A contracted facilities work is a work produced by non-University personnel
or University personnel acting outside the course and scope of their employment,
using designated University facilities pursuant to a written agreement. Ownership
of copyrights to contracted facilities work shall be governed by the agreement
permitting use of the specified University facilities. Depending on the nature
or the facility and the nature and extent of the use, the agreement may specify
that ownership of resulting copyrights rests with the University. Or the
University simply may be paid a fee for use of the facility, or some other
arrangement may be appropriate.
G. Institutional Work
Except as otherwise provided in this Policy, the University shall own all copyrights
to works made by University employees in the course and scope of their employment
and shall own all copyrights to works made with the use of University resources.
H. Work Acquired by Assignment or Will
The university may acquire copyrights by assignment or will pursuant to the terms
of a written agreement or testament. The terms of such agreements should be consistent
with this Policy on Copyright ownership and other University policies governing
such acquisitions. |
V. COPYRIGHT OWNERSHIP OF JOINTLY ORIGINATED WORKS
Copyright ownership of jointly originated works shall be determined by separately
assessing the Category of Work of each originator pursuant to Section IV. above.
Rights between joint owners of a copyright shall be determined pursuant to copyright
law.
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VI. COPYRIGHT AGREEMENT AND NOTIFICATION
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A. Prior to any use of a University
facility by non-University personnel or by University personnel outside
university employment, a signed agreement shall be required that specifies
the disposition of copyrighted works. University employees using University
facilities for work outside university employment are responsible for
bringing this to the University's attention so that an appropriate agreement
for use can be negotiated. (See IV. F. above. )
B. Designated academic appointees participating in
sponsored projects must have a signed agreement on file with the designated
campus official which acknowledges: (a) individual and joint responsibility
to produce and deliver sponsored works to the sponsor, as required by
the terms of the sponsored project agreement, and/or to the University
when so requested, and (b) that copyright ownership of sponsored works,
unless reserved to the sponsor or otherwise provided for in the sponsored
project agreement, shall vest in the University. (See IV. D. above.)
C. Any designated academic appointee, other employee,
or student wishing to participate in a specified University project that
includes copyright ownership requirements, other than provided in Section
~. of this Policy, must sign an agreement indicating his or her concurrence
with that project's special conditions. Chancellors and Vice Presidents
shall designate special University project that shall require such special
copyright agreements.
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VII. RELEASE OF UNIVERSITY RIGHTS
The University may release its ownership rights in copyrighted works to the originator(s))
when, as determined by the University: (a) there are no overriding or special
obligations to a sponsor or other third party and (b) the best interests of the
University would be so served. Such release of ownership rights must be contingent
on the agreement of the originator(s) that no further effort on, or development
of, the work will be made using University resources and that the University
is granted a free-of-cost, nonexclusive, worldwide license to use and reproduce
the work for education and research purposes.
VIII. LICENSING AND ROYALTIES
The University may assign or license its copyrights to others. Royalty or income
received from such transactions may be shared with the originator(s) of such
works, as determined by the appropriate Chancellor, Laboratory Director, or Vice
President, taking into account the originator's contribution, the University's
costs, any provisions imposed by sponsors or other funding sources, and any other
applicable agreements concerning the copyright.
IX. COPYRIGHT RESPONSIBILITIES AND ADMINISTRATION: CHANCELLORS, LABORATORY DIRECTORS, AND VICE-PRESIDENTS
For copyrighted works under their respective jurisdictions, Chancellors, Laboratory
Directors, and Vice-Presidents, as appropriate, are authorized
to:
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A. Issue guidelines, implementing procedures, and supplementary local
polices consistent with this Policy. These may include directives regarding
licensure, disposition of royalty income, and other rights related to copyrights.
Copies of such guidelines, policies, and procedures shall be sent to the
President; |
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B. Identify campus, Laboratory, and other facilities or projects as having
special copyright assignment obligations, and issue guidelines and implementing
procedures regarding assignment of copyright to works produced using such
facilities or projects; |
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C. Register copyrights, accept copyrights from third parties, and sell,
assign, or grant licenses in the name of The Regents for any rights to
copyrights; and |
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D. Release University ownership rights to copyrighted works which are
in the name of The Regents of the University of California pursuant to
Section VII. |
See also Basic Copyright Information
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