Why is the Patent Acknowledgment being amended?
Recent court rulings have brought into question one of the provisions contained in the current Patent Acknowledgment/Agreement (PA) that employees, appointees and guests sign upon accepting employment or participation as guests with the University of California; that provision may no longer absolutely guarantee the timely assignment of rights to the University as intended, placing UC's rights to inventions and patents at risk.
Therefore, in order to fulfill intellectual property obligations in agreements with research sponsors, industrial partners and others, including the federal government, UC must amend the Patent acknowledgment.
How is this acknowledgment different from the previous version?
The updated acknowledgment states more explicitly that the employee or visitor is assigning to the University rights to inventions and patents that are made using University resources or facilities. The clarification will ensure that the University can continue to meet its legal obligations, properly manage these assets and meet its responsibilities as a public trust under the State Constitution.
Who does this apply to?
This applies to all new University of California employees, appointees and guests, including emeriti, adjunct faculty, without salary appointees and other visitors.
What is the court case and what does it say?
In the Stanford v Roche case, the U.S. Court of Appeals held that a company's agreement with a university faculty member with language containing a present assignment of future inventions can give the company patent title to inventions arising in that faculty member's later university research.
Is this a change in policy?
No. There is no change in policy or in employee/guest rights and entitlements in intellectual property they may be associated with (what does this mean?).
Where can I find the updated form?
The enterable pdf form has been distributed to Chief Human Resources Officers, Academic Personnel Directors and Payroll Managers for use locally. It is also posted on the At Your Service for Administrators website at http://atyourservice.ucop.edu/administrators/employment/index.html
Why is the timing so critical?
In order to ensure all University personnel and guests are covered under the updated 2011 language, it is important that the updated form is used for new employees and guests starting on November 1, 2011. Personnel hired on or before October 31st will be asked to sign an Amendment to the Patent Agreement/Acknowledgment that they signed when last hired or appointed to the University.