We write to you today about an impending project to amend the Patent Acknowledgment or Agreement that all faculty, staff, and others using University resources or facilities are required to sign when they come to the University of California.
The University Patent Policy requires all employees and other personnel who use University research resources and facilities to assign to the University rights to inventions and patents conceived or developed while employed by the University or while using University research facilities or UC gift, grant or contract research funds. This assignment allows the University to fulfill intellectual property obligations in agreements with research sponsors, industrial partners and others, including the federal government.
As a result of court decisions culminating in the United States Supreme Court decision earlier this year in the case Stanford v. Roche, UC’s rights to inventions and patents are at risk because of the Court’s interpretation of the language used in our current Patent Acknowledgment.
It is important that UC clarify that the true intent of the Patent Acknowledgment was and remains the assignment to the University of rights to inventions and patents that are made using University resources or facilities. This clarification can only be achieved by having individuals sign an amendment to the Patent Acknowledgment that states that the assignment takes place at the time of signing. This will ensure that the University can continue to meet its legal obligations, and properly manage its intellectual assets.
Therefore, UC is requiring all faculty, staff, appointees, visiting scholars and other relevant personnel to sign the amendment to the Patent Acknowledgment or Agreement. The University Patent Policy itself is not changing: the new language restores the original intent of the policy. The amendment does not apply retroactively, but helps to protect the University from future consulting or visitor arrangements which otherwise might inadvertently give rights away.
To obtain your signature on this amendment to the Patent Acknowledgment or Agreement you previously signed, the University has engaged an outside vendor (VR Election Services) to develop an email process that will enable you to electronically sign the amendment. That process will begin the week of November 28, 2011.
Within the next week you will receive detailed information from your Human Resources or Academic Personnel Office or other campus representatives about the Patent Amendment signature process. Additional information, including frequently asked questions, is available online at:
We know you understand the importance of this project to the University and ask that you promptly sign the amendment when you receive it.
