Prompted by the U.S. Supreme Court’s decision that Stanford University’s patent language was too vague to protect its claims, the University of California has reconfigured its patent policy.
All employees hired on or before Oct. 31, 2011, are required to electronically sign the new amendment, which asserts that faculty members will forfeit the rights of inventions made on UC property and facilities to the University. The Supreme Court case Stanford v. Roche was centered on professor Mark Holodniy’s HIV research, which was conducted with the support of Stanford and California research company Cetus Corporation. Holodniy had patent agreements with both Cetus and Stanford, which caused the university to lose its rights to the developments due to the imprecise contractual agreement.
The update in policy wording specifically ensures that the University will not unintentionally lose its patent rights over inventions and discoveries to other corporations because of unclear contractual language.
UC Office of the President Spokesperson Dianne Klein said the alterations affect roughly 225,000 University employees and visiting researchers systemwide, including many student employees.
However, Klein said the new standards do not represent a change in policy, but rather clarification of language used in the contract.
“Our patent policy hasn’t changed,” Klein said. “We have always required all faculty and staff to sign a patent acknowledgment or agreement at the time they are hired. This latest move is an amendment to clarify that the intent of the Patent Acknowledgment is to assign to the University the rights to inventions and patents made using University resources or facilities.”
In a statement to the UC Board of Regents, UCLA Anderson School of Management professor William Ouchi said assigning patents directly to the UC will provide a significant source of revenue for the campuses. This opportunity prompted UCLA to develop a nonprofit subsidiary to manage its patents, Ouchi said.
“This new entity will enable UCLA scientists to more efficiently move their inventions to commercialization, will build over time the capital necessary to provide proof-of-concept funding for promising inventions, will provide decision-making by experienced business executives along with campus leaders and will enable UCLA to pursue costly, multi-year and multinational patent applications,” Ouchi said.
Employees can sign the new contract via the current electronic signature process until Feb. 29.