The New (?) Patent Agreement between UC and its Faculty: has there been enough consultation?

CUCFA does not yet have a position on either whether the substance of the recently modified Patent Agreement actually changes the terms of the previous agreement, nor on whether there has been sufficient consultation with the Academic Senate. Questions have been raised by several faculty, however, about both these issues. In this ongoing controversy, here are the facts about Academic Council consultation. We invite responses from faculty about these issues.

The Systemwide Academic Council discussed this issue on November 23, 2009. The minutes from that meeting are online at:

The relevant bit is pasted here:

VIII. University’s Patent Policy

ISSUE: A recent lawsuit against Stanford University, Stanford v. Roche, highlighted inadequacies in the language of UC’s current patent acknowledgment form. UCOP drafted changes and asked UCORP to respond to the proposed changes. The key question is whether all faculty should be obligated or required to sign a new one.

DISCUSSION: A member stated that the University most probably could not impose a new requirement, but it could make it a condition of applying for grant money or contracting with an external company. A member reiterated UCORP’s suggestion that any request to sign a new acknowledgement would be more effective if it was issued locally, by a dean or department chair, rather than from a chancellor or the president.

ACTION: Council unanimously endorsed UCORP’s letter.

The agenda from that meeting does not link to any useful background information:

That November 23 discussion formed the basis of a letter from then Academic Council Chair Henry Powell to UC Vice President Steven Beckwith concurring with the proposed changes. Later, in 2011, Academic Senate Chair Bob Anderson sent a letter to Provost and EVP Larry Pitts that quoted the 2009 letter. The packet of letters also included a letter from then UCORP chair Greg Miller to then Academic Council Chair Harry Powell.

The UCOPR meeting minutes are online at:

The relevant text is:

IX. Patent Acknowledgment Changes

Martha Winnacker, Executive Director, Systemwide Academic Senate

ISSUE: A recent court decision, Stanford v Roche, holds that Stanford’s patent acknowledgement form does not defend the University’s claim on its researchers’ inventions because the language states that the researcher “will”, at some undisclosed point in the future, assign the rights to the University; since no second document was ever submitted, Stanford lost its claim on the invention in question. UC’s patent acknowledgement similarly states “will”; it is proposed to add “and hereby do” to the form signed by new hires. Requiring incumbent researchers to sign new forms, however, is more difficult.

DISCUSSION: Members inquired why the location of the research was not dispositive regarding ownership, and Ms. Winnacker indicated that the court focused on the specific language of the contract narrowly. Members also asked whether this decision could have ripple effects on consulting. Ms. Winnacker responded that such was unlikely. Members noted, though, that the decision could reasonably impact other areas of intellectual property, including software, publications, creative works, etc. It was suggested that clarifying language accompany any revised agreements.

Members wondered what mechanisms are in place to investigate current researchers’ efforts so that UC is not involved in a similar case. Others cautioned that any new agreements be generous enough not to chill extramural funders. All agreed that any revised agreement must be rolled out smoothly, preferably not framed as a condition for continued employment, especially in light of the already heavy compliance onus placed on research faculty. Accordingly, members suggested that new agreements be rolled out by department chairs, who can do so in person and in order of their researchers most likely to need an updated agreement, which may further be indicated by annual OPA disclosures. For faculty whose research carries less-pressing patent potential, a roll-out strategy might be to wait until merit reviews cycle up.

ACTION: UCORP will continue to monitor this issue.

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