UNIVERSITY OF CALIFORNIA
PATENT POLICY
Effective November 18, 1985
PREAMBLE
STATEMENT OF POLICY
PATENT RESPONSIBILITIES AND ADMINISTRATION
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.
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, 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, the following University of California Patent Policy is adopted.
II. STATEMENT OF POLICY
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. 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 Director of the Patent, Trademark, and Copyright 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:
(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.
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, for and in consideration of said assignment of patent rights, to pay annually to
the named inventor(s), or to the inventor(s)' heirs, successors, or assigns, 50% of the
net royalties and fees received by the University. Net royalties are defined as gross
royalties and fees, less 15% thereof for administrative costs, and less the costs of
patenting, protecting, and preserving patent 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.
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 shall be made annually in February from the
amount received during the penultimate calendar year. 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. In the disposition of any net income accruing to the University from patents, first
consideration shall be given to the support of research.
III. PATENT RESPONSIBILITIES AND ADMINISTRATION
A. Pursuant to Standing Order 100.4 (gg), the President has responsibility for all matters
relating to patents in which the University of California is in any way concerned.
B. The President is advised on such matters by the Intellectual Property Advisory Council
(IPAC), which is chaired by the Senior Vice President--Academic Affairs. The
membership of IPAC includes representatives from campuses, Agriculture and Natural
Resources, the Department of Energy Laboratories, and the Director of the Patent,
Trademark, and Copyright Office. IPAC is responsible for:
1. reviewing and proposing University policy on intellectual property matters
including patents, copyrights, trademarks, and tangible research products;
2. reviewing proposed exceptions to established policies; and
3. advising the President on related matters as requested.
C. The Senior Vice President--Administration is responsible for implementation of this
Policy, including the following:
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 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. Recommending to the President appropriate action on exemptions from the
agreement to assign inventions and patents to the University as required by
Section II. A., above.
