VII. Intellectual Property Policies and Practices

1. Current Patent Policy and Practices

1. A person must sign an agreement to assign inventions and patents to the University if the person

1. is a UC employee;
2. is not a UC employee but uses UC research facilities; or
3. receives gift, grant, or contract funds through UC



2. The following categories may be exempted from signing the "agreement to assign":

1. military personnel with assignment at the University;
2. teachers and lecturers on short-term appointments who will not use UC facilities for research; or
3. clinical appointees with no compensation from the University who will not use UC facilities for research.



3. A person may also be exempted from signing the "agreement to assign" in other circumstances when the mission of the University is better served by the exception (requires a written justification to UC Office of the President for approval with an endorsement by one of the Vice Chancellors).

4. Inventions and patents resulting from permissible consulting activities without the use of UC facilities are exempted from the assignment. In practice, the UCSD Technology Transfer Office (TTO) applies the following "quit claim" criteria:

1. invention did not result from work for UC;
2. invention was not derived, anticipated, or obvious from research and development or other official activities at UC; and
3. invention was made without the use of UC facilities



5. In the absence of obligations to sponsors, 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 so do, or
2. the equity of the situation clearly indicates such a release should be given, provided that no further research or development related to that invention will be conducted involving University support or facilities and provided that a shop right is granted to the University.



6. Under TTO's current practice:

1. an invention is released only after a thorough marketing effort is made; and
2. if released, the invention is released "as is" at the time of release, and UC retains a "shop right."



Policy does not currently prohibit the inventor from continuing to do research related to the invention that has been released back to the inventor at UCSD; the only prohibition is against the inventor developing the released invention at UCSD.

2. Recommendations to Clarify or Modify Current Patent Policy and Practices

1. Exempt certain short term visitors who use UC research facilities from signing the "agreement to assign" including visitors in the following categories:

1. collaborators in research with no UC funding of their salaries who have binding employment contracts with their employers requiring them to assign to their employers their inventions and patents as a condition of their employment; or
2. fee-paying users of highly specialized or unique UC research facilities with the character of a "lease" or "rent".



2. Delegate to the campus with the proper accountability to the UC Office of Technology Transfer the authority to grant exceptions to sign "agreement to assign" in circumstances when the mission of the University is better served by the exception. Endorsement by a Vice Chancellor will provide accountability and consistency.

3. TTO should continue vigorously educating the campus community on the policy, its interpretation, and its implementation.

3. Current Copyright Policy and Practices

1. The University owns copyrights of institutional work.

2. Ownership of copyrights to sponsored work, commissioned work, or contracted facilities work is governed by the contract.

3. The University does not claim copyright ownership to students' work and personal work.

4. Ownership of copyrights to scholarly/aesthetic works resides with the faculty author or artist, unless they are sponsored.

4. Recommendations to Clarify or Modify Current Copyright Policy and Practices

1. The definition of "scholarly/aesthetic work" needs clarification. It should be expanded to define the true meaning of "aesthetic" rather than relying on reference back to the Patent Policy for override.

2. The campus should support the system-wide task force on copyrights in its efforts to modernize and improve the current policy.

3. The current policy is not clear on the copyright of "recorded" lecture materials. Introduction of the concept of copyright ownership based on the "significant use of university resources" may help to clarify the issue.

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