There has been some discussion going on about the recent
UC UW requirement that everyone sign a new patent acknowledgement outside work request form, this one with a present assignment in it, with the claim that this change is needed to respond to the Stanford v Roche decision and that it is not a change in policy. Here are seven points about all this. I can elaborate, but why?
UCUW requirement is clearly a policy change
- The change does not appear to have gone through proper processes for changing policy
- The change does not apply to folks still under
the pre-1997previously granted approvals UC policyanyway
- The change does not address the Stanford v Roche situation though it claims to
- The change does not address title uncertainty because scope is still totally open
- The change positions the present assignment in the wrong place–at
employmenta request for outside work–not even within scope of employment–instead of at the point of joining a controled-IP project
- The change damages the review and release portions of
UCUW policy by taking ownership prior to review UC’sUW’s prior practice was entirely consistent with Stanford v Roche UCUW like many other schools has failed to implement (f)(2)
- Implementing (f)(2) for each funding agreement would address Stanford v Roche
- The present assignment is so incompetently constructed it boggles the mind.
It would look like this:
You have chosen to join a project supported by the Federal government. As required by the patent rights clause in the funding agreement, the University requires you to make the following agreement to protect the government’s interest in subject inventions, that is, inventions that you may make within the planned and committed activities of the government-funded work:
I agree to disclose promptly in writing to my campus technology transfer office using the provided disclosure form each subject invention made under this contract in order that the University can comply with the disclosure provisions of the patent rights clause of the funding agreement, and I agree to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions.