BILL NUMBER: AB 744	AMENDED
	BILL TEXT

	AMENDED IN SENATE  JUNE 7, 2012
	AMENDED IN ASSEMBLY  JANUARY 23, 2012

INTRODUCED BY   Assembly Member John A. Pérez

                        FEBRUARY 17, 2011

   An act to add Chapter 2 (commencing with Section 13988) to Part
4.5 of Division 3 of Title 2 of the Government Code, relating to
intellectual property.



	LEGISLATIVE COUNSEL'S DIGEST


   AB 744, as amended, John A. Pérez. Office of Intellectual
Property.
   Existing law permits various state agencies to enter into
contracts and agreements, create liabilities, and develop, own, and
control the use of intellectual property developed by the state.
   This bill would establish the Office of Intellectual Property in
the Department of General Services. This bill would authorize the
office to carry out various powers and duties relating to assisting a
state agency  or department  in the management and
development of intellectual property developed by  that
agency or department or an employee of that agency or department
  state employees or with state funding  ,
including, among other duties, developing a database of state-owned
intellectual property using specified data.
   This bill would, notwithstanding any other law, provide that state
agencies and departments may, upon request, share records and
information related to intellectual property generated by state
employees  and state-funded research   or with
state funding  with the office. This bill would also impose
certain restrictions on employees and former employees of the office
with respect to divulging certain information provided by state
agencies and departments regarding intellectual property.
   This bill would provide that these provisions do not apply to
intellectual property agreements administered by the Regents of the
University of California or to the Trustees of the California State
University, with exceptions, or to intellectual property agreements
governed by the California Stem Cell Research and Cures Bond Act.
 The bill would also provide that certain provisions of the bill
do not apply to intellectual property created by nonstate employees
or without state funding that is an expressive work, as defined.

   Vote: majority. Appropriation: no. Fiscal committee: yes.
State-mandated local program: no.


THE PEOPLE OF THE STATE OF CALIFORNIA DO ENACT AS FOLLOWS:

  SECTION 1.  Chapter 2 (commencing with Section 13988) is added to
Part 4.5 of Division 3 of Title 2 of the Government Code, to read:
      CHAPTER 2.  OFFICE OF INTELLECTUAL PROPERTY


   13988.  The Legislature finds and declares all of the following:
   (a) The state is home to many of the world's top research
universities, national laboratories, and leading-edge high-technology
companies that generate significant intellectual property.
   (b) It is in the interest of the state to ensure that the results
of state-funded research are promptly developed and protected and to
make the research available in the public domain, where appropriate.
   (c) The commercialization of technology developed with the
investment of taxpayer dollars in the form of contracts, grants, and
agreements could generate public benefit, including, but not limited
to, state revenues, favorable pricing, revenue sharing, reinvestment
into research, development of new technologies, the commercialization
of the product of state-funded research, and the jobs created from
these types of research.
   (d) It is in the interest of the state to facilitate, promote, and
enhance technology transfer programs that will facilitate the
transfer of technology into the marketplace for the public benefit.
   (e) The Legislature supports the use of efficient models to
develop and streamline infrastructures, policies, and processes for
the management of intellectual property developed under state funding
in order to stimulate economic development in the state while, at
the same time, minimizing costs of administering policies in this
area.
   (f) It is the intent of the Legislature that the rights of state
agencies to track and manage intellectual property created with any
state funds shall be interpreted so as to promote the benefit to the
public.
   (g) It is the intent of the Legislature that the Office of
Intellectual Property have access to information about intellectual
property created by state employees and by state-funded research,
consistent with state and federal laws and regulations governing
access to this information. 
   (h) The Legislature recognizes that the licensing of or
limitations on the use of intellectual property should accommodate
free expression and, therefore, the Office of Intellectual Property
should not develop policies or procedures to license or otherwise
limit the use of the state's intellectual property in expressive
works created by nonstate employees or without state funding. 
   13988.1.  The Office of Intellectual Property is hereby
established in the Department of General Services.
   13988.2.  Unless the context otherwise requires, the definitions
in this section govern the construction of this chapter:
   (a) "Department" means the Department of General Services.
   (b) "Databases" means compilations of data, typically generated
from research, sometimes from one source, but often combined from
many sources. 
   (c) "Expressive works" means a play, book, magazine, newspaper,
musical composition, audiovisual work, radio or television program,
work of art, work of political or newsworthy value, or an
advertisement or commercial announcement for any of these works, if
it is fictional or nonfictional entertainment, or a dramatic,
literary, or musical work.  
   (c) 
    (d)  "Intellectual property" means intangible assets
that are subject to statutory protection under applicable patent,
copyright, and trademark law. Intellectual property includes, but is
not limited to, inventions, industrial designs, identifying marks and
symbols, electronic publications, trade secrets, and literary,
musical, artistic, photographic, and film works. 
   (d) 
    (e) "Office" means the Office of Intellectual Property.

   (f) "State funding" shall not include funding from the California
Film and Television Tax Credit Program established pursuant to
Sections 17053.85 and 23685 of the Revenue and Taxation Code and
Chapter 7.75 (commencing with Section 5500) of Title 10 of the
California Code of Regulations. 
   13988.3.   (a)    The Office of Intellectual
Property shall perform all of the following functions: 
   (a) 
    (1)  Commencing January 1, 2017, and every five years
thereafter, track intellectual property generated by state employees
 and state-funded research   or with state
funding  . 
   (b) 
    (2)  Develop a database that includes, but is not
limited to, tracking intellectual property by category of protection,
date of creation, owner of intellectual property, grantee, state
agency or granting entity, sources of funding, and status of
licensing, including invention utilization updates. Failure to
include an item in the database does not create any presumption
regarding ownership. Prior to January 1, 2018, the database shall
include the summary of state-owned intellectual property found in the
California State Auditor's Report 2011-106 on intellectual property.
After January 1, 2018, and every five years thereafter, the database
shall be updated using information collected by the office pursuant
to this section. 
   (c) 
    (3)  Develop a sample maintenance plan of an inventory
of intellectual property. 
   (d) 
    (4)  Develop factors that state agencies should consider
when deciding whether to sell their intellectual property or license
it to others. 
   (e) 
    (5)  Develop an outreach campaign informing state
agencies of their rights and abilities concerning intellectual
property created by their employees. 
   (f) 
    (6)  Develop sample invention assignment agreements that
state agencies can consider if they believe it is necessary to
secure the rights to potentially patentable items created by their
employees on worktime using state resources. 
   (g) 
    (7)  Develop sample language for licenses or
terms-of-use agreements that state agencies can use to limit the use
of their intellectual property by others to only appropriate
purposes. 
   (b) This section shall not apply to the use of expressive works
created by nonstate employees or without state funding. 
   13988.4.  (a) Notwithstanding any other law, state agencies and
departments may, upon request, share records and information related
to intellectual property generated by state employees  and
state-funded research   or with state funding  with
the office.
   (b) Any employee or former employee of the office who has access
to or knowledge of the records and information described in
subdivision (a), shall not divulge or make known to any person not
employed by the office in any manner not expressly permitted by law
any particulars of these records or information  the public
disclosure of which   that  is restricted by law
 from public disclosure  , or represents a first publication
of research results, or information pertaining to patent rights that
would not otherwise be publicly available.
   13988.5.  (a) This chapter shall not apply to intellectual
property or intellectual property related agreements administered by
the Regents of the University of California, the subcontractors of
the Regents of the University of California, and the Trustees of the
California State University, except under a funding agreement from a
state agency for the performance of research.
   (b) This chapter shall not apply to intellectual property
agreements governed by the California Stem Cell Research and Cures
Bond Act (Chapter 3 (commencing with Section 125290.10) of Part 5 of
Division 106 of the Health and Safety  Code  
Code)  .