BILL NUMBER: AB 744	AMENDED
	BILL TEXT

	AMENDED IN SENATE  JUNE 18, 2012
	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 in the management and development of intellectual
property developed by 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 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.
   (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.
   (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:
   (1) Commencing January 1,  2017,   2015,
 and every  five   three  years
thereafter, track intellectual property generated by state employees
or with state funding.
   (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   three  years
thereafter, the database shall be updated using information collected
by the office pursuant to this section.
   (3) Develop a sample maintenance plan of an inventory of
intellectual property.
   (4) Develop factors that state agencies should consider when
deciding whether to sell their intellectual property or license it to
others.
   (5) Develop an outreach campaign informing state agencies of their
rights and abilities concerning intellectual property created by
their employees.
   (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.
   (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 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 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).