BILL NUMBER: AB 744 AMENDED
BILL TEXT
AMENDED IN SENATE AUGUST 21, 2012
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 Department of
General Services 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
department . This bill would also impose certain
restrictions on employees and former employees of the office
department 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 and departments 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 Department of General
Services 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 state agencies and departments 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. 13988.1. 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)
(e) "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. 13988.2. (a) The
Office of Intellectual Property department shall
perform all of the following functions:
(1) Commencing January 1, 2015, and every 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 three years thereafter, the database shall be updated
using information collected by the office
department 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. 13988.3. (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 department .
(b) Any employee or former employee of the office
department 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 department 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. 13988.4. (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 . This chapter shall appl
y to a funding agreement from a state agency for the
performance of research , and these funding agreements shall be
subject to the model contract provisions developed pursuant to
Chapter 14.27 (commencing with Section 67325) of Part 40 of Division
5 of Title 3 of the Education Code .
(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).