BILL NUMBER: AB 744 CHAPTERED
BILL TEXT
CHAPTER 463
FILED WITH SECRETARY OF STATE SEPTEMBER 23, 2012
APPROVED BY GOVERNOR SEPTEMBER 23, 2012
PASSED THE SENATE AUGUST 28, 2012
PASSED THE ASSEMBLY AUGUST 29, 2012
AMENDED IN SENATE AUGUST 24, 2012
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, John A. Pérez. 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 authorize the 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 department. This bill would
also impose certain restrictions on employees and former employees of
the 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, as defined, that is an expressive work, as
defined.
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. 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 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, 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. 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) "State funding" shall not include either of the following:
(1) 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.
(2) Any fee, tax, fine, or penalty assessed, collected, or
received by an air pollution control district or an air quality
management district, including any fee, tax, fine, or penalty that is
authorized by the state but is not remitted to a state agency.
However, state funding shall include a fee, tax, fine, or penalty
that is collected by an air pollution control district or an air
quality management district that is remitted to a state agency, such
as the State Air Resources Board.
13988.2. (a) The 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 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.
13988.3. (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 department.
(b) Any employee or former employee of the 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 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.
13988.4. (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. This chapter shall apply 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).