BILL ANALYSIS Ó
AB 744
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ASSEMBLY THIRD READING
AB 744 (John A. Pérez)
As Introduced January 23, 2012
Majority vote
BUSINESS & PROFESSIONS 6-0 APPROPRIATIONS 12-0
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|Ayes:|Hayashi, Allen, Butler, |Ayes:|Fuentes, Blumenfield, |
| |Eng, Hill, Ma | |Bradford, |
| | | |Charles Calderon, Campos, |
| | | |Chesbro, |
| | | |Gatto, Hall, Hill, |
| | | |Ammiano, Mitchell, |
| | | |Solorio |
|-----+--------------------------+-----+--------------------------|
| | | | |
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SUMMARY : Establishes the Office of Intellectual Property (OIP) for
purposes of identifying and providing policy guidance for state
agency management of intellectual property (IP) developed by state
employees or with state funds. Specifically, this bill :
1)Establishes the OIP in the Department of General Services (DGS).
2)Requires OIP to track IP generated by state employees and
state-funded research, commencing January 1, 2017, and every five
years thereafter.
3)Requires OIP to include the summary of state-owned property
referenced in a specific 2011 State Auditor's report in an IP
database before January 1, 2018, and to update that database every
five years thereafter.
4)Requires OIP to develop the following:
a) A database tracking IP that includes specified information;
b) A sample maintenance plan of an IP inventory;
c) Factors that state agencies should consider when deciding
whether to sell IP or license it to others;
d) An outreach campaign informing state agencies of their
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rights and abilities concerning IP created by their employees;
e) Sample invention assignment agreements that state agencies
can consider to secure rights to patentable items created by
their employees; and,
f) Sample language for licenses or terms-of-use agreements that
state agencies can use.
5)Provides that failure to include an item in the database does not
create any presumption regarding ownership.
6)Authorizes state agencies and departments, upon request, to share
records and information related to IP generated by state employees
and state-funded research, notwithstanding any other law.
7)Prohibits current and former OIP employees from divulging IP
information not expressly allowed or public.
8)Exempts IP or IP related agreements administered by University of
California (UC) Regents, subcontractors of the UC Regents, and
California State University Trustees from the provisions of this
bill, except when under a funding agreement with a state agency
for the performance of research.
9)Exempts IP agreements governed by the California Stem Cell
Research and Cures Bond Act.
10)Makes legislative findings and declarations.
EXISTING LAW permits various state agencies to enter into contracts
and agreements, create liabilities, and develop, own, and control
the use of IP developed by the state.
FISCAL EFFECT : According to the Assembly Appropriations Committee,
first-year General Fund costs in the range of $400,000 for the OIP
to develop guidelines, a database, outreach campaign, and sample
language, and ongoing costs in the range of $300,000 assuming three
staff for the office.
COMMENTS : According to the author, "To date there is no clear
accounting of what IP the state owns or the types of agreements
state agencies have entered into. Three reports on the issue have
expressed the need to establish a centralized IP tracking system.
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This disjointed system ultimately costs the state more money. As
technology continues to advance, state agencies without sufficient
knowledge of how to protect IP will become increasingly vulnerable
to unauthorized use and inability to capitalize on reduced contracts
costs or increasing revenue to the state. AB 744 sets up the
framework to determine what IP the state owns and informs state
agencies of their rights and abilities to protect the state's IP."
IP typically consists of copyrights, trademarks, patents, and trade
secrets. In November 2000, the Bureau of State Audits (BSA)
published the report, "State-Owned IP," which found that many state
agencies have insufficient knowledge about IP they own and
incomplete written policies on managing IP. This could result in
state agencies failing to act against individuals and entities that
inappropriately use the state's IP by profiting from products
developed at state expense, unauthorized use of trademarks, and
state patents. BSA recommendations include developing an outreach
campaign informing state agencies of their rights and abilities
concerning IP and establishing guidelines for state agencies to
administer their IP. The BSA report identified more than 113,000
items of state-owned IP across 125 state agencies, but estimated
that there were more.
Under this bill, OIP would be required to identify state IP, and
establish and periodically update guidelines for state agencies to
appropriately administer their IP. These guidelines would include
policies about when products should be considered IP, when products
should be placed in the public domain, and when agencies should sell
or license their IP. OIP would also be required to develop an
outreach campaign to help state agencies understand their rights
with respect to their IP and to develop sample agreements to
effectuate the state's rights to IP developed by state employees.
Analysis Prepared by : Joanna Gin / B.,P. & C.P. / (916) 319-3301
FN: 0003053