Amended in Assembly March 15, 2016

California Legislature—2015–16 Regular Session

Assembly BillNo. 2880


Introduced by Committee on Judiciary (Assembly Members Mark Stone (Chair), Alejo, Chau, Chiu, Cristina Garcia, and Holden)

February 25, 2016


An actbegin insert to amend Sections 13988.2, 13988.3, and 14615.1 of the Government Code, and to amend Section 10335 of the Public Contract Code,end insert relating to state intellectual property.

LEGISLATIVE COUNSEL’S DIGEST

AB 2880, as amended, Committee on Judiciary. State intellectual property.

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Existing law authorizes 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 and factors that state agencies should consider when deciding whether to sell their intellectual property or license it to others.

end insert
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This bill would authorize a public entity to own, license, and, if it deems it appropriate, formally register intellectual property it creates or otherwise acquires. The bill would provide that a public entity’s intellectual property rights would not preclude the public entity from disclosing any information otherwise accessible under the California Public Records Act and that those disclosures would not be construed as waiving any rights afforded under the federal Copyright Act of 1976.

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Under existing law, contracts by state agencies for services rendered to the state are, with certain exceptions, of no effect unless and until approved by the Department of General Services. Existing law imposes various requirements with respect to contracts for services rendered to the state.

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This bill would require state agencies to consider the processes, procedures, or policies developed by the department regarding the management and development of state intellectual property. For contracts entered into on or after January 1, 2017, the bill would prohibit a state agency from entering into a contract that waives the state’s intellectual property rights unless the agency, prior to execution of the contract, obtains the consent of the department to the waiver and would provide that a waiver of the state’s intellectual property rights by a state agency that violates this requirement would be deemed void as against public policy. The bill would also require the department to develop sample language for an advisory provision to that effect.

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Existing law exempts from the Administrative Procedure Act certain actions to maintain, develop, or prescribe processes, procedures, or policies by the Department of General Services that are required or authorized by the Legislature with respect to the general operations of the department or the awarding of state contracts.

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This bill would additionally exempt those actions taken with respect to the department’s above-described duties relating to the management and development of state intellectual property, as provided.

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Existing law requires the Department of General Services to, among other duties, track intellectual property generated by state employees or with state funding.

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This bill would declare the intent of the Legislature to enact legislation related to the rights to state-owned intellectual property.

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Vote: majority. Appropriation: no. Fiscal committee: begin deleteno end deletebegin insertyesend insert. State-mandated local program: no.

The people of the State of California do enact as follows:

P2    1begin insert

begin insertSECTION 1.end insert  

end insert

begin insertSection 13988.2 of the end insertbegin insertGovernment Codeend insertbegin insert is
2amended to read:end insert

3

13988.2.  

(a) The department shall perform all of the following
4functions:

P3    1(1) Commencing January 1, 2015, and every three years
2thereafter, track intellectual property generated by state employees
3or with state funding.

4(2) Develop a database that includes, but is not limited to,
5tracking intellectual property by category of protection, date of
6creation, owner of intellectual property, grantee, state agency or
7granting entity, sources of funding, and status of licensing,
8including invention utilization updates. Failure to include an item
9in the database does not create any presumption regarding
10ownership. Prior to January 1, 2018, the database shall include the
11summary of state-owned intellectual property found in the
12California State Auditor’s Report 2011-106 on intellectual property.
13After January 1, 2018, and every three years thereafter, the database
14shall be updated using information collected by the department
15pursuant to this section.

16(3) Develop a sample maintenance plan of an inventory of
17intellectual property.

18(4) Develop factors that state agencies should consider when
19deciding whether to sell their intellectual property or license it to
20begin delete others.end deletebegin insert others, end insertbegin insertincluding, but not limited to, the state’s best interest,
21maintaining public access, and the discouragement of unauthorized
22economic gain.end insert

23(5) Develop an outreach campaign informing state agencies of
24their rights and abilities concerning intellectual property created
25by their employees.

26(6) Develop sample invention assignment agreements that state
27agencies can consider if they believe it is necessary to secure the
28rights to potentially patentable items created by their employees
29on worktime using state resources.

30(7) Develop sample language for licenses or terms-of-use
31agreements that state agencies can use to limit the use of their
32intellectual property by others to only appropriate purposes.

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33(8) Develop sample language for an advisory provision stating
34that a waiver of the state’s intellectual property rights is subject
35to the approval of the department and that the lack of that approval
36renders an attempted waiver void as against public policy.

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37(b)

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38begin insert(c)end insert This section shall not apply to the use of expressive works
39created by nonstate employees or without state funding.

P4    1begin insert

begin insertSEC. 2.end insert  

end insert

begin insertSection 13988.3 of the end insertbegin insertGovernment Codeend insertbegin insert is amended
2to read:end insert

3

13988.3.  

(a) begin deleteNotwithstanding end deletebegin insertA public entity may own, license,
4and, if it deems it appropriate, formally register intellectual
5property it creates or otherwise acquires. A public entity’s
6intellectual property right shall not preclude the public entity from
7disclosing any information otherwise accessible under the
8California Public Records Act (Chapter 3.5 (commencing with
9Section 6250) of Division 7 of Title 1). A disclosure under the
10California Public Records Act (Chapter 3.5 (commencing with
11Section 6250) of Division 7 of Title 1) shall not be construed as
12waiving any rights afforded under the federal Copyright Act of
131976 (17 U.S.C. Sec. 101 et seq.).end insert

14begin insert(b)end insertbegin insertend insertbegin insertNotwithstandingend insert any other law, state agencies and
15departments may, upon request, share records and information
16related to intellectual property generated by state employees or
17with state funding with the department.

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18(b)

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19begin insert(c)end insert Any employee or former employee of the department who
20has access to or knowledge of the records and information
21described in subdivisionbegin delete (a),end deletebegin insert (b),end insert shall not divulge or make known
22to any person not employed by the department in any manner not
23expressly permitted by law any particulars of these records or
24information that is restricted by law from public disclosure, or
25represents a first publication of research results, or information
26pertaining to patent rights that would not otherwise be publicly
27available.

28begin insert

begin insertSEC. 3.end insert  

end insert

begin insertSection 14615.1 of the end insertbegin insertGovernment Codeend insertbegin insert is amended
29to read:end insert

30

14615.1.  

(a) Where the Legislature directs or authorizes the
31department to maintain, develop, or prescribe processes,
32procedures, or policies in connection with the administration of
33its duties under thisbegin delete chapter,end deletebegin insert chapter andend insert Chapter 2 (commencing
34with Sectionbegin delete 14650),end deletebegin insert 14650) of this part, Chapter 2 (commencing
35with Section 13988) of Part 4.5, orend insert
Section 6611 of the Public
36Contractbegin delete Code,end deletebegin insert Codeend insert or Part 2 (commencing with Section 10100)
37of Division 2 of the Public Contract Code, the action by the
38department shall be exempt from the Administrative Procedure
39Act (Chapter 3.5 (commencing with Section 11340), Chapter 4
40(commencing with Section 11370), Chapter 4.5 (commencing with
P5    1Section 11400), and Chapter 5 (commencing with Section 11500)).
2This section shall apply to actions taken by the department with
3respect to the State Administrative Manual and the State
4Contracting Manual.

5(b) To the extent permitted by the United States and California
6Constitutions, subdivision (a) also applies to actions taken by the
7department prior to January 1, 1999, with respect to competitive
8procurement in the State Administrative Manual and the State
9Contracting Manual.

10begin insert

begin insertSEC. 4.end insert  

end insert

begin insertSection 10335 of the end insertbegin insertPublic Contract Codeend insertbegin insert is amended
11to read:end insert

12

10335.  

(a) This article shall apply to all contracts, including
13amendments, entered into by any state agency for services to be
14rendered to the state, whether or not the services involve the
15furnishing or use of equipment, materials, or supplies or are
16performed by an independent contractor. Except as provided in
17Sections 10295.6 and 10351, and paragraphs (8) and (9) of
18subdivision (b) of Section 10340, all contracts subject to this article
19are of no effect unless and until approved by the department. Each
20contract shall be transmitted with all papers, estimates, and
21recommendations concerning it to the department and, if approved
22by the department, shall be effective from the date of approval.
23This article shall apply to any state agency that by general or
24specific statute is expressly or impliedly authorized to enter into
25the transactions referred to in this section. This article shall not
26apply to contracts for the construction, alteration, improvement,
27repair, or maintenance of real or personal property, contracts for
28services subject to Chapter 10 (commencing with Section 4525)
29of Division 5 of Title 1 of the Government Code, to contracts that
30are listed as exceptions in Section 10295, contracts of less than
31five thousand dollars ($5,000) in amount, contracts of less than
32five thousand dollars ($5,000) where only per diem or travel
33expenses, or a combination thereof, are to be paid, contracts
34between state agencies, or contracts between a state agency and
35local agency or federal agency.

36(b) In exercising its authority under this article with respect to
37contracts for the services of legal counsel, other than the Attorney
38General, entered into by any state agency that is subject to Section
3911042 or Section 11043 of the Government Code, the department,
40as a condition of approval of the contract, shall require the state
P6    1agency to demonstrate that the consent of the Attorney General to
2the employment of the other counsel has been granted pursuant to
3Section 11040 of the Government Code. This consent shall not be
4construed in a manner that would authorize the Attorney General
5to establish a separate program for reviewing and approving
6contracts in the place of, or in addition to, the program administered
7by the department pursuant to this article.

8(c) Until January 1, 2001, the department shall maintain a list
9of contracts approved pursuant to subdivision (b). This list shall
10be filed quarterly with the Senate Committee on Budget and Fiscal
11Review and the Assembly Committee on Budget. The list shall be
12limited to contracts with a consideration in excess of twenty
13thousand dollars ($20,000) during the life of the contract and shall
14include sufficient information to identify the provider of legal
15 services, the length of each contract, applicable hourly rates, and
16the need for the services. The department shall add a contract that
17meets these conditions to the list within 10 days after approval. A
18copy of the list shall be made available to any requester. The
19department may charge a fee to cover the cost of supplying the list
20as provided in Section 6253 of the Government Code.

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21(d) (1) In exercising its authority under this article, a state
22agency shall consider the processes, procedures, or policies
23developed by the department pursuant to Chapter 2 (commencing
24with Section 13988) of Part 4.5 of Division 3 of Title 2 of the
25Government Code.

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26(2) For contracts entered into on or after January 1, 2017, both
27of the following shall apply:

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28(A) A state agency shall not enter into a contract under this
29article that waives the state’s intellectual property rights unless
30the state agency, prior to execution of the contract, obtains the
31consent of the department to the waiver.

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32(B) An attempted waiver of the state’s intellectual property
33rights by a state agency that violates subparagraph (A) shall be
34deemed void as against public policy.

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35(d)

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36begin insert(e)end insert Contracts subject to the approval of the department shall
37also have the department’s approval for a modification or
38 amendment thereto, with the following exceptions:

39(1) An amendment to a contract that only extends the original
40time for completion of performance for a period of one year or
P7    1less is exempt. If the original contract was subject to approval by
2the department, one fully executed copy including transmittal
3document, explaining the reason for the extension, shall be sent
4to the legal office of the department. A contract may only be
5amended once under this exemption.

6(2) Contracts let or awarded on the basis of a law requiring
7competitive bidding may be modified or amended only if the
8contract so provides or if authorized by the law requiring
9competitive bidding.

10(3) If an amendment to a contract has the effect of giving the
11contract as amended an increase in monetary amount, or an
12agreement by the state to indemnify or save harmless any person,
13the amendment shall be approved by the department.

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14

SECTION 1.  

It is the intent of the Legislature to enact
15legislation related to the rights to state-owned intellectual property.

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