BILL ANALYSIS                                                                                                                                                                                                    



                                                                  ACR 252
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          Date of Hearing:   August 12, 2004

                           ASSEMBLY COMMITTEE ON JUDICIARY
                               Ellen M. Corbett, Chair
                   ACR 252 (Mullin) - As Introduced:  July 8, 2004

                                  PROPOSED CONSENT
           
          SUBJECT  :  INTELLECTUAL PROPERTY

           KEY ISSUE  :  SHOULD THE LEGISLATURE REQUEST THE CALIFORNIA  
          COUNCIL ON SCIENCE AND TECHNOLOGY TO DEVELOP RECOMMENDATIONS ON  
          HOW CALIFORNIA SHOULD TREAT INTELLECTUAL PROPERTY CREATED UNDER  
          STATE CONTRACTS, GRANTS AND AGREEMENTS? 

                                      SYNOPSIS
          
          This non-controversial resolution, identical to AB 2319 (Mullin)  
          which was approved by the Committee, requests the California  
          Council on Science and Technology (CCST) to create a special  
          study group to develop recommendations on how the State should  
          treat intellectual property created under State contracts,  
          grants and agreements.  Among other things, the resolution asks  
          CCST to consider promoting the utilization of intellectual  
          property arising from State supported contracts, grants and  
          agreements and requests CCST to work with specified entities in  
          completing the study. 
           
           SUMMARY  :  Requests CCST to create a study group regarding the  
          State's intellectual property.  Specifically,  this resolution  :  

          1)Requests CCST to create a special study group to develop  
            recommendations to the Governor and the Legislature on how the  
            state should treat intellectual property created under state  
            contracts, grants, and agreements, including, among others: 

             a)   Promoting the utilization of intellectual property  
               arising from state-supported contracts, grants, and  
               agreements. 

             b)   Promoting collaboration between commercial concerns and  
               nonprofit organizations, including universities. 

             c)   Ensuring that the intellectual property made by  
               nonprofit organizations and small business firms is used in  








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               a manner to promote free competition and enterprise without  
               unduly encumbering future research and discovery.

          2)Requests CCST to work with its sustaining institutions, state  
            agencies, including the office of the Attorney General, and  
            other organizations, to complete this study, including the  
            Department of General Services, experts in contract and  
            licensing with the state and federal governments, research and  
            development practitioners, experts in technology transfer and  
            individuals representing the public interest.
           
           EXISTING LAW  provides for copyright, patent, trade secret and  
          trademark protection, under both Federal and State law. 

           FISCAL EFFECT  :   The resolution as currently in print is keyed  
          fiscal. 

           COMMENTS :  The substantive provisions of this non-controversial  
          resolution are identical to provisions contained in the author's  
          AB 2319, which was approved by this Committee on March 23, 2004  
          by a vote of 9-0.  The author writes that the resolution  
          addresses the key issue of the "[c]reation of uniformity in the  
          way the State addresses intellectual property (IP) made under  
          State contracts, grants and agreements.  Additionally, this  
          study will address the issue of multi-party collaboration and  
          ownership of the IP created, as often found in the academic  
          setting, which incorporates funding from many sources."  In  
          support, the author cites the following from the Bureau of State  
          Audits report entitled "State-Owned Intellectual Property:  
          Opportunities Exist for the State to Improve Administration of  
          Its Copyrights, Trademarks, Patents, and Trade Secrets" released  
          in November 2000: 

               Many state agencies are not sufficiently knowledgeable  
               about the intellectual property they own.  Intellectual  
               property consists primarily of copyrights, trademarks,  
               patents, and trade secrets.  Lacking adequate knowledge  
               of their intellectual property ownership and rights,  
               state agencies could fail to act against individuals  
               and entities that use the State's intellectual property  
               inappropriately.  Inappropriate use includes improperly  
               profiting from products developed at state expense,  
               unauthorized use of trademarks to imply state approval,  
               and claiming patent rights to state-developed  
               inventions.  The few state laws that address  








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               intellectual property do so in a piecemeal fashion. 

           Background on CCST.   In 1988, ACR 162 (Farr) established the  
          CCST and charged the council with, among other things, providing  
          direction for new scientific and technological activities,  
          stimulating the technology transfer linkage between the  
          university research setting and the private sector and analyzing  
          public policy issues and formulating policy recommendations in  
          the areas of science and technology.  According to its website,  
          CCST is a "nonpartisan, impartial, not-for-profit corporation  
          designed to offer expert advice to the state and provide  
          solutions to science and technology-related policy issues."  The  
          members of CCST include corporate CEOs, academicians, and  
          scientists.  CCST receives much of its support and resources  
          from its sustaining institutions, the University of California  
          system, the California State University system, California  
          Institute of Technology, Stanford University, University of  
          Southern California, and the California Community Colleges. 
           
          REGISTERED SUPPORT / OPPOSITION  :   

           Support 
           
          California Council on Science and Technology (sponsor)

           Opposition 
           
          None on file
           
          Analysis Prepared by  :    Saskia Kim / JUD. / (916) 319-2334