BILL ANALYSIS �
SENATE JUDICIARY COMMITTEE
Senator Hannah-Beth Jackson, Chair
2013-2014 Regular Session
AB 609 (Nestande and Gatto)
As Amended June 11, 2014
Hearing Date: June 24, 2014
Fiscal: Yes
Urgency: No
TH
SUBJECT
State-funded research: State Department of Public Health
DESCRIPTION
This bill would require a grantee who receives funding, in whole
or in part, in the form of a research grant from the State
Department of Public Health to provide free public access to any
publication resulting from that research, as specified.
BACKGROUND
Federal law provides for the protection of intellectual property
rights through federal patent and copyright law. Generally
speaking, copyright law applies to "original works of
authorship," and includes works of art and other intellectual
works (such as computer programs, data compilations, and maps).
Copyright attaches to a work as soon as it is tangibly created,
and may be registered with the U.S. Copyright Office. Patent
law applies to inventions (such as scientific advances, devices,
and sometimes business processes). Generally speaking, a patent
must be obtained from the U.S. Patent and Trademark Office
before its owner has legal rights over the intellectual
property. Both copyright and patent law give the legal holder
of the copyright or patent the ability to control the use and
dissemination of the intellectual property. Additionally,
federal and state laws protect the registration of trademarks,
providing an owner with the right to exclude others from using a
specific mark or using a confusingly similar mark. California's
Trademark Law provides that trademarks may be registered with
the Secretary of State, although registration is not required to
protect them since trademark rights also arise under common law
(more)
AB 609 (Nestande and Gatto)
Page 2 of ?
as a result of actual use.
Considering the numerous types of intellectual property that may
be created by the State of California and its agencies, either
directly through the work of employees or through financing the
research of others, the state has a compelling interest in
ensuring that state created or state sponsored intellectual
property is adequately protected and appropriately used. In
November 2000, a report by the Bureau of State Audits (now the
California State Auditor) on State-Owned Intellectual Property
concluded:
[M]any state agencies are not sufficiently
knowledgeable about the intellectual property they
own. Lacking adequate knowledge of their intellectual
property ownership and rights, state agencies could
fail to act against those who use the State's
intellectual property inappropriately. Inappropriate
use includes unauthorized use of state trademarks and
improperly profiting on products developed at state
expense. Further . . . state-level direction for
administering intellectual property is limited. The
few state laws that address intellectual property do
so in a piecemeal fashion . . . [and] state agencies
have either no or incomplete written policies for
managing their intellectual property. (State-Owned
Intellectual Property (Nov. 2000)
(as
of June 17, 2014.)
That report further noted that although more than 113,000 items
of state-owned intellectual property were identified, the state
likely owns more. Finally, the report contained several
recommendations:
The Legislature should clarify state law to
specifically allow all state agencies to own and, if
necessary, formally register intellectual property
they create or otherwise acquire when it is deemed to
be in the public's best interest.
The Legislature should designate a single state agency
as the lead for developing overall policies and
guidance related to state-owned intellectual property.
. . .
AB 609 (Nestande and Gatto)
Page 3 of ?
Finally, the Legislature should consider whether the
interest of the public is best served when the State
uses standard contract language that essentially gives
contractors a free license to use and sell
intellectual property they develop for the State.
Following this report, ACR 252 (Mullin, Res. 190, Stats. 2004)
requested the California Council on Science and Technology
(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. In 2005, ACR 24 (Mullin,
Res. 111, Stats. 2005) requested the CCST to expand the scope of
the study group to include contracts, grants, and agreements
developed under Proposition 71 and to study how the
commercialization of technology developed with taxpayer dollars
in the form of contracts, grants, and agreements could generate
some public benefit. The final report in response to those
requests was published in January 2006. In February of 2006, AB
2721 (Mullin) was introduced to establish the Office of
Intellectual Property and to stipulate various intellectual
property policies for the State of California. That bill failed
to pass out of the Senate Governmental Organization Committee.
Subsequently, AB 1456 (Mullin) was introduced in March of 2007
to similarly establish the Office of Intellectual Property to
track intellectual property, develop an outreach campaign, and
various advisory materials. That bill was held in the Senate
Appropriations Committee. Finally, in 2012, the Legislature
passed AB 744 (Perez, Ch. 463, Stats. 2012) which gave the
Department of General Services various powers and duties to
assist state agencies in the management and development of
intellectual property developed by state employees or with state
funding. As part of its duties, DGS was authorized to develop a
database of state-owned intellectual property.
This bill would address the management of intellectual property
generated with state funding in a different fashion. It would
require, as a condition of receiving a research grant from the
State Department of Public Health, that a grantee ensure that an
electronic version of any peer-reviewed manuscript resulting
from the grant is either given to the Department or placed in an
approved publicly accessible database not later than 12 months
after its date of publication. For published materials that are
not peer-reviewed, the bill would require that the grantee
provide the manuscript to the Department not later than 12
months after the date of publication. This bill would require a
AB 609 (Nestande and Gatto)
Page 4 of ?
grantee to ensure that any publishing or copyright agreements
concerning Department-funded research include appropriate terms
allowing for the materials to become publicly available 12
months after publication, as provided, and would require the
Department to track information pertaining to published work
resulting from its research grants.
CHANGES TO EXISTING LAW
Existing federal regulations state that the federal government
shall obtain, except as provided, the entire right, title and
interest in and to any invention made by any government
employee: during working hours; with a contribution by the
government of facilities, equipment, materials, funds or
information, or of time or services of other government
employees on official duty; or which bears a direct relation to
or is made in consequence of the official duties of the
inventor. (37 Code Fed. Regs. Sec. 501.6.)
Existing state law provides that everything which an employee
acquires by virtue of his employment, except the compensation
which is due to him from his employer, belongs to the employer,
whether acquired lawfully or unlawfully, or during or after the
expiration of the term of his employment. (Lab. Code Sec.
2860.)
Existing law provides that an employment agreement which
provides that an employee shall assign, or offer to assign, any
of his or her rights in an invention to his or her employer
shall not apply to an invention that the employee developed
entirely on his or her own time without using the employer's
equipment, supplies, facilities, or trade secret information
except for those inventions that either:
relate at the time of conception or reduction to practice of
the invention to the employer's business, or actual or
demonstrably anticipated research or development of the
employer; or
result from any work performed by the employee for the
employer. (Lab. Code Sec. 2870.)
Existing law declares that 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. (Gov. Code Sec.
13988(b).)
AB 609 (Nestande and Gatto)
Page 5 of ?
This bill , the California Taxpayer Access to Publicly Funded
Research Act, would provide that a grantee that receives
funding, in whole or in part, in the form of a research grant
from the State Department of Public Health (Department) shall
provide for free public access to any publication of a
Department-funded invention or Department-funded technology, as
provided.
This bill would require, when the Department provides funding,
in whole or in part, in the form of a research grant, that the
grant include the following terms and conditions:
that grantees are responsible for ensuring that any publishing
or copyright agreements concerning submitted manuscripts fully
comply with this bill; and
that grantees shall report to the Department the final
disposition of the research grant, including, but not limited
to, if it was published, when it was published, where it was
published, when the 12-month time period expires, and where
the manuscript will be available for open access.
This bill would require the Department to retain information
regarding all issued research grants that resulted in published
works.
This bill would require, for a manuscript that is accepted for
publication in a peer-reviewed journal, that the grantee ensure
that an electronic version of the peer-reviewed manuscript is
available to the Department and on an appropriate publicly
accessible database approved by the Department, to be made
publicly available not later than 12 months after the official
date of publication. If the grantee is unable to ensure that
their manuscript is accessible on an approved publicly
accessible database, the grantee may comply by providing the
manuscript to the Department not later than 12 months after the
official date of publication.
This bill would require, for publications other than those
accepted for publication in a peer-reviewed journal, including
meeting abstracts, the grantee shall provide the manuscript to
the Department not later than 12 months after the official date
of publication.
This bill would state that grantees are responsible for ensuring
that publishing or copyright agreements concerning submitted
articles fully comply with the above provisions. This bill
would also provide that grantees are authorized to use grant
AB 609 (Nestande and Gatto)
Page 6 of ?
money for publication costs, including fees charged by a
publisher for color and page charges, or fees for digital
distribution.
This bill would provide that it shall not be construed to
authorize use of a peer-reviewed manuscript that would
constitute an infringement of copyright under the federal
copyright law. This bill would also provide that it shall not
apply to a grantee that receives funding for which there is an
existing publication requirement that meets or exceeds the above
requirements.
This bill would specify that it shall not apply to research
grants issued prior to January 1, 2015, and that it shall remain
in effect only until January 1, 2020.
COMMENT
1. Stated need for the bill
The author writes:
California taxpayers invest hundreds of millions of dollars
annually in research. State research funding includes
research and development by universities and state agencies,
as well as efforts such as the California Institute for
Regenerative Medicine and specific disease research programs.
Upon completion of a project, researchers write an article
explaining the results of the study, which is then submitted
to an academic journal for publication. Access to the
information contained in these research articles is an
essential component of our state's investment in science, and
should be widely shared with the public.
Unfortunately, most taxpayers - including students, medical
professionals, scientists, and entrepreneurs - cannot readily
gain access to all the research paid for with their taxes.
The majority of research funded with public dollars is
available only with costly journal subscriptions. Single
articles can cost up to $30 each, and some journals cost up to
$40,000 year. The 10-campus University of California system
spends nearly $40 million each year to buy access to academic
journals, even though many of the articles are written,
reviewed, and edited by UC professors as part of their
academic scholarly duties.
AB 609 (Nestande and Gatto)
Page 7 of ?
AB 609 will ensure that the public can access the published
results of California taxpayer-funded research for free. This
bill requires each researcher receiving a state-funded
research grant to submit an electronic copy of their research
publication to an appropriate digital repository no later than
twelve months after the work is published. This policy will
apply to peer-reviewed research publications that have been
supported, in whole or in part, [by research grants] from [the
State Department of Public Health], and not indiscriminately
to all public postsecondary faculty members receiving their
salary from the state. The completed research publications
will become openly accessible, free of charge, to the public.
2. Disposition of publicly financed research
Under existing law, employers, including California's public
universities, may control the disposition of certain types of
intellectual property developed during an employee's work hours
or using the employer's resources. Often, as a condition of
receiving a research grant, state, federal, and nonprofit
granting agencies will similarly place conditions on the
disposition of discoveries and intellectual property that result
from a grant. The federal government, for example, requires
businesses and nonprofits to retain ownership of inventions and
discoveries made under federally funded research and contract
programs, while also giving the government the license to
practice the subject invention. (See 35 U.S.C. Sec. 202.)
This bill would impose similar disposition requirements on
intellectual property - in the form of published research - that
results from research grants issued by the State Department of
Public Health. In effect, this bill would mandate that all
published research produced in part with Departmental funding
shall either be made publicly available through its placement on
an approved online repository or via submission to the
Department within 12 months of publication. Staff notes that
requiring publication of research partially funded with taxpayer
dollars is consistent with the Legislature's declared policy of
making the results of state-funded research available in the
public domain. (Gov. Code Sec. 13988(b).)
Staff also notes that this bill would replicate, in part, a
practice employed by the National Institutes of Health (NIH) for
research it funds through grants. Since 2008, NIH has required
investigators funded by the agency to submit an electronic
version of all peer-reviewed manuscripts to the agency no later
than 12 months after publication so that the results of all
AB 609 (Nestande and Gatto)
Page 8 of ?
NIH-funded research may be made publicly available. Grant
receiving institutions and investigators are tasked with
ensuring that any publishing or copyright agreements concerning
submitted articles comply with the policy, which mirrors an
element of this bill. Unlike this bill which does not specify a
particular online repository for grantees to submit materials
to, NIH requires its grantees to accession manuscripts in
"PubMed Central," NIH's own digital repository for materials
published within the biomedical and life sciences fields.
Support : Advancement Project; Association of College and
Research Libraries; Association of Research Libraries;
California Academy of Preventative Medicine; California
Associates of Susan G. Komen; California Association of
Physician Groups; California Association of Psychiatric
Technicians; Coalition of Open Access Policy Institutions;
Creative Commons; Electronic Frontier Foundation; Greater
Western Library Alliance; Howard Hughes Medical Institute;
Lieutenant Governor, State of California; National Association
of Graduate-Professional Students; Public Knowledge; Public
Library of Science; Scholarly Publishing and Academic Resources
Coalition; University of California; University of California
Student Association; 15 individuals
Opposition : None Known
HISTORY
Source : Author
Related Pending Legislation : None Known
Prior Legislation :
AB 744 (Perez, Ch. 463, Stats. 2012) See Background.
AB 1456 (Mullin, 2007) See Background.
AB 2721 (Mullin, 2006) See Background.
ACR 24 (Mullin, Ch. 111, Stats. 2005) See Background.
ACR 252 (Mullin, Ch.190, Stats. 2004) See Background.
Prior Vote :
AB 609 (Nestande and Gatto)
Page 9 of ?
Senate Committee on Governmental Organization (Ayes 8, Noes 0)
Senate Committee on Governmental Organization (Ayes 5, Noes 0)
(Failed, Reconsideration Granted)
Assembly Floor (Ayes 71, Noes 7)
Assembly Committee on Appropriations (Ayes 17, Noes 0)
Assembly Committee on Accountability and Administrative Review
(Ayes 8, Noes 2)
**************