Chapter 11-500

Summary of Responsibilities

11-500 Contracts and Grants Officers

Contracts and Grants Officers are responsible for:

  • Negotiating and approving clauses in sponsored agreements consistent with standard clauses or which meet the general and specific Guidelines for patent clauses promulgated in Section 11-300 of the Contract and Grant Manual or other guidance;
  • Collaborating with RPAC if exceptions to standard clauses or other guidance are required;
  • Accepting patent clauses that vary from guidance with concurrence from RPAC;
  • Seeking the Chancellor's request for a review and approval by the Provost and Executive Vice President—Academic Affairs in cases where agreement with RPAC cannot be reached;
  • Obtaining written concurrence from the Principal Investigator and project staff, as necessary, when agreed-to patent clauses place additional obligations upon the Principal Investigator and project staff, such as pre- publication review by the sponsor or specific record-keeping or reporting requirements, or when such clauses limit the Principal Investigator's and other researchers’ normal patent rights, such as those entailing royalty-sharing or non-royalty bearing provisions; and
  • Advising Principal Investigators at the time of awards of the patent provisions set forth in the agreement supporting their project and of related University patent policies, regulations and procedures; and Submitting Interim and Final Reports of Patentable Inventions, if required, to the campus Authorized Licensing Office or IAS, as appropriate, for concurrence and forwarding to the extramural sponsor.

11-510 Research Policy Analysis and Coordination, Office of the President

The Office of the President Research Policy Analysis and Coordination is responsible for:

  • Updating the Contract and Grant Manual as Presidential patent policies are revised or issued;
  • Reviewing and approving exceptions;
  • Disseminating standard clauses for use with generic categories of sponsors, and sponsor-specific clauses approved by RPAC;
  • Negotiating with sponsors on behalf of the University when the objective is to secure systemwide master terms; and
  • Training Contracts and Grants Officers in intellectual property matters, with particular emphasis upon negotiation of patent clauses in sponsored agreements with commercial and non-profit sponsors.

11-520 Innovation Alliances and Services, Office of the President and Campus Authorized Licensing Offices

The campus Authorized Licensing Offices (or Innovation Alliances and Services if applicable) responsibilities include:

  • Preparing, reviewing and approving required reports of patentable inventions to sponsors;
  • Specifying acceptable and unacceptable patent terms and conditions;
  • Reviewing and approving clauses providing for royalty sharing with a non-profit, charitable sponsor;
  • Assisting Contracts and Grants Officers in developing and negotiating agreed-to variations, modifications, or exceptions appropriate to specific situations; and
  • Negotiating terms of proposed licenses with sponsors.

11-530 Principal Investigators

Principal Investigators, on behalf of themselves and project staff, are responsible for:

  • Providing a well -defined, specific, and complete work statement and budget for the project;
  • Apprising themselves and others of their obligations under contract and grants, using reasonable effort to avoid conflicting obligations to third parties, and bringing any potential conflicting obligations promptly to the attention of the Contract and Grant Office in the event such obligations develop;
  • In accordance with University of California Patent Policy, insuring that all individuals, including graduate students, visiting scientists and scholars, to be involved in work under a contract or grant, or who may use University research facilities, have executed a University Patent Acknowledgmentbefore doing so; or insuring that an appropriate exemption document is in the file of an individual who has not executed a Patent Acknowledgment.
  • Periodically reminding all individuals associated with work under a contract or grant of both University and sponsor patent obligations and submitting any periodic reports on patents, as required;
  • Promptly reporting all patentable or possibly patentable inventions directly to the campus Authorized Licensing Office or IAS, as applicable, in such form as may be prescribed; and
  • Preparing and submitting appropriate reports.