Academic employees are required to submit annual reports on outside professional activities (including consulting) to department chairs or equivalent unit heads.For more information on the UC Policy: Academic Personnel Manual (APM), Section 25.
Outside consulting by faculty members or other university employees is a professional activity that provides the opportunity to confront “real world” challenges, identify and work with practicing industrial professionals, and contribute their own expertise to help fuel technological and economic development. However, there are several considerations and potential conflicts that must be examined before a faculty member enters into a binding consulting agreement. One issue concerns consulting contract clauses referring to future intellectual property rights.
When joining the university every new employee signs the University of California Patent Acknowledgment and agrees to abide by the University of California Patent Policy (Patent Policy) and the University of California Policy on Copyright Ownership (Copyright Policy). The Patent Policy and the Copyright Policy spell out the rights of the university to own, and the obligations of university employees to assign title and interest in, inventions or certain copyrights that may arise during their employment at the university. For work that is both patentable and copyrightable, the Patent Policy and the Patent Acknowledgment shall first apply. The Patent Acknowledgment contractually describes university employees’ duty to disclose their inventions to the university and the procedure to appeal for ownership under certain conditions for an exception to university ownership.
The Patent Acknowledgment is a contract between the employee and the university. It specifically states “I further acknowledge my obligation to promptly report and fully disclose the conception and/or reduction to practice of potentially patentable inventions to the University authorized licensing office.” At UC Davis, the “authorized licensing office” is UC Davis InnovationAccess. UC Davis InnovationAccess is responsible for receiving all the disclosures. The obligation of the employee to make prompt disclosures of inventions to the university is independent and continuing even if an invention is made in connection with outside consulting activities. All UC Davis employees, therefore, must promptly disclose ALL their inventions conceived or reduced to practice while they are employed by the university, regardless of whether in their personal opinions the inventions should be owned by the university. As discussed below, the university requirement to disclose all inventions does not imply that the university will claim title to all inventions.
Inventions made by university employees are usually the property of and owned by the university. One exception to this general rule is that the university will not assert ownership to an invention conceived and/or developed during permissible outside consulting activities, which does not involve the use or involvement of any university resources, including facilities, funds, employees and students, or university proprietary information that has not been published and is not available to the public. Outside consulting activities are allowed only if the activities do not interfere with the university employee’s primary obligations to the university to perform his/her university duties and to satisfy his/her responsibilities to the university.
For faculty members, such primary duties and responsibilities shall include on-going research, teaching, mentoring and supervising students, and services to selected committees. Nonetheless, even if the university employee believes he/she has conceived or reduced to practice a potentially patentable invention under permissible consulting and without the use of any university resources and therefore the university should not have ownership of the invention, the university employee is still contractually obligated to disclose the invention to the Transfer Services office. The university employee must then present the supporting facts stating why the University’s claim to ownership should be exempted.
Upon receipt of the disclosure of the invention and the written representations by the university employee inventor, UC Davis InnovationAccess will then make a determination and notify the inventor whether the university is asserting ownership to the invention. The university employee should not assign title and interest in any invention of which he/she is an inventor to any third party before he/she discloses the invention to UC Davis InnovationAccess and receives a letter of determination by which the university disclaims ownership to the invention.
Copyrights to original works created in the course and scope of permissible consulting without the use of university resources will not belong to the University. If university resources are used, however, the university may have an interest in resulting copyright-protected materials and should be consulted in advance of making any commitment to transfer copyrights.
Many outside industry consulting contracts purport to take precedence over a university employee’s primary and continuing obligations to the university. These arrangements are inconsistent with the university employee’s primary duty to the university and the employee should take care to avoid such contracts. In particular, university employees should not sign a consulting agreement that precludes the disclosure to the university of any inventions they make or conflicts with their duty to assign inventions to the university. A consulting agreement between the university employee (e.g. a faculty member) and an outside consulting employer is a private and personal agreement and it is important that the employee seeks legal counsel to help review and negotiate the agreement.
For more information on policies and obligations to the university for faculty consulting with industry please see Consulting for Industry.