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UC Berkeley

Campus Notes:

  Management of the UCB invention portfolio is split between OTT and the campus Office of Technology Licensing (OTL). Most UCB inventions in the OTT portfolio were disclosed prior to establishment of Berkeley’s OTL. OTT continues to receive some new UCB disclosures when multiple UC campuses are involved or when the technology is closely related to one already administered by OTT.

  For OTT-managed cases, the overall level of basic patent and licensing activity remained relatively stable from FY95 to FY96. The large number of secondary filings in FY95 were motivated by patent law changes related to GATT.

  More than 80% of income for OTT-managed cases in FY96 came from earned royalties on two commercialized inventions; Fluorescent Conjugated Probes earned $785,000 and Indicator Dyes for Calcium Ions earned $102,000. Total income for the OTT-managed portfolio decreased slightly in FY96.

  Three factors caused net legal expenses for the OTT-managed portfolio to increase by $123,000. First, foreign filings were pursued on some older cases that are licensed under terms that do not include direct cost reimbursement. Second, new U.S. applications were filed on two cases that are not yet under agreement but are being evaluated by research sponsors. Finally, the University spent $106,000 defending itself in litigation related to a 1986 UCB invention. These factors, combined with increases in other expenses and distributions, resulted in a $167,000 decrease in net income for the OTT-managed portfolio from FY95 to FY96.

  Campus-based activity is increasing as the OTL invention portfolio grows. The number of new inventions disclosed to OTL increased by 21% in FY96 and the number of new license agreements more than doubled. Some of these new agreements included monies to support ongoing campus research, and five new start-up companies were created based on licensed technologies. Three licensing agreements included equity terms.

  Because the OTL portfolio consists largely of younger inventions still in the developmental stage, most OTL income continued to come from fees rather than royalties. Adjusted gross income grew to $633,000 in FY96, nearly doubling over the previous year. An increase in reimbursed patent expenses contributed to a $192,000 drop in net legal expenses. These factors, coupled with maintenance of stable operating costs and increases in the inventor and State Share, resulted in a 53% reduction in the net loss incurred by OTL in FY96.

  This Annual Report generally excludes activity of OTL’s software program. However, the separate financial statement provided below shows that software income increased by $24,000 to $114,000 in FY96. This, coupled with a $44,000 reduction in operating costs, resulted in a net income of $37,000 for the program. Software disclosures have been declining for several years and, as a result, the focus of the software program has changed from the issuance of a high volume of site licenses to licensing for commercial development.

COPYRIGHT/SOFTWARE PROGRAM
(Thousands)


  FY95   FY96
FINANCIAL ACTIVITY
Income
Less: Expenses/Distributions
   Direct Expenses
   Inventor Shares
   State Share
   Operating Expenses
Campus Net Income

Software Earning Income
Authors Paid Shares


$ 90 

(1)
22
n/a
  94
$(25)

17
41


$114 

1
26
n/a
 50
$37

14
22

PORTFOLIO ACTIVITY


OTT
FY95
OTT
FY96
OTL
FY95
OTL
FY96
INVENTION
Inventions Reported
Total Active Cases

PATENT ACTIVITY
US Patent Applications Filed
   First Filings
   Secondary Filings
      Total

US Patents Issued
Total Active US Patents at FYE

LICENSING
Secrecy Agreements Issued
Letter/Option Agreements Issued
License Agreements Issued
Total Active Licenses at FYE
   Utility
   Plant


13
154



6
19
25

7
132


23
4
4

42
5


9
146



5
 0
5

8
131


36
3
4

40
5


48
231



12
38
50

17
59


66
25
8

27
n/a


58
278



12
12
24

18
77


108
21
18

42
n/a

FINANCIAL ACTIVITY
(Thousands)
OTT
FY95
OTT
FY96
OTL
FY95
OTL
FY96
Adjusted Gross Income
Less: Expenses/Distributions
   Net Legal Expenses
   Inventor Shares
   State Share
   Operating Expenses
Campus Net Income

Inventions Earning Income
# of Inventors Paid Shares

$1,114

143
411
140
   192
$ 228

32
42

$1,088

266
469
88
  204
$  61

20
41

$ 318

410
77
(42)
464
$(591)

33
62

$ 633

218
169
62
  464
$(280)

41
88

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