Technology Transfer Activity

Invention Reporting

During the twelve-month period ending June 30, 1997, a total of 716 inventions were disclosed to OTT and four campus technology transfer offices. This represents an 8% increase when compared with the 661 new inventions reported in FY96 (Exhibit 1).

Inventions in life science disciplines including medicine and biotechnology accounted for over 66% of the new inventions, while those from the physical sciences and engineering accounted for most of the balance. This pattern approximates the distribution of extramurally-sponsored research at the University. The distribution of newly reported inventions by campus is shown in Exhibit 2. Examples of recent disclosures from each campus appear in the figure on page 7.

*Exhibit covers all inventions disclosed to OTT and campus licensing offices. Inventions having inventors from more than one campus are counted multiple times, once for each campus with an inventor, thus the total number of inventions in this chart exceeds the 716 total inventions reported in the text. The category “other” includes inventions with a DOE Laboratory inventor reported to OTT.

Note: See Part 3 of this report for examples of DOE Laboratory Inventions.

As of June 30, 1997, OTT and campus offices were managing nearly 3,000 active inventions at various stages of the technology transfer process (Exhibit 3). Responsibility for these inventions was divided among OTT and the campus offices, as indicated in Exhibit 4.

* Includes primarily inventions with sponsor commitments and joint inventions managed by non-UC institutions.

Patent Activity

Two hundred six (206) US and 156 foreign patents were issued in FY97 on OTT and campus-managed inventions, which contributed to the 1301 US and 1235 foreign patents in the portfolio at fiscal year end. A patent is a form of intellectual property protection granted by the US or a foreign government that affords the patent holder the right to exclude others from making, using, or selling the patented invention for a defined period of time, generally for twenty years from the filing date of the patent. Both US and foreign patent rights often must be pursued for an invention in order to maximize the likelihood of successful commercialization. In addition, there may need to be several distinct patent filings in order to assure adequate patent coverage for all aspects of a new technology. Such secondary filings frequently result in the issuance of multiple patents related to a single initial invention.

Exhibit 5 presents patent activity at OTT and the campus offices in FY97, while Exhibit 6 shows the trend in patent filings over the past five years. The dramatic increase in secondary filings in FY95 was directly related to the ratification of the General Agreement on Tariffs and Trade (GATT). By initiating selected patent filings prior to a June 8, 1995 deadline established in the GATT agreement, the University was able to assure the longest effective patent term for certain inventions in its portfolio.

*An invention is counted only one time in the first foreign filings category regardless of the total number of countries in which foreign patent protection is eventually sought.

Licensing and Related Activity

When the University holds title to a patent, it can convey certain rights to other entities through a license agreement. A license agreement grants a licensee the right to practice a University invention in exchange for the licensee’s commitment to provide the resources required to further develop and commercialize the invention. Utility licenses generally cover useful processes, machines, manufactured items, or compositions of matter protected by utility patents. Most utility patents are licensed exclusively to a single company for a defined use, although non-exclusive licensing of utility patents sometimes occurs. In contrast, plant licenses cover asexually reproduced plant varieties that are licensed non-exclusively to multiple growers and distributors worldwide.

The provisions of the license define the rights and responsibilities of the two parties. In the typical license agreement, the licensee is granted the right to “practice” an early stage invention that is protected by a University patent. The University, in turn, receives the company’s commitment to commercialize the invention and pay the University agreed-upon fees, reimbursement of expenses and royalty payments. The specific terms of the agreement are determined through a complex negotiation process. During the negotiation period, a shorter-term letter or option agreement is sometimes used to confirm a company’s intent to negotiate a license, to outline each party’s rights and responsibilities, and/or to establish a company’s com-mitment to pay certain fees or patent costs incurred while the negotiation is underway.

In FY97, OTT and campus offices entered into 222 licenses and related revenue-generating agreements. As indicated in Exhibit 7, these included 95 utility license agreements, 35 plant license agreements, 36 option agreements, and 56 letter agreements. In addition, OTT and campus offices executed 1,009 secrecy agreements that enabled companies to receive confidential information necessary to evaluate technologies for commercial potential.

*Plant licensing for all campuses is managed by OTT.
**Includes three licenses executed in FY96 but not reported until FY97.

At the close of the fiscal year, OTT and campus offices were overseeing a portfolio of 461 utility and 371 plant licenses. In managing these agreements, the University must collect monies when due and monitor progress to ensure that the licensees exercise due diligence in develop-ing inventions toward commercial application.

Exhibit 8 shows the five year trend in the size of the portfolio of active utility and plant licenses.Technology Transfer Activity Each year, some agreements expire or are terminated based on licensees’ failure to fulfill agreement obligations. In general, the total number of active utility agreements has continued to rise. The number of plant licenses has fluctuated somewhat over several years due to the expiration of plant patents. In FY97, the introduction of a new strawberry varietal resulted in an increase in plant licensing activity.

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