UC Technology Transfer Program


Mission


One significant aspect of the University of California's public service mission is to ensure that the results of its research are made available for public use and benefit. This "technology transfer" is accomplished in many ways: through educating students, publishing results of research and ensuring that inventions are developed into useful products in the commercial marketplace for public use.

In pursuit of this latter objective, the University of California has maintained an active patenting and patent licensing program for over 40 years. The main objectives of the University patent program are:

  • to disseminate new and useful knowledge resulting from University research through the use of the patent system;
  • to license patents to industry in order to promote the development of inventions toward practical application for use by the general public;
  • to provide income for use in supporting further research and education, with a share of the income going to the inventor; and
  • to assure that patent-related obligation to sponsors of research are met.

Most new ideas generated through the University's research enterprise require considerable development before tangible research results are available for the public benefit. The U. S. patent system provides an effective means for promoting such development. The owner of a patent, or the owner's authorized licensee, is granted a limited period (20 years) of exclusivity to practice or use the invention. This period of exclusivity provides the patent holder with an opportunity to successfully develop products and exclude others from copying the technology and offering competing products. Product development takes considerable resources and patent protection provides assurances that the patent holder will be able to recoup this investment in the marketplace. The University does not have the resources to develop products, but by pursuing patent protection for its technology, the University can offer a commercial company the exclusive rights to the technology and the incentive to invest in product development.

In return for this limited right to exclude others, federal law requires the applicant for a patent to disclose details of the invention, thereby making new knowledge available to everyone and stimulating others to make further inventions.

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UC Patent Policy


To encourage and assist the University inventor in the use of the patent system in a manner that is equitable to all parties, the University adopted The University of California Patent Policy. The major objectives of the Policy are:

  • to disseminate new and useful knowledge resulting from University research through the use of the patent system;
  • to license patents to industry in order to promote the development of inventions toward practical application for use by the general public;
  • to provide income for use in supporting further research and education, with a share of the income going to the inventor; and
  • to assure that patent-related obligations to sponsors of research are met.

These objectives form the basis for the University of California Patent Policy. Briefly summarized, the Policy provides that The Regents obtain title to inventions or discoveries developed in the course of University employment, or with the use of University research facilities, or University-controlled funds. University employees and those using University facilities or funds under the control of the University agree to promptly disclose the conception or development of potentially patentable inventions to the University and to assign all rights to all such inventions and patents to the University. The University shares royalty income with the inventors.

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UC Patent Acknowledgment


University employees, persons not employed by the University but who use University research facilities, and persons who receive gift, grant, or contract funds through the University are all required to sign the University Patent Acknowledgment. Visiting scientists who are not employed by the University but who visit the University and use University funds and facilities are required to sign the University Patent Acknowledgment. The Patent Acknowledgment assigns inventions and patents to the University, except those resulting from permissible consulting activities without use of University facilities. Persons signing the Patent Acknowledgment agree to disclose promptly all potentially patentable inventions to the University.

University employees who engage in consulting, or in summer or incidental employment, outside the University are advised to consider any proposed agreements with industry carefully to ensure that no conflict exists with the University's Patent Acknowledgment.

Certain individuals are affected by special circumstances and may or may not be required to sign the Patent Acknowledgment. Students are generally not required to sign the University Patent Acknowledgment, but graduate and undergraduate students are required to sign the University Patent Acknowledgment if they are also University employees or if they participate in an extramurally-supported research project. Contact campus or laboratory Patent Coordinator or OTT Policy, Analysis and Campus Services (PACS) Group for questions about this policy.

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Technology Transfer Process


The following paragraphs provide an overview of the major steps in the University technology transfer process. Although the general model holds for the majority of inventions, details of the process may vary significantly from invention to invention.

Publication

The administration of the patent program is conducted so as not to delay the prompt publication of research results through normal academic channels. However, the timing of communications to the academic community or public can be a factor in the determination of patent rights. Prompt disclosure of an invention to the University allows the University and the inventor to plan the further communications regarding the invention so that U.S. and foreign patent rights will not be compromised.

United States patent law allows for the filing of a patent application within a one year grace period after the first "publication," the definition of which is highly technical under U.S. and foreign patent laws. Any one of the many and various forms of academic communications or public use may establish the date from which the one-year filing period is measured. The filing deadline is referred to as the "publication bar date". Public disclosure of an invention before filing a U.S. patent application will preclude patent rights in nearly all foreign countries.

Reporting Inventions

The technology transfer process begins with a disclosure of an invention. This is accomplished by submitting a Record of Invention Form. The Record of Invention provides information necessary for the University to evaluate patentability, inventorship, assignment obligations, the desirability of obtaining patent coverage, and patent obligations to research sponsors. This information is confidential and should be kept confidential by the inventor.

Under University policy, all potentially patentable inventions must be disclosed to the University. Potentially patentable inventions include any new or useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds, microorganisms, and the like), asexually propagated plant, or related improvement to any of the foregoing, or a new use for a known material or device. Such inventions should be reported as soon as possible after conception of the idea to your campus or laboratory Patent Coordinator.

Invention disclosures are reviewed to determine patent obligations owed to sponsors of research. The University Licensing Office reports such invention disclosures to the sponsor(s) as required. Because of the confidential nature of inventions, inventors should not report inventions directly to sponsors.

Evaluation of Inventions

A preliminary evaluation of the Record of Invention is made by the University's licensing officers. Factors such as patentability, benefit to the public, commercial potential, and patent rights of outside parties are considered in selecting cases to pursue further. The cost of patent prosecution, which may be tens of thousands of dollars for U. S. protection, and hundreds of thousands of dollars for foreign protection, and any impending publication bar dates are also considered. Complicated cases may take several months to review and analyze, and inventors are urged to keep the University licensing professional assigned to the invention apprised of any action they are contemplating, especially any publications or other public disclosures that might affect rights in the invention. The preliminary evaluation normally takes about 30 days.

If evaluation determines that a case qualifies for further consideration, marketing of the invention to find a qualified licensee is started. The goals of marketing are to assess commercial interest in the invention and to find qualified licensee(s). When sufficient information on the patentability and the commercial viability has been gathered and at a time determined by the licensing office, the case may be referred to a patent attorney to conduct a prior art search in the United States Patent and Trademark Office, render a preliminary opinion on patentability, or file a patent application. The attorney's preliminary opinion is normally issued within 60 to 120 days.

Filing Patent Applications

If it is decided to proceed with filing a patent application, the University Licensing Office authorizes and coordinates the process, and a patent attorney is engaged to draft the patent application. In doing so, the inventor works closely with the attorney to complete the application. The completed patent application is submitted in the inventor's name to the United States Patent and Trademark Office. At the time of filing of the application, the inventor executes legal documents assigning the patent to the University pursuant to the inventor's Patent Acknowledgment.

Once an application is filed, the patent process is a negotiation with the patent examiner in the United States Patent and Trademark Office. Normally a series of communications is required. During this phase, the patent attorney, the University Licensing Office, and the inventor work together to respond to the examiner's requests (called "Office Actions") and to seek the broadest possible protection for the invention. In general, about a year elapses before the first substantive action is taken by the examiner on the newly filed patent application. The whole process normally takes at least two years. Most applications filed by the University result in an issued patent.

Procedures for filing applications in foreign countries vary, and are very costly. The University Licensing Office recommends filing foreign patent applications only when the cost is likely to be recovered from a licensee. If a publication has been made after a U.S. patent application filing, a preliminary foreign filing date must be made within one year of the U.S. filing date in order to preserve rights in other countries.

Licensing

The purpose of licensing University inventions to industry is threefold:

  • to provide a mechanism for transferring the results of University research to the public for the public benefit;
  • to meet obligations to research sponsors; and
  • to generate royalty income for the benefit of the University and the inventor.

To pursue the licensing of an invention, the University Licensing Office contacts appropriate companies to assess their interest in obtaining a license to the patent rights (often licensing occurs before the patent issues.) Coordination of all licensing contacts serves the interest of both the inventor and the University, and information provided by the inventor regarding potential licensees is important to this process. If a private company contacts an inventor directly, the inventor should refer the company to the University Licensing Office. The University may permit evaluation of an invention by potential licensees prior to the issuance of a patent through use of a Secrecy Agreement executed by both the University and the potential commercial partner.

When an appropriate commercial partner is identified by the University Licensing Office, a license agreement is negotiated and executed on behalf of The Regents. Terms and conditions for licensing agreements vary, and are negotiated on a case-by-case basis. If a company needs time to evaluate an invention, an option agreement may be negotiated. An exclusive license may be granted in instances where all of the funding for the research was provided by one commercial sponsor, or when it is the best way to assure development of the invention. An exclusive license must provide for diligent development of the invention, and it usually includes a minimum annual payment.

In some instances a licensee may wish to engage a University inventor as an independent consultant to assist the licensee in transferring the technology from the academic to the private sector. The University does not usually become party to such consulting agreements. But, University policies on faculty and employee consulting apply to this situation, and the inventor should ensure that any such consulting agreements addressing patent or invention rights contain the phrase "subject to prior obligations to the University of California."

If an invention was conceived or reduced to practice in whole or in part under a research acknowledgment with a federal agency, the U.S. government also receives a royalty-free license for government use which is issued by the University.

Royalties

Royalty rates are negotiated as part of the license agreement. Rates depend on a variety of factors such as the value of the invention, the cost of commercializing the invention, and whether the license is exclusive or nonexclusive.

Proceeds from licensing income are shared between the inventor and the University pursuant to the University of California Patent Policy. When there are two or more inventors, each shares equally in the income unless the inventors agree on an alternative distribution. When a joint invention arises involving another institution, royalties are shared with that institution and/or its inventor. The University's patent income is used to finance the administration of the patent program and to support research.

Accounting for patent income and expenses is done by the University Licensing Office. Royalty payments are made to inventors in November of each year on amounts received in the previous fiscal year.

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Research Sponsor Rights


Patent Clauses in Contract and Grant Acknowledgments

Contract and grant acknowledgments with sponsors supporting University research projects or transferring materials for research purposes often contain patent provisions. Those provisions establish the rights of the various parties in potentially patentable inventions that may be developed during performance of the research contract. The existing patent obligations of all parties need to be fully understood so as to avoid conflicting obligations in proposed new acknowledgments.

The level of sponsor support generally determines the extent of patent rights available to the sponsor. In order to obtain a first right to negotiate an exclusive license, an industrial funding sponsor must fund all the costs of the University research, including overhead costs and a pro-rata share of the principal investigator's salary.

Patent Rights in Federally Funded Research

Federally funded research has special provisions on rights to inventions. Pursuant to federal statute, known as the Bayh-Dole Act, the University is entitled to take title to inventions arising from federally funded research, however, it must grant non-exclusive use rights to the Government. Also, if the University decides that it will not file a patent application on an invention or will not otherwise commercialize it, the University is required to return patent rights to the federal government.

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Releasing Rights to Inventors


Where no overriding sponsor rights exist, patent rights may be released to the inventor when the University elects not to file a patent application or to commercialize an invention or when the equity of the situation clearly indicates such release should be given. Even if outside sponsorship is involved, the inventors may be able to obtain rights. University Licensing Office personnel will assist the inventor in these procedures and in the procedures necessary for the inventor to obtain clear title from sponsoring federal agencies, if applicable.

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