This summary provides guidance on the University of California patent rights to its potential industrial sponsors of research.
A written agreement including a defined specific-term protocol and detailed budget must be executed between University and Sponsor.
Subject to the conditions set forth below, research funding agreements may provide to the Sponsor a time-limited first right to negotiate a license to patentable inventions (other than plant patents) conceived and reduced to practice in the course of the sponsored research. All licenses will:
- be royalty-bearing, rates negotiable and based on general industry practice for the type of invention involved;
- provide for diligent development, commercial marketing, or use as one condition for retention of the license; and
- normally require reimbursement of patent prosecution and maintenance costs, a license issue fee, and appropriate minimum annual royalties.
The following categories have been established:
- When the Sponsor pays all direct and indirect costs (including an appropriate share of the Principal Investigator's salary) for the research to be undertaken, the Sponsor may be granted a first right to negotiate an exclusive or nonexclusive license for the life of any U.S. patent. Right to sublicense may be granted under an exclusive license only.
- When the Sponsor pays less than all direct and indirect costs in the form of money, expendable materials or supplies, or other substantial assistance, the Sponsor may be granted a first right to negotiate a nonexclusive license for the life of any U.S. patent.
- When the Sponsor pays only salary or stipend in support of a fellowship or research assistantship for an individual, the Sponsor may not be assured of a license but may be considered as a licensee.
For information, please contact the Campus Research Administration Office
Actions of The Regents of the University of California of 16 November 1956, 15 February 1957, and 17 February 1968.
(subject to change without notice)
(address change, January 1989)
(update, March 1995)