Patent rights, agreements and releases
Research Sponsor Patent Rights
Invention disclosures are reviewed to determine patent obligations owed to sponsors of research. The campus 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.
Contract and grant acknowledgments with sponsors supporting inventor 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 inventor’s research, including overhead costs and a pro-rata share of the principal investigator's salary.
Federally funded research has special provisions on rights to inventions. Pursuant to federal statute, known as the Bayh–Dole Act, UC 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 UC decides not to file a patent application on an invention or will not otherwise commercialize it, UC is required to return patent rights to the federal government.
Agreements with Industry
A license agreement is a contract between The Regents of the University of California and a third party in which The Regents’ rights to a technology (intellectual property and property rights) are licensed for commercial development and use. In exchange, UC and the inventors receive financial remuneration (generally in the form of upfront payments, milestone payments and royalties on the sale of products and service that make it to market). UC technology transfer offices enter into license agreements with both startup and established companies. Often times, prior to entering into a license agreement, a Letter of Intent (LOI) will be implemented. This is a short term, easy-to-execute agreement that allows a company to “lock up” the technology for a short period of time while negotiating the license, raising capital, etc.
Releasing Rights to Inventors
Where no overriding sponsor rights exist, patent rights may be released to the inventor when UC 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.