Knowledge Transfer Office
Technology commercialization process
Technology commercialization is the process of transitioning technologies from the research lab to the marketplace. This activity is complimentary to the process of publishing research findings.
Part of UC’s public service mission is to ensure that the results of its research are made available for public use and benefit. This is accomplished in many ways: through educating students, publishing results of research and ensuring that inventions are developed into useful products and services for the benefit of the public. Since UC is not in the business of making and selling new products and services, it looks to partner with industry to commercialize these inventions.
The following technology transfer process pertains to patentable inventions.
What can be patented?
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. Utility patents are the most common type of patent and are provided for a new, nonobvious and useful:
- - Process
- - Machine
- - Article of manufacture
- - Composition of matter
- - Improvement of any of the above
In addition to utility patents, protection can be obtained for ‘ornamental design of an article of manufacture’ or ‘asexually reproduced plant varieties by design and plant patents’.In all cases, patentable inventions must also be:
- - Novel
- - Nonobvious
- - Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
- - Claimed by the inventor in clear and definite terms
What can’t be patented?
- - Laws of nature
- - Physical phenomena
- - Abstract ideas
- - Literary, dramatic, musical, and artistic works. These can be Copyright protected!
Inventions which are not useful, offensive to public morality, or are already patented are also not patentable.
The process begins by submitting a Record of Invention Form. This information is needed to evaluate the invention’s patentability, inventorship, assignment obligations, the desirability of obtaining patent coverage, and patent obligations to research sponsors. The form content is confidential and should be kept confidential by the inventor.
All potentially patentable inventions must be disclosed to the University as per UC policy. This includes invention of any new or useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds and microorganisms), asexually propagated plant, 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 technology transfer office or to your laboratory Patent Coordinator.
Patent administration 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 affect patent rights. Prompt disclosure of an invention allows UC and the inventor to plan the further communications regarding the invention so that patent rights will not be compromised.
On March 16, 2013, after the enactment of the America Invents Act of 2011, the United States moved from a First-to-Invent to a First-to-File system for awarding U.S. patents. In a first-to-file system, the right to the granting of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of actual invention. Talk with a Patent Coordinator early in order to ensure that appropriate protection can be pursued.
An assigned campus licensing officer evaluates each disclosed Record of Invention. Factors such as patentability and associate costs, public benefit, commercial potential, and outside parties patent rights affect the decision to pursue a given case. Complicated cases may take several months to review and analyze; inventors are urged to keep the assigned officer 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 an invention qualifies for further consideration, marketing begins to find a qualified licensee(s). The goal is to assess commercial interest in the invention. Assuming patentability and commercial viability appear positive, the case may be referred to a patent attorney to conduct a prior art search in the United States Patent and Trademark Office, to render a preliminary opinion on patentability, or to file a patent application. The attorney's preliminary opinion is normally issued within 60 to 120 days.
The assigned campus licensing officer authorizes a patent application filing and coordinates the process. A patent attorney is engaged to draft the patent application. 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 (USPTO). The inventor also executes legal documents assigning the patent to UC pursuant to the inventor's UC Patent Acknowledgment.
Once an application is filed, the patent process becomes a negotiation with an assigned USPTO patent examiner. During this phase, the patent attorney, the licensing officer, and the inventor work together to respond to the examiner's requests 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 newly filed applications. The whole process typically takes at least two years. Most applications filed by UC result in an issued patent.
Procedures for filing applications in foreign countries vary, and are expensive. The licensing officer recommends filing foreign patent applications only when the cost can be recovered from a licensee. 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 to Industry
The purpose of licensing UC inventions to industry is threefold:
- To provide a mechanism for transferring the results of UC research to the public for the public benefit;
- To meet obligations to research sponsors; and
- To generate royalty income for the benefit of UC and the inventor.
The assigned licensing officer contacts appropriate companies to assess their interest in obtaining a license to the invention’s patent rights. Licensing often occurs before the patent issues. The inventor may have industry contacts that could be potential licensees. If a private company contacts an inventor directly, the inventor should refer the company to the licensing officer. UC 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 UC and the potential commercial partner.
When an appropriate commercial partner is identified, 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 the invention’s development. An exclusive license must provide for diligent development of the invention, and it usually includes a minimum annual payment.
A licensee may wish to engage the inventor as an independent consultant to assist in transferring the technology from the academic to the private sector. UC does not usually become party to such consulting agreements. However, UC policies on faculty and employee consulting apply to this situation. 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 federal agency research award, the U.S. government also receives a royalty-free license for government use.
Revenues from licensing fees, royalties and equity — minus any unreimbursed legal expenses — are shared between the campus and the inventors. Revenues 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 UC pursuant to the UC 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, revenues are shared with that institution and/or its inventor. UC'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 technology transfer office. Revenue payments are made to inventors each year in November on amounts received in the previous fiscal year.