Technology Transfer Process
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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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