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OFFICE OF TECHNOLOGY MANAGEMENT

FREQUENTLY ASKED QUESTIONS ABOUT OTM

The section below is meant to provide answers to commonly asked questions about intellectual property issues & technology management. We encourage you to visit our website (http://www.otm.ucsf.edu/) or to contact us directly (415-353-4472) if you have more specific inquiries. Our staff will be more than happy to assist.

Why should I disclose an invention to the OTM?

Under your Patent Agreement with the University, you have an obligation to disclose your inventions, whether or not patentable, to the OTM for evaluation. The development and commercialization of your invention may provide significant public benefit and generate income for research and education. A licensee of your invention may wish to sponsor research in your laboratory. Also, inventors receive a portion of net income generated by their inventions.

I've made a discovery. Should I submit an invention disclosure form?

If you are not sure, kindly call a licensing professional at the OTM to discuss your invention. If you have evidence of a discovery that may have practical utility and represent an attractive business opportunity, you will be asked to complete an invention disclosure form, sign it, have your signature witnessed (do not use a notary), and send it to the OTM by campus mail (box 1209).

I've been working on something interesting. When should I disclose an invention to the OTM?

The ideal time to disclose an invention to the OTM is after it has been reduced to practice and before it has been published or publicly presented. If you disclose an invention to the OTM after it has been published or publicly presented, there is no longer an opportunity to obtain patent rights outside the US. The opportunity to obtain patent rights in the US ends on the first anniversary of the date of the first publication describing the invention.

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I've been working on something in an outside collaboration. Should I disclose to the OTM?

Yes. Please disclose to the OTM, even if your collaborator offers to handle the invention. It is safe to assume that each inventor has an obligation to inform his or her employer. The employer of each inventor may have ownership in the invention. We are pleased to coordinate with other joint owners of inventions. For example, if the joint owners of an invention are academic institutions, we negotiate how the invention will be managed. Not-for-profit joint owners usually establish an inter-institutional agreement that assigns responsibility for managing the invention to one of the institutions and specifies how income and expenses will be shared among the institutional owners. If a joint owner of an invention is a commercial entity, we investigate the possibility of licensing the university's rights to the commercial joint owner.

What will the OTM do with my invention disclosure?

In those cases where the OTM deems the invention to represent an attractive business opportunity, the licensing professional responsible for the case will try to find a good way to commercialize the invention for the benefit of the public while generating university income for education and research. After discussing the invention with the inventor(s), the licensing professional will first contact prospective licensees with a non-confidential description of the invention. A prospective licensee may then sign a confidentiality agreement prepared by the OTM in order to review confidential information about the invention, such as a scientific manuscript, drawings, working prototype, etc. The strategy for commercialization may or may not involve seeking patent protection and licensing patent rights.

Will every invention disclosed to the OTM result in a patent application?

No. The substantial expense of obtaining patent rights is only justified when the patent rights are demonstrably valuable to a potential licensee. The licensing professional will determine whether and when the filing of a patent application is appropriate in order to commercialize the invention. Typically, a potential licensee accepts responsibility for reimbursing the university for patent costs before the patent application is filed. Patent rights are most important when a licensee requires market exclusivity in order to justify the risk and expense of developing a product based on the invention.

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What is a license?

With a license, the University grants a company permission to use an invention that belongs to the University for commercial purposes, subject to certain terms and conditions that typically include fair compensation to the University based on the estimated value of the invention. A license may be exclusive, co-exclusive or non-exclusive. A license may be restricted to a particular field of use and/or geographical area.

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If the university licenses my invention to a company, will I still be able to do research on it?

Yes. Our license terms always provide that the University retains the right to use the invention for educational and research purposes.

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Who is an inventor?

Unlike authorship of a scientific publication, inventorship is a matter of law and a patent that fails to name the correct inventors may be ruled invalid. The law does not recognize individuals as inventors who merely follow someone else's instructions. The lawful inventors on a patent depend on what is specifically claimed in the patent as written. Because patent claims may change while the patent application is undergoing review by the patent office, inventorship may change as well. For the purpose of your invention disclosure form, simply name any individual who has made a creative contribution to the invention. When necessary, the OTM will initiate a formal inventorship determination using outside patent counsel.

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What if someone who is not a UCSF employee makes a creative contribution to my invention?

It is safe to assume that each inventor has an obligation to inform his or her employer of the invention. The employer of each inventor may have ownership in the invention. Each owner of an invention has an undivided interest in the intellectual property, which is called a joint invention. Sometimes, two or more universities own an invention jointly. In such cases, the universities typically establish an inter-institutional agreement that assigns to one university the responsibility for managing and licensing the invention on behalf of all the joint owners and provides for sharing costs and income among them. However, in the absence of any such agreement, under the law each co-owner is free to license its rights in the invention independently of the other co-owner(s), without notifying them, seeking their permission, or sharing income with them.

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What are "property rights?"

Tangible materials created by UCSF scientists may be useful and commercially important although not necessarily patentable. Examples of such materials include cell lines, transgenic mice, plasmids, software disks, and integrated circuit masks. The university has property rights related to such materials. Unlike patent rights or copyrights, property rights do not expire. A "license" for property rights is called a bailment. A bailment may be exclusive or non-exclusive. A bailment may be restricted to a particular field of use and/or geographical area. An exclusive bailment must be reviewed and approved by the Chancellor.

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Are licenses to property rights worth less than licenses to patent rights?

Sometimes, but not necessarily. Some biological materials are quite valuable and if they are difficult or too time-consuming for a user to reconstruct from the public record, they may be licensed as University property under fairly attractive terms in the absence of patent rights.

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Why do I need to use an MTA when I give materials to other researchers?

Material Transfer Agreements protect the provider of materials. In addition to addressing liability issues, MTAs help to maintain the University's property rights associated with materials "outbound" to other researchers. The OTM is responsible for negotiating Material Transfer Agreements on behalf of the campus for transferring materials other than human specimens and derivatives thereof, contact the Industry Contracts Division of the Office of Sponsored Research. Please obtain an authorized signature from the OTM in order to transfer material from UCSF to any for-profit entity. An authorized signature from the OTM is not needed for transferring materials from UCSF to a non-profit educational or research institution, but you should supply the OTM with a copy of the fully-executed MTA for its files.

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Why do companies require an MTA to provide materials to UCSF scientists?

Material Transfer Agreements protect the provider of materials and address liability, confidentiality, and intellectual property issues. A company's proprietary materials often represent a significant investment for the company and its shareholders. Of necessity, companies seek to protect their property rights while at the same maximizing the value of those assets for their shareholders. In return for providing materials for research, a company typically requires access to the experimental results, and a limited time period to review your manuscripts, abstracts, and other publications pre-publication to ensure that the company's confidential information and intellectual property are protected. Companies also typically require an option to negotiate commercial rights to future inventions, if any, that arise from your use of their materials. The Industry Contracts Division of the Office of Sponsored Research is responsible for negotiating reasonable terms and completing MTAs for in-bound materials.

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What is a provisional patent application?

A provisional patent application makes it possible for an inventor to establish a priority date for patent purposes. A provisional patent application is not examined by the patent office for patentability and must be converted to a regular application within one year. However, to secure a priority date, the provisional application must meet the same disclosure requirements as a regular application. Hence, in practice, a provisional application should be drafted exactly as a regular application, and since attorney drafting-time constitutes most of the cost of a patent application, a properly drafted provisional application will cost about the same as a regular application. The most significant practical difference is that the 20-year life of a patent begins at the time a regular application is filed; hence, a provisional application can be used to shift forward, by one year, the 20-year patent term. Doing so would be advantageous for a highly valuable invention that was expensive to commercialize because a licensee would get an additional year of patent-protected product sales (e.g. a billion dollar/yr. therapeutic drug). On the other hand, using a provisional patent application to shift the patent term also delays when the patent issues and thus can delay the ability of the patent holder to assert its rights under the issued patent. Strategically, provisional patent applications may thus require one to think about how soon the patent holder needs the issued patent versus how valuable it will be 20 years hence.

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How much does it cost to file a patent application in the US?

Depending on the complexity, writing and filing a patent application may cost roughly $8,000 to $15,000. Additional costs are incurred as the patent office reviews the application (the patent prosecution) and even after the patent issues so that a single patent, over its lifetime, may cost on the order of $20,000.

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How much does it cost to file a patent application outside the US?

The cost of filing, prosecuting and maintaining a single application in Europe and Japan is roughly $100,000 but foreign rights can in some cases exceed $200,000 over the life of the patent. Patent rights outside the US are not available for inventions that have been made public unless a US patent application was filed prior to public disclosure. Patent rights outside the US are available if applications in other countries are filed within one year of the US filing.

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Will the OTM license my invention to my start-up company?

The licensing professional with responsibility for the case has an obligation to seek the best means to commercialize the invention for the benefit of the public and to generate income for education and research. Your start-up company will be considered along with any other opportunities for commercialization, and may or may not be the best alternative available.

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Will the OTM release its ownership of an invention back to the inventors?

Yes, if possible and if other opportunities for development do not exist. Under your Patent Agreement with the University, you agree to assign your rights, title, and interest in your invention to the Regents of the University of California and you execute such assignment each time you disclose an invention to the OTM. If the University decides to release its rights in the invention back to the inventors, the inventors must sign an agreement called a "release letter" in which they assert they will not use University funds and facilities for further research or development of the invention. You also promise to apprise the University in writing of your attempt to commercialize their invention on a regular basis. This agreement becomes void if you do not report progress towards commercialization and your rights revert back to the University. When an invention is released to the inventors, patent prosecution and licensing become your responsibility. Sometimes the research sponsor puts restrictions on the release of inventions made with its funding. Inventions generated with federal money, in whole or in part, must be first referred to the federal government so that the government, if it so chooses, can assert title to the invention. The inventor may then ask the federal government to release rights to the inventor.

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Who is authorized to sign agreements such as Licenses, Material Transfer Agreements, or Confidentiality Agreements on behalf of the University?

  • OTM staff negotiate and sign all licenses for inventions managed by the UCSF campus. In addition, OTM staff review Confidentiality Agreements covering UCSF proprietary information (as well as all outgoing Material Transfer Agreements for non-human biological materials), negotiate any necessary modifications, and sign on behalf of The Regents of the University of California once the agreement is acceptable to the University.
  • The OSR will review and negotiate Confidentiality Agreements related to the agreements handled by the OSR, incoming Material Transfer Agreements for non-human materials, and incoming and outgoing Material Transfer Agreements for human specimens and materials derived therefrom.
  • To make the process simpler for UCSF investigators, all MTAs—incoming and outgoing—may be submitted to the OSR, which will transfer specific outgoing MTAs to the OTM as appropriate; please see 3.3 for OSR contact information.
  • Principal Investigators and other laboratory members are not authorized to sign such agreements on behalf of the University. However, PIs often will be asked by the OTM or the OSR to sign such agreements in order to indicate that they have read and understood the document and its terms. Investigators should feel free to ask the OTM or OSR staff for clarification if specific terms appear problematic or are not completely comprehensible.
  • One exception: PIs are authorized to sign Material Transfer Agreements (MTAs), without review by the OTM, when transferring non-patented, non-licensed, non-human materials to another non-profit educational or research institution via the Non-Profit Material Transfer Agreement found on the OTM website. (If the materials are related to a Technology Disclosure (http://www.otm.ucsf.edu/docs/otmTDForm.asp) filed with the OTM, the PI should contact the OTM so that the OTM can handle the request). A copy of the fully executed MTA should be supplied to the OTM. If the recipient investigator or institution requests modifications, the PI must direct these requests to the OTM before signing the modified MTA.

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In documents that I am required to read and sign, the language pertaining to intellectual property is often very legal in nature and quite difficult to comprehend fully. Can anyone explain such to me in simpler terms?

  • All documents, such as those mentioned above, referring to intellectual property and related issues should be sent to the OTM or OSR for review. The OSR will consult with the OTM as necessary with respect to the agreements that the OSR negotiates. As mentioned above, the OTM and OSR staff have the authority to negotiate and sign such documents on behalf of The Regents.
  • You should feel free to ask questions of the OTM or OSR staff handling your case/agreement. In addition, if you find that specific terms of the agreement may create difficulties for you, OTM or OSR staff will be happy to work with you to develop more acceptable terms, subject to the limits of the law, University policy, and sound business practices.

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I have received a request from another academic institution/company for non-human biological materials that were generated in my lab. What process should I follow at this point?

  • If a colleague at a for-profit organization/company has requested the materials, please contact the Material Transfer Agreement Officer at the OSR (please see 3.3 for contact information). This Office will transfer the MTA to the OTM for management, and then the OTM will work with you and the for-profit entity in order to determine the appropriate terms under which the material may be transferred and will sign the agreement as the authorized UCSF representative.
  • If a colleague at a non-profit educational or research institution has requested the materials, the UCSF laboratory PI may transfer the materials using the standard UCSF Non-Profit Material Transfer Agreement (MTA) found on the OTM website. PIs are authorized to sign this standard UCSF MTA without review by the OTM only when transferring non-patented, non-licensed, non-human materials to another non-profit educational or research institution. (If the materials are related to a Technology Disclosure filed with the OTM, the PI should contact the OTM so that the OTM can handle the request. If the materials are human specimens or materials derived therefrom, the PI should contact the OSR Industry Contracts Division). A copy of the fully executed MTA should be supplied to the OTM. If the recipient investigator or institution requests modifications, the PI must direct these requests to the OTM before signing the modified MTA.
  • At times, the request for materials—either to a for-profit or a non-profit organization—will be related to a scientific collaboration, wherein ideas and information may be freely exchanged during the course of the research. If such is the case, please contact the OSR Industry Contracts Division (please see 3.3 for contact information) prior to the transfer of materials. The OSR will then put you in direct contact with the appropriate unit for management of this collaboration agreement.

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I would like to request materials (non-human biological materials, human specimens, or materials derived from human specimens) from another academic or industry laboratory. What process should I follow at this point?

  • Request the materials directly from the laboratory that originally generated the materials. Please be aware that the request should be made to the laboratory that originally generated the materials. Laboratories that have received the materials from the original source may not be authorized to transfer these materials to others, including those at academic institutions such as UCSF.
  • Once your request has been received and prior to sending the materials, the laboratory or the institution’s/company’s technology transfer office likely will send a Material Transfer Agreement (MTA) to you for signature.
  • These MTAs must be reviewed and signed by a Material Transfer Agreement Officer within the OSR (please see 3.3 for contact information). The MTA Officer often will ask the UCSF Principal Investigator to sign the agreement also, in order to indicate that the PI has read and understood the document and its terms. PIs should feel free to ask the MTA Officer for clarification if specific terms appear problematic or are not completely comprehensible.
  • Although MTAs vary widely in scope and terms, a number of terms are commonly found in most MTAs. For example, many MTAs require the recipient investigator to allow the provider to review all manuscripts, abstracts, and presentations prior to submission. In addition, MTAs generally contain confidentiality terms, restrictions that prohibit the recipient investigator from transferring the materials to others outside of his/her laboratory, and provisions involving modified materials and intellectual property that may result from the research conducted with the provider’s materials. You should feel free to discuss these terms with the MTA Officer handling your MTA.
  • Often, the terms of a MTA will not be acceptable as written. The MTA Officer will attempt to negotiate with the provider to improve the terms. Please realize that, although this may delay the process, it is done with the best interest of your research and the University’s policies and mission in mind.

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How might using materials obtained from other academic institutions or companies affect my research and intellectual property rights?

  • As mentioned above, materials are obtained from other academic institutions and companies via MTAs. Through these agreements, the provider often receives the ability to review manuscripts and abstracts (and the like) prior to submission and to practice any inventions made with the materials for internal research purposes free-of-charge. In addition, the provider often receives the first right to commercialize any intellectual property arising from the UCSF research involving the materials. Other terms, such as confidentiality provisions and restrictions on transferring modified materials, also may affect your research/intellectual property rights.
  • Therefore, the potential for third-party conflict and colliding interests exists, particularly if the research is being performed with sponsored research funding or if materials from multiple sources are commingled in the same research program. For example, the University may be obligated to offer “Provider A” the first right to obtain an exclusive license to any invention resulting from research conducted with “Material A”. If, in order to obtain “Material B”, the University must offer the same right to “Provider B”, a third party conflict will arise that will put the University in a difficult legal position. Such a potential conflict will need to be resolved through negotiation prior to the University’s acceptance of “Material B”. If such a negotiation is not productive, the laboratory may not be able to access all materials desired.
  • For these reasons, it is important to work closely with the OSR staff handling your laboratory’s MTAs, Collaboration Agreements, and/or Sponsored Research Agreements. Unfortunately, the potential for conflict and colliding interests can, at times, prevent an agreement from being acceptable to the University.

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How might I be limited by accepting sponsored research funding from a company? How might this affect my collaborations?

  • Sponsors often receive the ability to review manuscripts, abstracts, presentations (and the like) prior to submission. In addition, sponsors generally receive the first right to commercialize any intellectual property arising from the funded research. Other terms of the sponsored research agreement also may affect your research/intellectual property rights.
  • The potential for third-party conflict and colliding interests exists when accepting sponsored research funding, particularly if the research is likely to involve research materials from other sources. For example, the University may be obligated to offer the sponsor the first right to obtain a license to any invention resulting from research conduced with the sponsor’s funding. If the laboratory desires to obtain a material from another company in order to conduct the sponsored research, this second company also may request the first right to obtain a license to any invention resulting from the same research project. This conflict will need to be resolved through negotiation prior to the University’s acceptance of the second company’s material. If such a negotiation is not productive, the laboratory may not be able to access all materials desired.
  • Feel free to discuss any such issues with the OTM either prior to or as your Sponsored Research Agreement is being negotiated by the OSR. The OTM provides technology management advice to all campus administrative units that deal with research partnerships.

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I would like to arrange a mutually beneficial collaboration, unfunded or funded, with a colleague in industry. What process should I follow at this point?

Contact the OSR Industry Contracts Division to discuss (Please see http://www.oip.ucsf.edu/ccu/icu/index.htm for current contact information).

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A company has approached me and asked me to speak with its scientists about some of my unpublished work. Do I need to notify anyone at the University?

  • Contact the OTM to discuss your intended presentation/discussions. UCSF employees have an obligation to disclose their inventions, whether or not patentable, to the OTM so that the OTM can develop a management strategy that maximizes the value of campus research by preserving potential patent rights.
  • The OTM likely will put a confidentiality agreement in place for you with the company prior to any discussions in order to protect your ideas and research and the University’s potential patent rights. Such agreements are critical to have in place, particularly if the work is related to information that may now or in the future be the subject of a patent application.
  • Notify the OTM as far in advance as possible in order to allow the OTM and the company to negotiate and execute the confidentiality agreement.

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A colleague at another university has invited me to visit and discuss/present my latest research. What should I do if some of my findings might have commercial value?

  • Contact the OTM to discuss your intended presentation/discussions. UCSF employees have an obligation to disclose their inventions, whether or not patentable, to the OTM so that the OTM can develop a management strategy that maximizes the value of campus research by preserving potential patent rights.
  • Confidentiality agreements are rarely appropriate under this scenario and the OTM will advise you on a suitable course of action.
  • Please refer to “What is a public disclosure?” below.

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A scientist has asked me to attend an informal meeting (dinner, etc.) to discuss a possible invention and asks for my expertise in a given area. The scientist has some connection with a funded or start-up company. Are there guidelines for disclosure? Should I be compensated for such a discussion?

  • If you will be discussing any of your unpublished work/research, please contact the OTM prior to your discussions with the scientist. The OTM will see that a confidentiality agreement is put in place prior to any discussions in order to protect your ideas and research and the University’s potential patent rights. Such agreements are critical to have in place, particularly if the work is related to information that may now or in the future be the subject of a patent application.
  • Notify the OTM as far in advance as possible in order to allow the OTM and the company to negotiate and execute the confidentiality agreement.
  • Notify the OTM if, after your discussions, you feel that you have contributed to the conception or the reduction to practice of an invention.
  • In terms of compensation, please refer to the question below regarding consulting arrangements.
  • It is generally unrealistic to expect to be compensated for such a one-time meeting unless a prior consulting agreement is in place.

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A company has requested my consulting services. Am I able to consult while maintaining my position as a faculty member?

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Are there established guidelines for compensation for involvement on the Scientific Advisory Board of a start-up company?

  • The University is not a party to these agreements and does not negotiate financial terms on behalf of the advisor.
  • Each company sets its own compensation and such can vary widely and can comprise cash, stock options, or some combination of the two.

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I made an invention while consulting for a company and my client wants to file a patent application on it. Do I need to do anything besides helping the client with the application?

  • Although your consulting agreement most likely stipulates that the company owns any inventions you make in your capacity as its consultant, your employee agreement with the University dominates your obligations to your client. You must disclose the invention to the OTM as per your employee agreement, but do not sign the Technology Disclosure Form because doing so assigns your rights to the University.
  • The OTM will work with you and your client to determine if the University has any rights to the invention in whole or in part.
  • The company can take title to your invention if a) you made the invention without using any University resources and b) the subject matter of the invention falls outside the scope of your University research.
  • If the OTM determines it has an ownership interest in the invention, and if the OTM decides to assert its rights in the invention, it will ask you to sign the unsigned Technology Disclosure Form you already submitted.
  • The company then may negotiate a royalty-bearing license with the OTM for the University ’s rights in the invention.

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If I consult for a company, can I also receive funds from the company for my own research at UCSF?

  • The compensation you receive from your client means that you have a financial interest in the company. Before you can receive research funds from the company you must formally disclose your proposed research and this financial interest (Form 700U; “Statement of Economic Interests”) to the Chancellor’s Advisory Panel on Relations with Industry. The Panel, which meets once a month, will review your disclosure to determine to what extent your financial interest in the company might bias your objectivity as a researcher performing research that is funded by the company.
  • If the Panel determines there is a conflict of interest, it will inform you of ways to manage that conflict. This can range from barring you from accepting the research money to allowing you to accept the funds subject to certain restrictions.

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How do I initiate communication with the OTM regarding a possible invention in my lab?

  • Call or email any Licensing Professional listed on the OTM website.
  • After speaking with the Licensing Professional, he or she may ask you to file a formal Technology Disclosure Form, which can be downloaded from the OTM website and completed as a Word document.
  • Through the Technology Disclosure Form, you will be asked to describe the invention and the events leading up to the invention, and to list all inventors, funding sources, related MTAs, and any prior or anticipated public disclosures. The form is a legal document that you must sign and date. It must also be signed and dated by two witnesses who do not have a vested interest in the invention but who are competent to generally understand what the invention is.

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I made an invention on my own time without any University resources. Am I free to license and commercialize my invention on my own?

  • You have an obligation to disclose any inventions (even those made on your own time) to the OTM that you make concomitant with your employment by the University so that the OTM can determine if the University has any rights to the invention.
  • You will be entitled to your invention if a) it was not made using University resources and b) the subject matter of the invention is outside the scope of your University research.
  • If the University has no rights to your invention, the OTM will at your request provide you with a no rights claimed letter that you can show investors, licensees, business partners, etc. and that states that the University has determined it has no rights, title, and interest in the invention.

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Should I disclose to the OTM before or after I have submitted my work in abstract or manuscript form?

  • It is critical to disclose your invention as soon as the invention is in hand. Thus, you should be disclosing well before a manuscript or abstract is drafted.
  • Disclosing early affords many advantages, including proper assessment of the technology, development of an appropriate management and marketing plan by the OTM, and the ability for interested companies to evaluate the licensing opportunity before the opportunity to obtain patent rights is lost.
  • Depending on the invention, many companies may have no interest in licensing the invention unless they can obtain a license well in advance of any enabling public disclosure of the invention in order to have lead-time over their competitors.
  • Importantly, the ability to obtain foreign patent protection for an invention is lost immediately upon the enabling public disclosure of such an invention (please see question 25 below for a description of an “enabling” public disclosure).
  • Many companies are not interested in licensing rights to inventions for which foreign patent protection no longer is available.

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Who should be listed as “inventors” on the Technology Disclosure Form?

  • Unlike authorship of a scientific publication, inventorship is a matter of law. A patent that fails to name the correct inventors may be ruled invalid.
  • A lawful inventor is one who makes an inventive contribution to one or more of the claims that formally define the invention. Someone who provides equipment, space or money, no matter how critical to the development of the invention, is not an inventor. Also, someone who performs work under the supervision of another party is not an inventor, even though that person may have worked long hours or conducted a critical experiment.
  • Because patent claims may change as the patent application is being drafted and also while it is undergoing prosecution by the patent office, inventorship may change as well.
  • For the purposes of filing your Technology Disclosure Form with the OTM, simply name as inventors any individuals who have made a creative contribution to the invention (a creative contribution may include contributing a seminal idea towards the conception of the invention or overcoming a technical hurdle in the reduction to practice of the invention). The Licensing Professional whom you contact regarding your invention can provide you with a brief description of inventorship and a few relevant guidelines. More information also can be found on the OTM website. When necessary, the OTM will initiate a formal inventorship determination using outside patent counsel.

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Does filing an invention disclosure with the OTM protect patent rights?

  • Filing even a formal Technology Disclosure Form with the OTM does NOT directly or automatically protect patent rights.
  • The OTM may file a patent application after thoroughly reviewing the invention and determining if the invention meets the OTM’s business criteria. Often, the filing of a patent application will not occur until a committed licensee has been identified.

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What happens once I have filed a Technology Disclosure Form with the OTM?

  • The Licensing Professional will assess the case and technology based upon your disclosure.
  • The Licensing Professional also will work with you and the other inventors to understand prior public disclosures, involved funding sources and MTAs, and the technology’s commercial viability.
  • If the technology appears commercially viable, a marketing plan will be developed and undertaken.
  • Once a committed licensee is identified, the Licensing Professional will be responsible for negotiating the license to the technology. Often, it is at this point that a patent application is first drafted.

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Under what circumstances will OTM finance filing a patent application?

  • The OTM operates as a business and has specific business criteria that each invention must meet before the OTM will invest University funds in filing a patent application. Over its lifetime, a U.S. patent application can cost, on the average, roughly $20,000 and the foreign equivalent can cost, over its lifetime, up to $250,000. Thus deciding to file a patent application worldwide can trigger a substantial investment commitment.
  • The OTM seeks to recover its investment by licensing the patent rights to competent, committed commercial developers. Failure to secure a licensee causes the OTM to incur a significant financial loss and results in wasting campus funds that could have been better spent on research and education.
  • The OTM’s objective thus is not to file patent applications for the sake of filing patent applications, not only because of the high cost of patent protection but also because not every patentable invention is licensable. Also, not every invention must be patented in order to be licensed. Rather, the OTM’s objective is to file patent applications strategically in order to maximize the value of those inventions that the OTM has determined are licensable because they represent a sound business opportunity and will afford a licensee a competitive advantage in the marketplace.
  • In order to best manage the costs and risks inherent in patent applications, the OTM typically will not file a patent application until it has first found a committed licensee, and then it will file the patent application at the licensee’s expense. In this way, the OTM minimizes its financial exposure, conserves campus funds for research, and patents those inventions with true commercial potential as demonstrated by actual market demand. In addition, this strategy allows the licensee to participate in drafting the patent application so that the patent claims better support the licensee’s specific business needs. By providing greater value to the licensee in this fashion, the OTM captures more value from the licensing opportunity in the form of more favorable financial terms.
  • In some circumstances, the OTM will file a patent application “at risk”, i.e. without having first found a licensee to pay patent costs. Such filings are usually the result an imminent public disclosure of the invention that would result in the loss of foreign patent rights unless a U.S. patent application is filed prior to the public disclosure. The OTM will make an at-risk filing if its business analysis of the invention leads the OTM to believe there is an excellent probability that a future license will result. Such analyses take considerable time if done properly so it is imperative that you disclose your invention to the OTM well in advance of any public disclosure. Waiting until the last minute deprives the OTM of the opportunity to do a proper analysis and is counterproductive.
  • Importantly, many technologies, including tangible materials such as cell lines, transgenic mice, plasmids, and integrated circuit masks, are licensable without requiring a patent application. Also, software can be licensed under a copyright license, and a copyright license for high quality, value-added software can be more lucrative than many patent licenses.
  • In summary, the substantial expense of obtaining patent rights is only justified when the patent rights are demonstrably valuable to a potential licensee. The Licensing Professional will determine whether and when the filing of a patent application is appropriate in order to commercialize the invention. Typically, a potential licensee accepts responsibility for reimbursing the University for patent costs before the patent application is filed. Patent rights are most important when a licensee requires market exclusivity in order to justify the risk and expense of developing a product based on the invention.

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I am currently working on a research project that may be commercially attractive. How do I apply for a patent?

  1. Please refer to the relevant questions above. The following summary is provided for your convenience:
    • Contact the OTM as soon as you have an invention in hand. This should occur well in advance of the drafting of an abstract or manuscript or any public presentation.
    • You may be asked to file a formal Technology Disclosure Form with the OTM (found on the OTM website).
    • As a condition of your employment with the University, you must assign your rights to The Regents of the University of California through the Technology Disclosure Form.
    • Therefore, the technology will be owned by the State of California, which has authorized the OTM to manage the technology on the state’s behalf.
    • The OTM will determine whether the technology meets the University’s investment criteria and hence whether or not a patent application should be filed. A formal disclosure does not provide an automatic patent application filing. The disclosure simply informs the OTM of your invention.
    • Not all patentable inventions are licensable. The OTM files patent applications only for licensable inventions.
    • Patent applications generally are filed only after a committed licensee is identified.
    • Once an invention is licensed and income is generated, the inventors will receive, in total, 35% of the licensing income (after deduction for indirect expenses), as determined under UC patent license policy.

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The OTM decided not to file a patent application on my invention and I disagree with its assessment. What recourse do I have?

  • The OTM will allow you to file the patent application at your own expense using a law firm that has been approved by The Regents of the University of California. The OTM will manage the patent prosecution at your expense, and if the OTM finds a licensee, it will reimburse you your full costs and provide you with your share of the license income, as per the UC patent policy.
  • At your request, the OTM may agree to assign its rights in the invention back to you, making the invention your personal property subject to certain terms and conditions. These include the restrictions that you cannot do any further work on the invention using University resources and that you must keep the OTM apprised of your diligent efforts to commercialize the technology.

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If the University licenses my invention to a company, will I still be able to perform related research?

  • Yes. Our license terms always retain the right for the University to use the invention for educational and research purposes. We define research purposes to include sharing the technology with your colleagues at other not-for-profit institutions for their noncommercial research.

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What is a “public disclosure”?

  • Any of the following may be considered a public disclosure:
    1. Information discussed in a non-confidential setting
    2. Web posting
    3. Oral presentation
    4. Poster presentation
    5. Abstract publication, available to scientific public or meeting attendees either in print or online
    6. Manuscript publication, including online publications prior to the journal’s hardcopy release
    7. Thesis submission to a library or outside source
    8. Thesis publication
    9. Funded government grant
    10. And the like
  • A public disclosure immediately bars one from obtaining foreign patent protection on such work if the disclosure is “enabling”.
  • An “enabling” public disclosure is one wherein the work is described in sufficient detail such that one of “ordinary skill in the art” could reproduce the invention without undue experimentation. Therefore, not all public disclosures are enabling and all do not necessarily bar one immediately from obtaining foreign patent protection.
  • In the U.S., an enabling public disclosure establishes a one-year grace period from the date of the disclosure during which time a patent application can be filed. If no application has been filed within this one-year period, U.S. rights are lost.
  • Many companies are not interested in licensing inventions for which no foreign patent protection is available. Also, depending on the invention, many companies are not interested in licensing the patent rights unless they can get a license well in advance of the public disclosure in order to have lead time over their competitors.
  • If you are uncertain if a disclosure will be considered an enabling public disclosure, please contact the OTM.

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I have filed a previous invention disclosure with the UC Office of Technology Transfer (OTT) in Oakland. Does this mean that all further intellectual property issues should be handled through that office?

  • Under the Memorandum of Understanding (MOU) that exists between UCSF and the Office of the President, you may request that any unlicensed cases you have under OTT management be transferred to the OTM. Contact the OTM to discuss your needs and initiate the transfer process.
  • For inventions you have made after July 1, 2001, the current MOU stipulates that the OTM is the office responsible for managing all such UCSF inventions. Thus, to file your invention disclosure, complete the OTM Technology Disclosure Form and send it to the OTM.
  • The OTM may transfer the case to OTT management if there are compelling reasons to do so.

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I am thinking of starting a company that will focus on the technology developed in my lab. Should I contact anyone at the University?

  • As for any invention developed at UCSF, you have an obligation to contact the OTM to disclose your work.
  • You should mention and discuss the fact that your company is interested in licensing the rights to this invention.
  • The Licensing Professional contacted will ask you to file a formal Technology Disclosure Form with the OTM.
  • As a condition of your employment with the University, you will be required to assign your rights in the invention to the University. Therefore, the University (via the OTM) will own and manage this intellectual property.
  • As an inventor, you will receive, along with the other inventors, in total, 35% of any net licensing income generated from the licensing of this invention, as determined under UC patent license policy.
  • The Licensing Professional handling your case will determine the appropriate licensing strategy for this technology. In the interest of bringing the technology to the benefit of the general public, this strategy may include marketing/licensing to other entities. The Licensing Professional has an obligation to seek the best means to commercialize the invention for the benefit of the public and to generate income for education and research. Your start-up company may be considered along with any other interested companies, and your company may or may not be the best business partner available.
  • Due to increasing public concern over conflicts in licensing decisions, if the Licensing Professional decides to license the invention to your start-up company, the decision must be submitted for an independent and substantive review prior to the grant of a license to your company. In addition, you and the other inventors will not be allowed to participate in negotiating license terms due to the fact that inventors derive personal income from licenses under UC patent license policy, as mentioned above.
  • Above all, realize that your relationship with the OTM is as critical to the success of your new venture as is your relationship with your investors. Without either one, you have no company. You need the OTM to create and maintain the patent protection you need to attract investors and key employees, and to issue to your company the license that enables the company to practice your invention. Your reliance on the OTM does not end with the issuance of the license. Your company will have specific obligations to meet under the license, such as meeting certain technical and business milestones and filing progress reports on a regular basis to demonstrate diligence in commercializing the licensed technology. Failure to meet these obligations is grounds for the OTM to terminate the company’s license, which could in turn devastate your business and alienate your investors. Therefore, you should regard the OTM as a valued business partner, and it is in your best interest to form a close working relationship with the OTM at the very outset and to nurture that relationship throughout the term of the license. Timely communication is key, and keeping the OTM at arm’s length is in neither party’s best interest. Should your company falter and have difficulty meeting the requirements of the license, if you have invested wisely in your relationship with the OTM and have kept it informed of your company’s progress and the reasons for its ups and downs, the OTM, at its sole discretion, may elect not to terminate the license if it feels the company has been a diligent and valued business partner.

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Page last modified: March 16, 2007