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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.
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Why should I disclose an invention to the OTM?
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I've made a discovery. Should I submit an invention disclosure form?
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I've been working on something interesting. When should I disclose
an invention to the OTM?
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I've been working on something in an outside collaboration. Should
I disclose to the OTM?
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What will the OTM do with my invention disclosure?
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Will every invention disclosed to the OTM result in a patent application?
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What is a license?
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If the university licenses my invention to a company, will I still
be able to do research on it?
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Who is an inventor?
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What if someone who is not a UCSF employee makes a creative contribution
to my invention?
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What are "property rights?"
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Are licenses to property rights worth less than licenses to patent
rights?
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Why do I need to use an MTA when I give materials to other researchers?
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Why do companies require an MTA to provide materials to UCSF scientists?
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What is a provisional patent application?
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How much does it cost to file a patent application in the US?
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How much does it cost to file a patent application outside the US?
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Will the OTM license my invention to my start-up company?
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Will the OTM release its ownership of an invention back to the inventors?
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Who is authorized to sign agreements such as Licenses, Material Transfer
Agreements, or Confidentiality Agreements on behalf of the University?
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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?
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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?
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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?
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How might using materials obtained from other academic institutions
or companies affect my research and intellectual property rights?
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How might I be limited by accepting sponsored research funding from
a company? How might this affect my collaborations?
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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?
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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?
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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?
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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?
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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?
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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?
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If I consult for a company, can I also receive funds from the company
for my own research at UCSF?
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How do I initiate communication with the OTM regarding a possible invention
in my lab?
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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?
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Should I disclose to the OTM before or after I have submitted my work
in abstract or manuscript form?
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Who should be listed as “inventors” on the Technology Disclosure
Form?
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Does filing an invention disclosure with the OTM protect patent rights?
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What happens once I have filed a Technology Disclosure Form with the
OTM?
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Under what circumstances will OTM finance filing a patent application?
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I am currently working on a research project that may be commercially
attractive. How do I apply for a patent?
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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?
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If the University licenses my invention to a company, will I still
be able to perform related research?
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What is a “public disclosure”?
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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?
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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?
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?
- Faculty are able to consult as long as their obligations as consultants
do not conflict with their obligations as University employees. Guidelines
for policies on commitment of time for faculty can be found at
http://www.ucop.edu/services/conflictofinterest.html#b and
http://www.ucop.edu/acadadv/acadpers/apm/apm-025-07-01.pdf.
Also, guidelines specific to consulting can be found at
http://www.ucop.edu/ott/pdf/consult.pdf and
at
http://www.ucop.edu/ott/consult.html.
- The University is not a party to consulting agreements, which
are private agreements between the company and faculty member.
As such, the OTM will not negotiate consulting agreements on behalf
of University employees.
- However, employees should contact Trisha Lotzer (502-6941), who
will review consulting agreements to ensure that the terms do not
put the faculty member in conflict with his/her overriding obligations
to the University.
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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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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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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?
- 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:
- Information discussed in a non-confidential setting
- Web posting
- Oral presentation
- Poster presentation
- Abstract publication, available to scientific public or meeting
attendees either in print or online
- Manuscript publication, including online publications prior to
the journal’s hardcopy release
- Thesis submission to a library or outside source
- Thesis publication
- Funded government grant
- 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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