- Why do I need to get a Material Transfer Agreement (MTA) before I exchange materials with other researchers?
- Tell me about confidentiality / non-disclosure / secrecy agreements at UC Davis. Who signs them?
- Why should I disclose an invention to UC Davis?
- I’ve been working on something interesting. At what point do I submit a Record of Invention (ROI) form? Should I disclose before I submit an abstract or manuscript?
- What is a “public disclosure?”
- Does filing a Record of Invention (ROI) form protect patent rights?
- What happens to my Record of Invention (ROI)?
- Who should be listed as “inventors?”
- Will UC release its ownership of my invention back to me?
- I made an invention on my own time with university resources. Can I commercialize it myself?
- I’m thinking of starting a company that will focus on the technology developed in my lab. Should I contact anyone at the university?
- I want to copyright or trademark something. Where do I start?
Why Do I Need to Get a Material Transfer Agreement (MTA) Before I Exchange Materials with Other Researchers?
MTAs are very important agreements that allow researchers to either receive or transfer research materials critical to carrying on research and provide clarity as to what conditions, terms, limitations the research material may be used and what happens to any discoveries (i.e., intellectual property) that are made using that research material. For example, MTAs address liability and indemnification issues, rights to publish, and whether there are controls over using the materials in other research. MTAs can also serve to protect patent rights. UC Davis InnovationAccess negotiates and signs MTAs on behalf of the campus for transferring all materials, whether in or out, to research institutions, non-profits or commercial companies. For more information go here.
Good question! Several units at UC Davis are authorized to negotiate and sign confidentiality agreements, also known as CDAs, non-disclosure agreements or secrecy agreements. Ideally, you will work with the unit most likely to help you with the next stage agreement. If you are exploring a research agreement, you should contact the Sponsored Programs office. If you may provide services, you will work with either Contracting Services or Sponsored Programs – contact one of them for assistance. If this regards software, contact the copyright officer in UC Davis InnovationAccess. If this is about transferring materials or discussing/licensing technology, UC Davis InnovationAccess will handle it. If you are going to provide personal consulting services as permitted by university policy, you will negotiate and sign the confidentiality agreement yourself, although if you have concerns about language related to ownership of inventions, UC Davis InnovationAccess will be glad to answer questions about whether your agreement may conflict with UC policies (e.g., UC Patent Policy, Conflict of Commitment and Conflict of Interest policies).
Under the Patent Acknowledgment you signed upon starting work at the university, you have an obligation to disclose all of your inventions, whether or not patentable, to UC Davis InnovationAccess for evaluation. The disclosure is made using the Record of Invention (ROI) form to UC Davis InnovationAccess. UC Davis InnovationAccess will review your ROI and make a determination whether the university has ownership in the invention as described above and, if yes, whether or not the university will file a patent application for that invention. The development, distribution and commercialization of your invention may provide significant public benefit and generate income for research and education at UC Davis. 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 been working on something interesting. At what point do I submit a Record of Invention (ROI) form? Should I disclose before I submit an abstract or manuscript?
The ideal time to disclose an invention to UC Davis InnovationAccess is as soon as you believe you made a patentable invention (i.e. after it has been reduced to practice and well before it has been published or presented publicly). If you disclose an invention after it has been published or publicly presented, some or all of the patent rights may have been lost.
Disclosing to UC Davis InnovationAccess well before publication affords many advantages, including proper assessment of the technology, development of an appropriate invention management and marketing plan, and the ability for interested companies to evaluate the licensing opportunity.
Complete a Record of Invention (ROI) form, sign it, have your signature witnessed as indicated, and send it via e-mail to innovationAccess@ucdavis.edu with the original ROI sent through intercampus mail, or you can deliver by hand during office hours. If you are not sure, call UC Davis InnovationAccess for assistance.
A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. Journal articles, including online publications prior to the journal’s hardcopy release, posters, slide shows, thesis publications, websites, e-mails, verbal presentations, and even funded grant applications (the NIH posts the title and abstract online and makes the application available in response to a Freedom of Information request) may be considered a public disclosure.
In most foreign countries, such a disclosure prior to filing a patent application will forfeit the ability of the university to obtain patent rights and, therefore, foreign patent applications will not be filed. The U.S. allows a one-year grace period from the date of public disclosure to apply for a U.S. patent. Ideally, an inventor will submit a Record of Invention (ROI) to UC Davis InnovationAccess before he/she publicly discloses the invention in any detail. UC Davis InnovationAccess can then review the ROI and determine whether filing an application is appropriate.
If you are uncertain if a disclosure will be considered an enabling public disclosure, please contact UC Davis InnovationAccess.
Filing a formal Record of Invention form with UC Davis InnovationAccess is not equivalent to filing a patent application and does NOT directly or automatically protect patent rights. Protection of patent rights is only obtained through filing a patent application. UC Davis InnovationAccess assesses each invention in terms of patentability and licensability, in order to determine whether to file a patent application. If the invention is appropriate for patent filing, UC Davis InnovationAccess works with the inventor(s) and with outside law firms to file and prosecute patent applications. UC Davis InnovationAccess will continue to manage the patent application as long as it is deemed commercially valuable.
An Intellectual Property Officer in UC Davis InnovationAccess will be assigned to your invention. The invention will be given a UC case number and may be reported to sponsors or co-inventing institutions, if required. After evaluating the invention for patentability and commercial potential, a patent application may be filed.
If the invention is ready to be marketed, UC Davis InnovationAccess will develop a non-confidential description (NCD) of your invention for marketing purposes. A list of companies that may be interested in licensing the invention will be compiled from many sources. Perhaps the most important of these sources are referrals from the inventors themselves. These companies will be given the NCD and any public publications. Any third party who desires detailed, confidential information will be required to sign our standard confidential disclosure agreement.
Unlike authorship of a scientific publication, inventorship is determined in accordance with U.S. patent law. It is not uncommon for the inventors on a patent application to not be the same as the authors on a corresponding scientific publication. A lawful inventor is one who makes an inventive contribution to one or more of the patent 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 only 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. An issued patent that fails to correctly and completely name the inventors may be ruled invalid under certain circumstances.
Because patent claims may change as the patent application is being drafted and also while it is undergoing prosecution by the patent office, the names of the inventors may change as well. For the purposes of filing your Record of Invention (ROI) form with UC Davis InnovationAccess, simply name as inventors any individuals who you believe 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). Your Intellectual Property Officer can provide you with a brief description of inventorship and a few relevant guidelines. When necessary, UC Davis InnovationAccess will retain outside patent counsel to determine inventorship.
UC Davis InnovationAccess may, under certain circumstances and terms, release an invention to the inventor(s). For further explanation of when a release may be provided, go here.
If the university can and does decide to release its rights in the invention back to the inventor(s), the inventor(s) must sign a “release letter” stating he/she will not use university funds and facilities for further research or development of the invention. When ownership is released, patent prosecution and licensing becomes the responsibility of the inventor(s).
I made an invention on my own time without university resources. Can I commercialize my invention myself?
Under the Patent Acknowledgment, you agreed to disclose all inventions – even those made on your own time or as a consultant – to UC Davis InnovationAccess so that UC Davis InnovationAccess can determine if the university has any rights to the invention. You will be entitled to own your invention if: a) you made the invention without using any university facilities or resources, b) the invention is not subject to a third party obligation, such as a sponsored research grant, and c) the subject matter of the invention falls outside the scope of the subject matter of the research conducted by you and your immediate work group. If the university has no rights to your invention, UC Davis InnovationAccess will, at your request, provide you with a non-assert letter. More information can be found here.
I am thinking of starting a company that will focus on the technology developed in my lab. Should I contact anyone at the university?
UC Davis InnovationAccess is available to discuss your plans to receive future research funding at UC Davis related to company’s business interests, and how this might impact your plans to found the company. If your company is interested in licensing the rights to this invention, this may create a potential conflict of interest under the California Political Reform Act of 1974. UC Davis has procedures (below) to help mitigate this conflict.
To start, your Intellectual Property Officer (IPO) will as you to file a Record of Invention form with UC Davis InnovationAccess. The IPO handling your case will determine the appropriate licensing strategy for this technology which may or may not include licensing to your start-up. The IPO has an obligation to seek the best means to commercialize the invention for the benefit of the public.
While they’re all intellectual property, copyrights and trademarks are handled differently than patents and material transfers at UC Davis.
Copyrights happen automatically now – you don’t have to actually do anything to get one. Details about copyrights, including how to get and register them, is here.
Trademarks also happen automatically – when the eligible mark is used in interstate commerce, you have a trade (or service) mark. Registration is unnecessary and expensive, but sometimes a very good idea. UC Davis trademarks must be handled by specialized attorneys hired by UC. For more information and to get the process started, go here.
For more information contact UC Davis InnovationAccess.