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II. Invention

So now the researcher makes an invention at the university. Under the University Patent Policy ("Patent Policy"), in general, the university owns patent rights to the invention, subject to certain exceptions such as "permissive consulting." (See Step V.B: Consulting Guidance) The intellectual property management process is:

  1. Disclosure of Invention to University

  2. The researcher discloses the invention to the university, as required by the Patent Policy, by submission of a Record of Invention (ROI) (see forms page) to UC Davis InnovationAccess.

    The university Patent Policy requires that university researchers disclose potentially patentable inventions to the university. This requirement is covered in the Patent Acknowledgment, signed by all employees upon hiring and by other researchers using university facilities or funding. The duty to disclose to the university applies to all inventions generated by university employees, as well as all inventions made using university facilities or resources. Therefore university employees have the obligation of disclosing all of their inventions, including those made under university-industry research collaborations, or made under consulting arrangements or other outside personal agreements. Potentially patentable inventions include any new or useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds, microorganisms and plants) and improvements to any of the foregoing, as well as new uses for known materials or devices.

    If the inventions receive patent protection and are licensed to industry, any license and royalty income to the university will be shared with the inventors in accordance with the Patent Policy.

    Disclosure of an invention to the university is accomplished by submission of a completed (signed and witnessed) Record of Invention Form (ROI) (see forms page) to UC Davis InnovationAccess. The ROI provides information necessary for the university to evaluate patentability, inventorship, assignment obligations, patent obligations to research sponsors, and commercial potential. The ROI should be kept confidential by the inventor. Researchers should disclose inventions to the university in advance of making any public disclosure (e.g., paper, abstract, poster session, oral presentation, or discussion with outside colleagues) in order to give the university the opportunity to preserve patent rights by making a patent filing prior to the public disclosure.

    In order to provide proper support for invention disclosures (and patent filings), university researchers should keep bound, up-to-date laboratory notebooks which are regularly signed and dated by the researcher and by a witness. The witness should be someone who can understand the material and who is not likely to be an inventor. Separate notebooks should be kept for different projects. Properly maintained notebooks may be essential in obtaining a patent, in proving inventorship, and in legal disputes.

  3. Patent Filing by University

  4. The university files a patent application for the invention, if the university determines it is appropriate to do so, following the university’s assessment of patentability and licensability of the Invention. The patent filing may take place before or after marketing/licensing of the invention by the university. (See Step III: Licensing).

    The university is responsible for patent filings for inventions made at the university, based on the university’s ownership of such inventions. Under the UC Patent Policy, the university owns the title to inventions or discoveries made in the course of university employment, or with the use of university research facilities, or with University resources. With respect to federally funded inventions, the 1980 Bayh-Dole Act gives the university the right to own and license inventions made under federal funding, provided that the licenses ensure certain government rights, and subject to reporting and certain other requirements.

    University employees, as a condition of their employment, and others using university facilities or resources, as a condition of receiving permission to access and use such facilities or resources, contractually agree to disclose potentially patentable inventions to the university (see also, above, Step IIA: Disclosure to UC) and, in general, to assign all rights to such inventions (and resulting patents) to the university. In some consulting relationships, it may be permissible for assignment of an invention to be made to the outside company for which the researcher is consulting. In such a situation, the disclosure of the invention must, nonetheless, be made to the university and this disclosure should be made prior to disclosure to the outside company so as to allow adequate opportunity for the university to review the invention and to determine whether the university is the owner of the invention. See also Step V.B: Consulting Guidance.

    Upon receipt of an ROI, InnovationAccess conducts a preliminary evaluation of the invention. Factors such as patentability, prior publications, commercial potential, and benefit to the public are considered in deciding to pursue patent protection. The cost of patent filing and prosecution, which may be tens of thousands of dollars for U. S. protection alone and may exceed a hundred thousand dollars for foreign protection, is an important consideration. Inventors are urged to keep the university licensing professional assigned to the invention apprised of any action they are contemplating, especially any publications or other public disclosures, as such actions can significantly affect rights in the invention.

    Depending on the outcome of the invention evaluation, InnovationAccess may proceed to market the invention. The goals of marketing are to assess commercial interest in the invention and to find a qualified licensee. The faculty inventor is often the best source of information on companies whose business interest coincides with the field of the invention. InnovationAccess also considers whether the invention could become the basis of a start-up company to which the university could license invention rights. See also Step III: Licensing. If a decision to seek patent rights is made, the case is referred to an outside patent attorney to file a patent application on behalf of the university.

    Inventorship for a patent application is determined as a matter of law, based on contribution to the conception of the invention. Unlike authorship of publications, a person who contributes to the work on a project is not necessarily an inventor. For instance, a person who carries out the instructions of another in performing experiments, without more, is not an inventor. The inventorship determination is made by the outside patent attorney authorized by the University to file the patent application. A patent may be unenforceable in the event of the omission of an inventor or the inclusion of a non-inventor. Joint inventorship occurs when two or more persons, working together, each contribute to the making of the invention.

  5. Release of Invention Rights by University

  6. In certain circumstances, the Patent Policy allows the university, if it decides not to pursue patent protection for an invention, to release the invention to the federal government, if federally funded, or directly to the inventor. (See UC Patent Policy, item B.) If an invention is released by the university to the federal government funding agency, the inventor can request release of the invention from the agency. However, it's important to note that if an invention is released to the inventor, any further development of the invention by the inventor must be done off-campus without use of university resources. Further inventions by the researcher, whether improvements of the released invention or otherwise, must be disclosed to the university and are subject to the duty to assign to the university.