Marketing and Licensing Inventions
We work with the inventors to develop a marketing piece, called a Non-Confidential Description (NCD) of the invention. The NCD is a two to three paragraph information sheet used to "introduce" the invention to the commercial sector; it is geared to a non-technical reader and typically has very limited technical data. It also includes potential applications, advantages and non-enabling images of the technology.
We work with the inventors, and primary and secondary sources of research to identify and develop potential licensees.
When a company is interested in licensing a technology , there are a number of ways in which we engage with them. Most often, the initial stage is a technical discussion with the inventor. We recommend doing this under a Confidentiality Agreement unless the discussion is limited to only publicly available information.
A Confidentiality Agreement establishes a legal record for preserving intellectual property and is generally designed to protect the confidential information of both parties. Be aware that confidentiality agreements are not perfect. Over time memories are fallible and the origin of ideas often becomes blurred. The best way to protect something is to mark it conspicuously "CONFIDENTIAL."
If the company is interested in testing the technology in-house or wants to demonstrate contractual rights to the technology to investors, we typically give them the choice of a License or an Option Agreement.
An Option Agreement gives the company a period of time to evaluate their commercial interest in a technology. This agreement confirms a company’s intent to negotiate a license, to outline each party’s rights and responsibilities, and/or establish a company’s commitment to pay certain fees or patent costs incurred while the negotiation is underway. In some cases, it includes the financial terms of the final license if executed. At the end of the option, the company will either conclude a license or allow the option to expire.
A License Agreement grants intellectual property and/or material rights to the licensee. Intellectual property rights are typically granted for a period of time through the last to expire patent. Material rights are not time limited, but usually are written for a defined period of time. Licensing may be exclusive or non-exclusive or limited by field of use or geography. You can view a summary of typical patent exclusive license terms (see forms page.)
Royalty income distribution is based on the patent policy that was in effect when you joined the University of California. Specifics are in the UC Patent Agreement/Acknowledgement and the Patent Amendment that you signed as a condition of employment. If you no longer have a copy, contact your department office.
A detailed comparison is available at http://www.ucop.edu/ott/patentpolicy/compare.html.