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Evaluating and Patenting Inventions

UC Davis InnovationAccess licenses UC Davis technologies to transfer research to the market through our commercial partner for public benefit.

Once You Disclose

We look at a number of factors during the technology assessment process including:

Inventorship

Each inventor must make an intellectual contribution to at least one patent claim. Thus, persons who qualify as co-authors on a publication or public presentation, but served only to perform the directives of the true inventor(s), are not considered inventors. Inventorship is determined by a legal process conducted by an appointed patent attorney.

Ownership/Joint Patents

If inventors come from different institutions, the patent is jointly owned. Each owner has undivided rights to practice and license the invention. In this case, the technology transfer offices of the two institutions decide, in an "interinstitutional agreement," which office will manage and market the technology.

Alternatively, if one of the inventors is from a private company and assigns their rights to that company, then the company automatically has rights to exploit the patent. The company may be interested in licensing the university's rights to the joint invention so that they have exclusive rights to the patent.

Available Rights

We examine public disclosures of the invention to evaluate possible patent rights.  Public disclosures may include:

  • Publication of a research award
  • Online pre-publication of a journal article
  • Indexing of a thesis
  • Posters
  • Presentations
  • Publication in a journal
  • Oral discussion

Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new, useful, and non-obvious. Usefulness is typically an easy requirement to meet. Rejections based on lack of novelty or lack of sufficient inventive steps to make the invention non-obvious are most common from patent offices. Learn more at http://www.uspto.gov/web/offices/pac/doc/general/index.html#novelty.

Marketability Assessment

We evaluate the market structure and potential of the technology to add needed value. Things that we look at include:

  • Who are the players and what are their pricing strengths
  • How the technology changes the industry structure the cost factors for the production needs
  • The switching costs for the customer to use the technology

Patenting

If the invention is potentially patentable and has market potential, we use outside counsel to draft and file patent applications while we manage this process. The law firm is typically chosen based on the academic or industry background of their lawyers. The intellectual property officer and the patent attorney assigned to the case will work with you to develop the patent application.

Prosecution (examination of a patent application by a patent office) can take many years and cost tens to hundreds of thousands of dollars.  Often the inventor(s) are consulted during patent prosecution on technical aspects prior to responding to a patent examiner.  UC Davis InnovationAccess may choose to discontinue a patent application during prosecution.  Reasons to do so include lack of commercial interest in the invention; significant prosecution expenses in the absence of a licensee; and a decline in the probability of obtaining an issued patent discovered during prosecution.

Patent Maintenance

Upon notification of the allowance of a patent, issuance fees must be paid. These typically are only good for 3-5 years, depending on the country. At their expiration, if the patent is to be maintained, extension fees (e.g., maintenance fees or annuities) must be paid which often increase in cost over the life of the patent. Under current patent law a patent term starts on the date of filing and runs for 20 years.

Releasing Rights to Inventors

UC Davis InnovationAccess fully supports the release of an invention whenever the University has determined that it does not intend to pursue that invention for patenting and licensing. The process to secure the release of an invention is not complicated. For release purposes, inventions can be separated into two groups: (1) those that are federally funded (a majority of UC Davis inventions) and (2) all other inventions. For inventions in the first group (federally funded), the release must be made by the federal funding agency directly to the inventor; therefore, UC cannot grant the release of federally funded inventions directly to the inventor. However, UC Davis InnovationAccess is very willing to provide assistance to the inventor in navigating this process with the government funding agency. For inventions in the second group (not federally funded), unless the University has an inconsistent obligation to a sponsor, release can be made directly by UC Davis InnovationAccess to the inventor using one of the two template invention release agreements provided by the links below.

To obtain a release of a non-federally funded invention, the following considerations apply:

  • There can be no invention rights due to anyone else.
  • All inventors, the Department Chair and the Dean must agree to the release.
  • The inventor is free to use the invention at the University, but he/she cannot use University resources (facilities, funds, etc.) to improve the invention; however, in the event that an improvement is made using University resources, the University will own the improvement.

Invention release agreements have been developed by UC Davis InnovationAccess for UC inventions to cover the two situations where (1) a patent application has been filed or issued or (2) no patent application has been filed (see forms page). These agreements set forth terms that must be met in order for the university to release an invention to an inventor. Under policy, the university reserves the right to final determination of whether or not to release an invention.

"Non-Assert" of Ownership by the University

A different situation (the "non-assert" situation) occasionally arises when an employee invents something that he/she believes is outside his/her scope of employment with the university and in which no university resources or funding have been used. In this event, in order to fulfill the duty to disclose all inventions to the university, the inventor should submit to UC Davis InnovationAccess a Record of Invention form. UC Davis InnovationAccess will review the invention disclosure for completeness, including with respect to source of funding. If the invention is completely disclosed and no university resources or funding have been used, UC Davis InnovationAccess will request that the inventor's Department Chair and Dean confirm that the invention is outside the inventor's scope of employment. Once that confirmation is made, UC Davis InnovationAccess will then provide a non-assert letter to the inventor stating that the university does not assert ownership rights to the invention.  This letter will be important in working with other companies about the invention.