Once You Disclose
We look at a number of factors during the technology assessment process including:
Inventorship is determined by a legal process conducted by an appointed patent attorney.
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.
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.
After receiving the original ROI, 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
- 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.
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
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.