Technology Transfer Process Overview
The UC Davis Technology Transfer Office (TTO) provides a broad spectrum of services specifically aimed at preserving valuable intellectual property and disseminating it for public benefit using the most appropriate means available.
TTO is responsible for handling and entering various types of contractual arrangements in order to properly and efficiently transfer intellectual property to commercial enterprises, as well as to universities and other nonprofit institutions.
Invention Disclosure
The first step in the process is to submit a Record of Invention/Invention Disclosure. For directions on submitting a Record of Invention (ROI), go here.
Patentability/Marketability Evaluation
Once the Record of Invention is received, the technology marketability assessment process begins. We look at a number of factors during the technology assessment process including:
Inventorship
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.
Available Rights
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
- 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
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
“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 Technology Transfer Office a Record of Invention form. UC Davis Technology Transfer Office 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 Technology Transfer Office 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 Technology Transfer Office 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.
Invention Patenting
Initial Patent Prosecution
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 Technology Transfer Office 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.
Invention Marketing
Development of Marketing Tools
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.
Marketing Inventions
We work with the inventors, and primary and secondary sources of research to identify and develop potential licensees and solicit their interest.
Invention Licensing
Confidentiality Agreement
Confidentiality agreements are an important way to protect research and business information from being made public inappropriately, such as to protect your unpublished research from being scooped and to protect intellectual property rights while they are being patented. Several campus units enter into these agreements on behalf of The Regents. If the primary purpose of the information exchange is regarding a technology (and related research) that you have disclosed, complete a Confidentiality Agreement Request Form and submit as indicated. We will contact the company and inform you when the confidentiality agreement is executed. An example of what the agreement might look like is on the forms page as well. If the information being shared is to establish a research collaboration or program, contact Sponsored Programs to set up the confidentiality agreement. Conversations relating to university provision of services to a company under a services agreement are handled by Contracting Services. If the discussion is related to you providing consulting services to a company in compliance with University policy, the confidentiality agreement is between you, as an individual, and the company. It is important that you ensure the terms of your agreement don’t put you at odds with the UC Patent Policy.
License Technology
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 (as described above) unless the discussion is limited to only publicly available information.
- 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. One way to protect something is to mark it conspicuously “CONFIDENTIAL.”
In order to determine whether or not the company is potentially an appropriate commercial partner for a licensing arrangement, the university will usually require a commercialization plan.
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
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.
Questions?
If you have any questions or if you need additional information, please contact us.
