Technology Transfer FAQs

If your question is not answered above or on this website, please contact us.

Why do I need to get a Material Transfer Agreement (MTA) before I exchange materials with other researchers?

Material Transfer Agreements (MTAs) are very important agreements that allow researchers to either receive or transfer research materials critical to carrying on research and provide clarity as to what conditions, terms, limitations the research material may be used and what happens to any discoveries (i.e., intellectual property) that are made using that research material. For example, MTAs address liability and indemnification issues, rights to publish, and whether there are controls over using the materials in other research. MTAs can also serve to protect patent rights. UC Davis Technology Transfer Office negotiates and signs MTAs on behalf of the campus for transferring all materials, whether in or out, to research institutions, non-profits or commercial companies. Learn more about transferring research material or data.

Tell me about confidentiality / non-disclosure / secrecy agreements at UC Davis. Who signs them?

Good question! Several units at UC Davis are authorized to negotiate and sign confidentiality agreements, also known as CDAs, non-disclosure agreements or secrecy agreements. Ideally, you will work with the unit most likely to help you with the next stage agreement. If you are exploring a research agreement, you should contact the Sponsored Programs office. If you may provide services, you will work with either Contracting Services or Sponsored Programs – contact one of them for assistance. If this regards software, contact the copyright officer in the UC Davis Technology Transfer Office. If this is about transferring materials or discussing/licensing technology, the UC Davis Technology Transfer Office will handle it. If you are going to provide personal consulting services as permitted by university policy, you will negotiate and sign the confidentiality agreement yourself, although if you have concerns about language related to ownership of inventions, the UC Davis Technology Transfer Office will be glad to answer questions about whether your agreement may conflict with UC policies (e.g., UC Patent Policy, Conflict of Commitment and Conflict of Interest policies).

Why should I disclose an invention to UC Davis?

Under the Patent Acknowledgment you signed upon starting work at the university, you have an obligation to disclose all of your inventions, whether or not patentable, to the UC Davis Technology Transfer Office for evaluation. The disclosure is made using the Record of Invention (ROI) form to the UC Davis Technology Transfer Office. the UC Davis Technology Transfer Office will review your ROI and make a determination whether the university has ownership in the invention as described above and, if yes, whether or not the university will file a patent application for that invention. The development, distribution and commercialization of your invention may provide significant public benefit and generate income for research and education at UC Davis. A licensee of your invention may wish to sponsor research in your laboratory. Also, inventors receive a portion of net income generated by their inventions.

I’ve been working on something interesting. At what point do I submit a Record of Invention (ROI) form? Should I disclose before I submit an abstract or manuscript?

The ideal time to disclose an invention to the UC Davis Technology Transfer Office is as soon as you believe you made a patentable invention (i.e. after it has been reduced to practice and well before it has been published or presented publicly). If you disclose an invention after it has been published or publicly presented, some or all of the patent rights may have been lost. Disclosing to the UC Davis Technology Transfer Office well before publication affords many advantages, including proper assessment of the technology, development of an appropriate invention management and marketing plan, and the ability for interested companies to evaluate the licensing opportunity. Complete a Record of Invention (ROI), sign it, have your signature witnessed as indicated, and submit it via our Inventor Portal. If you are unclear or have questions, please email UC Davis Technology Transfer Office for assistance.

What is a “public disclosure”?

A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. Journal articles, including online publications prior to the journal’s hardcopy release, posters, slide shows, thesis publications, websites, e-mails, verbal presentations, and even funded grant applications (the NIH posts the title and abstract online and makes the application available in response to a Freedom of Information request) may be considered a public disclosure. In most foreign countries, such a disclosure prior to filing a patent application will forfeit the ability of the university to obtain patent rights and, therefore, foreign patent applications will not be filed. The U.S. allows a one-year grace period from the date of public disclosure to apply for a U.S. patent. Ideally, an inventor will submit a Record of Invention (ROI) to the UC Davis Technology Transfer Office before he/she publicly discloses the invention in any detail. The UC Davis Technology Transfer Office can then review the ROI and determine whether filing an application is appropriate. If you are uncertain if a disclosure will be considered an enabling public disclosure, please contact the UC Davis Technology Transfer Office.

Does filing a Record of Invention (ROI) form protect patent rights?

Filing a formal Record of Invention form with the UC Davis Technology Transfer Office is not equivalent to filing a patent application and does NOT directly or automatically protect patent rights. Protection of patent rights is only obtained through filing a patent application. The UC Davis Technology Transfer Office assesses each invention in terms of patentability and licensability, in order to determine whether to file a patent application. If the invention is appropriate for patent filing, the UC Davis Technology Transfer Office works with the inventor(s) and with outside law firms to file and prosecute patent applications. The UC Davis Technology Transfer Office will continue to manage the patent application as long as it is deemed commercially valuable.

What happens to my Record of Invention (ROI)?

An Intellectual Property Officer in the UC Davis Technology Transfer Office will be assigned to your invention. The invention will be given a UC case number and may be reported to sponsors or co-inventing institutions, if required. After evaluating the invention for patentability and commercial potential, a patent application may be filed. If the invention is ready to be marketed, the UC Davis Technology Transfer Office will develop a non-confidential description (NCD) of your invention for marketing purposes. A list of companies that may be interested in licensing the invention will be compiled from many sources. Perhaps the most important of these sources are referrals from the inventors themselves. These companies will be given the NCD and any public publications. Any third party who desires detailed, confidential information will be required to sign our standard confidential disclosure agreement.

Who should be listed as “inventors”?

Unlike authorship of a scientific publication, inventorship is determined in accordance with U.S. patent law. It is not uncommon for the inventors on a patent application to not be the same as the authors on a corresponding scientific publication. A lawful inventor is one who makes an inventive contribution to one or more of the patent claims that formally define the invention. Someone who provides equipment, space or money, no matter how critical to the development of the invention, is not an inventor. Also, someone who only performs work under the supervision of another party is not an inventor, even though that person may have worked long hours or conducted a critical experiment. An issued patent that fails to correctly and completely name the inventors may be ruled invalid under certain circumstances. Because patent claims may change as the patent application is being drafted and also while it is undergoing prosecution by the patent office, the names of the inventors may change as well. For the purposes of filing your Record of Invention (ROI) form with the UC Davis Technology Transfer Office, simply name as inventors any individuals who you believe have made a creative contribution to the invention (a creative contribution may include contributing a seminal idea towards the conception of the invention or overcoming a technical hurdle in the reduction to practice of the invention). Your Intellectual Property Officer can provide you with a brief description of inventorship and a few relevant guidelines. When necessary, the UC Davis Technology Transfer Office will retain outside patent counsel to determine inventorship.

I made an invention on my own time without university resources. Can I commercialize my invention myself?

Under the Patent Acknowledgment, you agreed to disclose all inventions – even those made on your own time or as a consultant – to the UC Davis Technology Transfer Office so that the UC Davis Technology Transfer Office can determine if the university has any rights to the invention. You will be entitled to own your invention if: a) you made the invention without using any university facilities or resources, b) the invention is not subject to a third party obligation, such as a sponsored research grant, and c) the subject matter of the invention falls outside the scope of the subject matter of the research conducted by you and your immediate work group. If the university has no rights to your invention, the UC Davis Technology Transfer Office will, at your request, provide you with a non-assert letter.

I am thinking of starting a company that will focus on the technology developed in my lab. Should I contact anyone at the university?

The UC Davis Technology Transfer Office is available to discuss your plans to receive future research funding at UC Davis related to company’s business interests, and how this might impact your plans to found the company. If your company is interested in licensing the rights to this invention, this may create a potential conflict of interest under the California Political Reform Act of 1974. UC Davis has procedures to help mitigate this conflict. To start, your Intellectual Property Officer (IPO) will as you to file a Record of Invention form with The UC Davis Technology Transfer Office. The IPO handling your case will determine the appropriate licensing strategy for this technology which may or may not include licensing to your start-up. The IPO has an obligation to seek the best means to commercialize the invention for the benefit of the public.

I want to copyright something. Where do I start?

While all intellectual property is handled differently, copyrights happen automatically now – you don’t have to actually do anything to get one. Learn more about copyrights here.

What’s the difference between copyrights, patents and trademarks?

Put simply, the three protect different aspects of the products of our minds, hence the name intellectual property. Patents protect ideas. Copyrights protect original expressions of those ideas. And trademarks protect the value associated with things like name, slogans, and logos associated with a commercial product which is often associated with something patented or protected by copyright.

What works are protected by copyright?

Copyright protects “original works of authorship” that are “fixed in any tangible medium of expression…” This means literary works, including software and web pages; musical works (including words); dramatic works (including music); pantomimes and choreography; pictorial, graphic and sculptural works; motion pictures and audiovisual works; sound recordings; and architecture.

Ephemeral works such as unrecorded speech, music or dance are not fixed in a tangible medium and so are not protected by copyright, although the prewritten text to a lecture would be. A simple way to protect your creativity is to record it!

Material that is not eligible for copyright protection includes ideas, facts, procedures, processes, systems, and concepts, although those might be patentable; nor titles, short phrases, and names, which might be trademarks; nor works containing no original authorship, works with expired copyrights, and works created by U.S. government employees in the performance of their jobs. Material that is not protected by copyright is in the Public Domain and can be freely used, including for the creation of new copyright-protected works.

Who owns copyrights?

It depends! Ownership can be complex, especially in a research institution. You can find great information on ownership of works whose creation is some way associated with the University of California go here.

How long do copyrights last?

The answer to this has changed several times since the first US Copyright Act in 1790. The earliest protection lasted 14 years from registration. As of January 1, 1978, copyrights spring into being automatically and last for the life of the author plus 70 years, and it can be longer for unpublished or corporate works.

To make it more complicated, in the past some works which would otherwise qualify for copyright protection actually didn’t because some formality such as registering with the Copyright Office or including a copyright notice was skipped; these are said to have gone straight to the Public Domain. To be safe, assume that all types of works which can be protected, are protected, even if there’s no copyright notice, and be particularly careful with new media such as material on the Internet.

Do I need to do anything before I distribute UC Davis’s copyrighted work?

Of course! Sharing copyright-protected work that belongs to The Regents of the University of California requires thoughtful consideration, but can be simple and quick if you plan ahead, as many necessary steps are easier to do as the material is created rather than after-the-fact. For more information email our team at [email protected].

I want to ‘open source’ my software. How do I do that?

“Open Source” (or OS) is a commonly misunderstood term; it means simply that the software source code is available. The conditions – shareability, commercial or nonprofit use limits, cost – are in the copyright license that goes with the particular code. There are hundreds of “official” open source licenses, each with different terms and conditions.