Patents and Licensing
Table of Contents
It is the obligation of all University of California employees to disclose to the
University any invention or discovery which they conceived or developed while employed
by the University or during the course of utilization of University facilities or
in any connection with the receipt of a gift, grant or contract research funds received
through the University. See UC Patent Policy and Patent Acknowledgement at:
http://www.ucop.edu/ott/patentpolicy
If you believe you may have a potential, commercially viable invention, you may
document this through use of the
Record of Invention (ROI) form. An ROI form with original signatures should
be sent to Nora Hackett, Office of the Vice Chancellor for Research at UCR.
An invention is considered to be complete when it is:
Conceived - Formation in the inventor's mind of a complete and operative
idea, the means by which a problem is solved or a result obtained. Conception is
a mental process.
and
Reduced to Practice:
- Actual - Involves the successful physical demonstration of the invention,
testing its physical embodiment to determine if it performs as contemplated.
- Constructive - Involves only the formal descriptive filing in the U.S. Patent
& Trademark Office of a patent application describing the invention without
its actually having been made or tested. A Patent Examiner may issue a patent based
upon this description.
Inventorship
Anyone who contributes to the conception or idea of the invention is named an inventor.
The inventor may also participate in the required reduction to practice. Inventorship
is a legal determination.
Joint inventors or the party to which they are obligated to assign are joint owners
of invention property, each having an equal and undivided interest in the invention.
All invention disclosure forms should be completed and routed through the Office
of Technology Commercialization located in the Office of the Vice Chancellor for
Research, 200 University Office Bldg. Invention Disclosures must be signed by the
inventors as well as two technical witnesses who have read and understood the Disclosure
and Record of Invention Form.
The OIPS provides information about obligations to sponsors of the research.
The OIPS forwards the completed invention disclosure to the Office of Technology
Transfer (OTT) where the review process will begin and a Licensing Officer will
be assigned to your case.
The OTT Licensing Officer conducts an in-house patentability and licensing assessment
and initiates marketing of the property. This assessment can take sometimes up to
several months before a fully informed decision can be made. The UC Riverside Office
of Technology Commercialization will do everything it can to keep the inventor(s)
informed during the review process and advise of any new developments which may
require more prolonged evaluation. The Licensing Officer will contact the inventor
if additional information is needed.
CAUTION!
Public disclosure of the invention, in any manner, before the date that a formal
patent application is actually filed in a national patent office, automatically
destroys patent rights in most foreign countries. While United States patent law
allows inventors up to one year to file a patent application after the first printed
publication, public use or sale, - the loss of foreign patent rights is immediate
upon public disclosure prior to filing a patent application. Availability of foreign
patent rights is often very important to potential industrial licenses.
While the decision to publish is within your discretion, this could be detrimental
both to the University's and your own interests. You must notify our office, preferably
well in advance, if you intend to publish, present a paper or disclose this invention
in any manner to others outside the University, prior to examination of the disclosure
material and a University decision about filing a patent application.
What is a patent?
A patent is a government grant, for a 20 year period, of the rights TO EXCLUDE OTHERS
from making, using or selling the substance of your invention.
To be patentable, an invention must be:
- Novel - Must not be known or used by others, patented, or described in a
printed publication.
- Useful - Must have legal and moral use
- Non-obvious - Must not be logically deducible from things known or obvious
to one of ordinary skill "in the art" to which the subject matter relates
Why seek Patent Protection?
- Patent system is designed to disseminate new and useful knowledge
- Provide incentives for companies to invest in new technology
- Companies develop new ideas
- Practical application of new ideas in products for the public
- Meet patent-related obligations to research sponsors
- Project licensing revenues for UC research and education
- Incentives for inventor participation
Licensing of patented inventions to business and industry is often a key step in
what is called "Technology Transfer". The conversion of ideas into commerce has
become a national priority.
Changes in federal law, the Bayh-Dole Act (1980-1982), gave Universities new power
to control and develop ideas created in federally funded faculty research by giving
them the right to seek patents to inventions developed in their research programs.
(www.ucop.edu/ott/bayh.html) Previously,
the government claimed ownership of inventions derived from federally funded projects
and they were rarely licensed or commercialized.
Seeing great economic potential, many universities moved to capitalize on those
new powers by more aggressively licensing their patents to business. In general,
industry is unlikely to develop an idea without the exclusive rights to make and
sell a product or service through a licensing arrangement that protects them
against competition while they invest resources to bring the product to the marketplace.
Why is the University in the business of licensing its inventions?
- Transfer research results to the public benefit
- Meet sponsor obligations
- Generate revenue for University Research programs
- Inventor incentives
- Build industry research partnerships to enhance research and education
For UC Riverside inventions, The UC Office of Technology Transfer coordinates all
licensing contacts and identifies qualified commercial licensees. Licensing considerations
may include:
- Type of Technology
- Development stage
- Potential market
- Anticipated profit margin
- Perceived risk
- Strength of patents
- Projected cost to bring to market.
Links
OTT Faculty Resources
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