Disclosing Your Innovations and Copyrightable Materials

Technology licensing and transfer maybe a complicated process and many researchers may feel lost once they disclose their innovations to us. We hope the following overview will help to de-mystify the process.

The First Step

Making a disclosure of a new innovation to TTO is a relatively easy process. You can download the disclosure form (one for inventions and a different one for copyright materials). While preparing the form, please feel free to append the disclosure form with any manuscripts, meeting abstracts, grant proposals, and/or the latest data (text, tables, figures in any medium) so we may appreciate the quality of your new innovation as much as possible. Please return the completed form electronically to invent@ucsd.edu, by fax to (858) 534-7345) or hard-copy to Mail code 0910 (if an electronic copy is sent, please send the disclosure, with executed signature page, to Mail code 0910).

After a disclosure is received by TTO, it initiates a chain of activities, including interactions with the discloser and other administrative units on campus and beyond.

Record Establishment

TTO's Disclosure Management Group will assign the disclosure a "case number" or a "docket number" with designations indicating that the intellectual property (i) originates from work at the San Diego campus; (ii) whether it discloses an "invention" or a "copyright" material; (iii) the fiscal year the disclosure is made; and (iv) a serial number indicating the timing of the disclosure received by TTO. A typical docket number for a San Diego disclosure will appear as SDYYYY-XXX with "SD" signifying "San Diego campus", "YYYY" indicating the fiscal year the disclosure is made , and "XXX" the serial number indicating the sequence of disclosure received by this office. Since the office manages thousands of disclosure records through the years, providing a specific "case number" or "docket number" along with any of your correspondence or communication with us always helps us to be on the same page with you and saves time.

Identifying Third Party Obligations and Patent

The Disclosure Management Group will then research the disclosure on issues related to:

(i) whether the work leading to the development of the intellectual property was/is sponsored by a third party and to determine from the sponsor agreement whether the sponsor has any pre-negotiated "sponsor rights" that the university is obliged to fulfill;

(ii) inventorship and authorship to determine whether the intellectual property should be solely owned by the Regents of the University of California or jointly owned with a third party due to "co-inventorship" or "co-authorship" resulting from collaboration activities;

(iii) proper assignment of the intellectual property to rightful owner(s);

(iv) the necessity to negotiate with any joint owner(s) of the intellectual property for a proper management agreement most often in the form of either an Interinstitutional Agreement or a Royalty-sharing Agreement; and/or

(v) any potential patent bar date triggered by a publication, public disclosure or commercial sale that may make patenting an invention no longer possible.

These activities are the equivalent of a "background check" for the disclosed work and may take time that is not fully under the control of TTO. For example, we often have to contact the payroll office to ascertain a UCSD researcher’s employment status at the University for the relevant time period, or contact the Office of Contract and Grant Administration to obtain a copy of the research contract to confirm the funding source and to review any obligations that the University may have to a sponsor. If an Interinstitutional Agreement is necessary, negotiation with the other party owner may also take considerable time.

Assignment to a Senior Licensing Officer for Case Management

The disclosure is reviewed after receipt by the Assistant Vice Chancellor or an Assistant Director of TTO. It is then assigned to one of the Licensing Officers or Senior Licensing Officers to be included in his/her "portfolio" of cases under his/her management based on a match of the disclosure subject matter and the officer’s technical expertise, business experience and if any, prior interactions with the researchers. From this point on, the licensing officer will be the "key contact" for the researcher(s) of the particular disclosure case and is responsible for providing advice, seeking input, and keeping the researcher(s) updated on the strategy and progress of our intellectual property protection, marketing, and licensing efforts. Any time you have new data or technical development, a new potential licensee contact, an approaching publication date or public disclosure event, another potential application, or information on competing technical advances concerning your disclosed innovation, please make sure you let your licensing officer know so we may coordinate our activities as much as possible.

Once a licensing officer is assigned to your disclosure, s/he will be in contact with you to learn more about your innovation. Together, you will design a course of actions relating to the marketing and licensing of the innovation. From time to time, the licensing officer will also make recommendations to the Assistant Vice Chancellor concerning the statutory protection the innovation may need based on the perceived market value of the innovation, the approaching statutory bar date or activity, the cost/benefit of the protection, and the likelihood of successful protection. The Assistant Vice Chancellor will then make a decision based on the budgetary situation, the past experience on work by the researchers and the licensing officer, the developmental stage of the innovation, and the overall market environment for the innovation.

For more information concerning disclosure of your innovations, please contact Doriot Lair at 822-3275 (DLair@ucsd.edu). For an update on the status of any of your disclosed innovations, please contact the Licensing Officer assigned to your innovations. They are listed on our Web site. You may also get the status of your disclosures by checking the UCSD Inventor Portal, please contact our office for your user id and password.