FAQs

Q: What does "the transfer of UCSD innovations for the public benefit" in your first mission statement really mean?

A: In order to benefit the public, UCSD innovations must be turned into useful products or services that the public can use. Our mission mandates that we partner with entities that have a genuine interest in, and the capability to develop, our innovations into such products or services. Conversely, if companies are interested in licensing our innovations only to keep them away from competition, we would not license our innovations to them.

Q: How does TechTIPS enhance the research experience of UCSD researchers through technology transfer?

A: By properly managing intellectual property (IP) disclosed to us by our researchers, we can enhance their experience in many ways, including:

1. By licensing the IP to a commercial entity, TechTIPS may be able to leverage the license to secure additional funding for the researcher;

2. Our licensees may wish to engage our researchers as "advisors" to advise them how best to develop the IP into useful products. Such advising activities enhance our researchers' vision of how applicable their research may be in real life and beyond the academic environment;

3. Our licensees may want to collaborate with our researchers;

4. Our researchers may learn from our licensees and potential licensees how academic research may be applied to real life practices; and

5. Our licensees may provide employment opportunities for our graduate students and post-docs.

Q: What does TechTIPS do to promote and target economic development?

A: TechTIPS focuses its initial marketing efforts on local companies and entrepreneurs. To the extent our local businesses can use our innovations gainfully to develop useful products and services, they become our preferred customers. For innovations that are suitable for the formation of new businesses, we work with entrepreneurs to establish new companies in the area. These new companies attract investment dollars into our community, create new high-wage jobs, attract secondary service providers and help to establish a knowledge-based economy in San Diego. Historically, more than one-third of our licenses are granted to companies in the greater San Diego area.

Q: What does "provide financial incentives to researchers" mean in your mission statement?

A: When we license UCSD intellectual property (IP) to commercial entities, TechTIPS strives to negotiate a reasonable consideration that reflects the fair market value of the licensed IP created by our researchers. Under UC policies, the researchers who created the IP would then receive either an inventor share or an author share of the consideration as their personal income. Additionally, UCSD distributes a portion of the consideration received from licensing back to the researchers' laboratories and home departments to support further research activities.

Q: How many new disclosures of intellectual property does TechTIPS receive per year?

A: TechTIPS has been receiving over 300 new disclosures (about 90% inventions and 10% copyrights) per year in the last 5 fiscal years. This high level of activities genuinely reflects the innovative culture and proclivity of our researchers. Quick Facts

Q: How is TechTIPS structured?

A: TechTIPS is part of the university (not a separate foundation or a corporation independent of the university) and reports to the Vice Chancellor for Research. Vice Chancellor-Research Organization Chart

Q: How many people work at TechTIPS?

A: TechTIPS has a staff of under 30 people. There are 10 licensing professionals in our Licensing & Liaisons Group, 7 in life sciences and 3 in physical sciences. They work directly with UCSD researchers and are responsible for marketing and licensing our innovations to industry for commercial development. In addition to the Licensing and Liaisons Group, we have three other groups that contribute to our '4-Wheel Drive' model of intellectual property services at TechTIPS. These other groups are the Policy, Outreach, and Disclosure Service Group (PODS), the Patent/Intellectual Property Group, and the Finance & Operations Group. TechTIPS Organization Chart

PODS is responsible for docket establishment, sponsor reporting, policy compliance, and organizing and staging our outreach activities.

The Patent/Intellectual Property Group is responsible for all patent prosecution, copyright registration, and trademark registration activities.

The Finance & Operations Group is responsible for contract compliance, accounting (this includes collecting royalties and fees and distributing them to our researchers and their academic departments), information systems, and general operations of TechTIPS.

Q: What is the background of TechTIPS licensing staff?

A: All of the licensing professionals have technical backgrounds. They have hands-on experience in technology management and/or in industrial product or business development. Biographies of the licensing professionals with additional details about their technical or business areas of expertise can be found on our website by clicking on the licensing professional's name.

Q: Whom do I contact at TechTIPS with questions about inventions or intellectual property?

A: If you've worked with TechTIPS before, contact the licensing professional previously assigned to serve you. If you haven't worked with TechTIPS yet, send an email to invent@ucsd.edu and an appropriate professional will contact you.

Q: Does TechTIPS have a patent attorney or do they use outside attorneys or patent agents?

A: Although TechTIPS has several certified patent professionals on its staff, it retains external attorneys and agents to draft and prosecute our patent applications. This approach allows us to choose the law firms with the proper expertise that best match the need of our specific inventions that we want to patent. TechTIPS works with a number of patent firms throughout the country and they are all pre-qualified by the General Counsel Office in the UC Office of the President.

Q: Do I have to disclose all my inventions to TechTIPS?

A: If you receive a paycheck from the university, use any university research facilities, or receive funding through the university, you have to disclose all your inventions to TechTIPS regardless of whether you believe UC should own them.

Q: If I want to find out what has happened to an invention I disclosed earlier, what should I do?

A: There are two easy ways -

1. Go to the TechTIPS website and log on using your password-protected Inventor Portal. Once you have successfully logged on, it will provide you a summary of the status of all your disclosures; or

2. Just call the licensing professional (licensing officer) assigned to serve you.

If don't remember your assigned licensing professional, just drop us an email at invent@ucsd.edu

Q: What is a patent?

A: A patent is a time-limited monopoly, granted by the government, to exclude others from making, using, selling, offering for sale, or importing your invention. It does not grant you the affirmative rights to your own invention, as other parties may have other but related patents to exclude you also.

Q: What and who determines if an invention is patentable?

A: An invention is patentable if it is novel, not obvious to any one who is considered skillful in the field of your invention, and has utility. It must also teach how the invention can be practiced such that others who are considered skillful in the field of your invention can use the invention without undue experimentation. Ultimately, it is the patent examiner in the patent office who will determine whether an invention sufficiently satisfies the above requirements and allows a patent to be issued.

Q: Who owns a patent?

A: Said inventor usually owns the patent of its invention. However, by contracts and by common laws (employer-employee relation), the employers usually own the patents of inventions created by their employees by assignment. At the University of California, all employees sign a Patent Agreement or a Patent Acknowledgement Form when they first join the university. These agreements generally confer ownership rights of patents on inventions created by UC employees to the Regents of the University of California except under a few specified circumstances.

Q: What should I do if I want to send research materials to other researchers?

A: Instructions and forms are available at the Material Transfer Process website.

Q: Can I receive materials from the outside and into UCSD?

A: Instructions and forms are available at the Material Transfer Process website.

Q: Can you tell me about guidelines for ownership and copyright of lectures that are taped? Is the faculty member the owner of this material or does he share intellectual property rights with the university?

Q: If I developed some work with copyright that is owned by the university, but I want to allow other universities to use my work and the copyright for not-for-profit purposes freely, is it allowed?

Q: If the work is a software program and I just want to post it on the Internet and allow potential users to download it for not-for-profit uses without all the paperwork, is it allowed?

A: Yes. We have a similar "click-wrap statement" that you can post on or before the first page of your downloadable program.

Q: Why do we bother with the "permission" statement since it is free anyway?

A: It is not all about money. To protect yourself and the university, the permission statement contains several important legal statements that

(i) disclaim any implied or express warranty;
(ii) disclaim any liability that may arise from the use of the program; and
(iii) require the users to acknowledge the copyright is owned by The Regents of the University of California in order to satisfy the requirement for continuing ownership by the university.

Q: Does the university allow open source release of software?

A: Although it is not the university's preferred or default practice because of the "viral" or "infectious" nature that requires all downstream derivative work to continue release in the same manner, UCSD does allow open source release but only if the following conditions are met:

1. All developers/authors involved consent to the request in writing;
2. No conflicting sponsor obligations (e.g. DFAR); and
3. All developers/authors agree in writing that they would not pursue any personal financial benefits from activities related to the use of the open source released software (to be in compliance with conflict of interest regulations).

Additionally, the ability to police and enforce the contractual obligations under open source release is also highly debatable.

There are several types of licenses available for the release of software under open source. UCSD will, to the extent possible, use the BSD (Berkeley Software Distribution) license because it does not have many of the additionally restrictive and unstably evolving nature of the ever-changing versions of the GPL licenses. The latest proposed version of the GPL is also in conflict with UC policies governing patents and copyrights.

Q: I am a staff employee (non-faculty) and do not work in a research role. But I am curious if UC (OP, Regents, SD, etc.) have the intellectual property rights to any ideas (for a business, product, etc.) that I have while employed by the University?

A: That depends on (i) the specific job functions the staff employee is hired to perform at UC, (ii) how the intellectual property to which the intellectual property rights subsist relates to those job functions, and (iii) whether resources from UC are used in the conception, development, or creation of the subject intellectual property.  The UC intellectual property policies apply to all UC employees and not only to employees with a research role.  For example, if you are hired as a staff architectural designer, your work product as well as the copyrights that subsist in your designs belong to UC although you have no research role.  The determination of whether UC has the intellectual property rights to any ideas therefore is very fact and circumstance specific.  A full disclosure to TechTIPS of the intellectual property will allow such a determination be made in a timely manner.

 Q: I am currently participating in the $50K [business plan competition] program where UCSD students present their own new ideas to a judging board. The idea that my group and I have is closely related to a current patent, but still has distinctive differences. I was wondering how novelty can be established and how I might go about determining this. . .

A: Novelty is a legal determination based on patent law; and the only entities that may provide you with a definitive determination are the patent office (for the purpose of allowing and issuing a patent - in the US, it is the US Patent & Trademark Office) and the courts (for the purpose of litigation to settle disputes). In general, there are two basic elements that may negate novelty and they are: publication and obviousness. If neither you nor anybody else has published the idea, then the applicable criterion is obviousness. The question one will have to ask then is "are the distinctive differences not obvious from the current patent and other publications in the eyes of a person who is skilled in the art"? There is not a black and white answer to this. The obviousness analysis for any patent application that you may decide to apply for is highly dependent on the viewpoint of the patent examiner who processes the patent application or the judges who rule in the courts, if your idea results in a patent but is challenged. During the patent prosecution process, there may be "office actions" back and forth allowing the patent applicant(s) to submit arguments and affidavits etc. to persuade the patent examiner. During a court trial, similar evidence may also be presented to persuade the court. Although the professionals at TechTIPS are knowledgeable in patent law and can provide you their advice on the novelty of your idea, they cannot make the official determination.

Q: Is there a UCSD biotech incubator?

A: No, currently UCSD does not have a biotech incubator. There is at least one local biotech incubator sponsored by a large pharmaceutical company. Even in the absence of a formal incubator at UCSD, since 1994 our entrepreneurial researchers have been involved in, or formed, over 100 new startup companies that have licensed university technologies in the biotech or hi-tech fields. TechTIPS licenses technologies to local startups and companies, as well as those in other regions of the country and world, and can provide contacts to local business networks for our partners.

TechTIPS manages a large portfolio of technologies and we welcome the opportunity to work with you on licensing a technology that may be suitable for your business needs. Our available biomedical technologies are listed at http://invent.ucsd.edu/technology/biomedical.htm.