|
With your active participation and help, a desirable outcome for your innovation
is one of more companies take licenses to your innovation. Once a license is executed,
the Contract Compliance group of TechTIPS will play an active role in timely
communications with the licensee to ensure the compliance by the company of the
contract terms. Depending on the type of license granted, TechTIPS may or may not
continue to market your innovation actively. If the license granted is exclusive
in nature and there is no further territory or fields of use available to other
potential industrial partners, TechTIPS will not further market the innovation
since there are no more rights to grant to any third party. If the license is
non-exclusive in nature, or is exclusive only for selected fields of use or territory,
we will continue to market the innovation to other potential licensees and your
continuing support will be necessary.
As hard as we try and work together, occasionally some innovations for various
reasons will fail to find a suitable industrial partner for further development
or commercialization. In such an instance, TechTIPS will manage the innovation
in one of several possible approaches depending on the type of intellectual
property the innovation may be protected and the funding source of the work
from which the innovation arises. If the innovation is protected by copyrights
(copyrights protect creative “expressions” that are fixed in one medium and
will protect software codes, writings, images, graphics, musical and other
creative compositions but NOT ideas), TechTIPS will continue its marketing
effort since copyrights automatically subsist once the innovation is created
or developed and does not have very rigid and specific spending requirements
that impose on the university’s financial position. Trademarks and Service
Marks related to any innovations such as software names and specialized services
offered by UCSD are treated similarly since the protection of such marks does
not have very high spending requirements.
For inventions that are to be protected by patents which will cost over ten
thousands US dollars for each application, TechTIPS takes several different
approaches. If one of the inventors is entrepreneurial and with confidence
in the market value of the invention, TechTIPS may offer to license the invention
to a new business that may be founded by that inventors and will agree to take
very little, if any, up-front cash payments. The new business will, among
other delayed financial terms, have to be responsible for the cost of the patent
application. If none of the inventors is entrepreneurial and desires to form
a new business but at least one of them remains confident in the invention,
TechTIPS can offer to that confident inventor the option of maintaining the
prosecution of the patent with any discretionary fund the inventor may agree
to spend from a university fund account. TechTIPS will enter into a
memorandum of understanding with the inventor and will agree to first
reimburse the fund account any amount that the patent may spend if and
when the invention/patent eventually is licensed and generates any income.
If none of the inventors of an invention elects one of the two options offered
in the previous paragraph, the university may have to
(i) return title of the invention to the Federal Government according to the Bayh-Dole Act
that is codified in the US Patent Law (35 U.S.C.) if the work from which the invention arises is
funded by the Federal Government;
(ii) offer title of the invention to the industrial sponsor of the original work if
the contract so dictates;
(iii) allow invention to be put in the public domain such that it may be used
by all if there is no contractual prohibition to do so; or
(iv) offer to assign the title to one of the inventors (if specifically requested
by the inventor but ONLY if all the other co-inventors, if any, consent to the offer)
if the work is NOT funded by the Federal Government or any industry sponsor which may
assert title rights and if the inventor agrees to in writing:
a. immediately initiate or continue patent prosecution of the invention at
his/her PERSONAL expense (please note that use of any university fund is not allowed);
b. notify the university when and if any patent is issued from the released invention;
c. grant the university the “shop rights” to use the invention and associated patents
with a paid-up, irrevocable and non-exclusive license to use the patented invention; and
d. perform NO further work at the university or with the use of any university
resource to enhance the value of the patented invention.
Please note that for any invention that arises from work funded by the Federal Government, option
(i) above is the ONLY option available to the university according to law. TechTIPS also
strongly advises inventors not to elect the option stated in (iv) above even if it is
available since the election of title by any inventor will result in the PERSONAL ownership
of an invention which in most likelihood will be related to the inventor’s on-going and
future research activities at the university. Personal ownership of such an invention
will raise many conflict of interest issues in the inventor’s future grant and research
activities at the university since such activities may violate the prohibition of using
government resources for personal gain (any act that proves the invention or demonstrates
the invention to work in any manner is an act that may enhance the value of the
invention and therefore may contribute to the personal gain of the title holder
of the invention). Inventor is urged to consult with the Conflict of Interest
Office and the Independent Substantive Review Committee before selecting such an option.
|
