Q: The Office of Innovation and Commercialization (OIC) mission statement refers to “the transfer of UC San Diego innovations for the public benefit.” What does that mean?
In order to benefit the public, UC San Diego innovations need to become useful products or services that the public can use. Our mission is to partner with entities that have an interest in developing our inventions so that they become viable products or services. Conversely, if companies wish to license our innovations, but not develop them in order to discourage competitition, we would not license our innovations to them.
Q: How do the services provided by OIC foster a researcher’s experience?
By managing the intellectual property (IP) disclosed to us, we can enhance the researcher’s experience in many ways, including:
- Leverage an IP license to secure additional funding for the researcher from the licensee.
- Arrange for the researcher to become engaged as an “advisor” to convert an IP license into a product, or arrange for the licensee to collaborate with the researcher.
- Demonstrate to a researcher how his/her academic research applies to real life practices.
- Provide an employment opportunity between a licensee and a graduate student or post-doc who is involved in the research.
Q: How does OIC promote local economic development?
OIC focuses its initial marketing efforts on local companies and entrepreneurs. If a local entity can develop useful products or services from our innovations, they are a preferred customer.
We also give preference to local entrepreneurs who wish to establish a new company in the area. These new companies attract investment dollars, create new high-wage jobs, attract secondary service-providers, and establish a knowledge-based economy in San Diego. Historically, more than one-third of our licenses are granted to companies in the San Diego area.
Q: How many intellectual property disclosures does OIC receive each year?
Currently, OIC receives over 300 new disclosures per year. Approximately 90 percent are inventions and 10 percent are copyrights. This high activity level aptly reflects the innovative culture and outstanding capabilities of UC San Diego researchers.
Q: How is the Technology Transfer Office (OIC) structured?
OIC administers intellectual property developed by UC San Diego researchers and is a part of the UC San Diego campus community (it is not a separate foundation or affiliated corporation). The office is managed by OIC’s Assistant Vice Chancellor who reports to the Vice Chancellor for Research. See the Vice Chancellor for Research organization chart for additional details.
Q: How many people work at OIC?
OIC has a staff of approximately thirty people. There are ten licensing professionals in our licensing and liaisons group—seven in life sciences and three in physical sciences. These individuals work directly with UC San Diego researchers to market and license UC innovations to industry for commercial development. In addition to the licensing and liaisons group, OIC has three other groups. They are the policy, outreach, and disclosure service group (PODS), the patent/intellectual property group, and the finance and operations group. (See the OIC organization chart)
- Policy, Outreach, and Disclosure Services: This group is responsible for docket establishment, sponsor reporting, policy compliance, and outreach activities.
- Intellectual Property: This groups is responsible for patent prosecution, copyright registration, and trademark registration activities.
- Finance and Operations: This group is responsible for contract compliance, accounting functions (including the collection of royalties and fees and distribution of same to the researchers and their academic departments), information systems, and general operations.
Q: What is the educational background and experience of a licensing officer?
Each member of our licensing team has a technical background and hands-on experience in technology management, industrial products, or business development. Biographies of the licensing professionals can be found on our website by clicking on the individual’s name.
Q: Who do I contact at OIC regarding questions about inventions or intellectual property?
If you’ve worked with OIC before, contact the licensing staff member assigned to serve you. If you haven’t worked with OIC yet, send an email to email@example.com and a staff member will contact you.
Q: Does OIC have a patent attorney on staff?
Although OIC has several certified patent professionals on its staff, it retains external attorneys and agents to draft and prosecute the patent applications. This allows us to choose a law firm that is the best match for a specific invention. OIC works with a number of patent firms throughout the country and all are pre-qualified by the General Counsel Office in the UC Office of the President.
Q: What is a public disclosure and why is it important?
Any public disclosure such as a scientific presentation, abstract, or manuscript.
There are strict rules on public disclosure that may negatively impact the ability to obtain patent rights, and the ability to patent inventions may be lost if published without patent protection. Specifically, publishing a description of an idea in an unrestricted fashion such that someone in the same field could recreate the work, means that a public disclosure has been made for patent purposes. This can be as simple as a website posting, a poster presentation, an unrestricted discussion with a company visitor to a UC lab, or publication of an abstract or a journal article.
In the United States, patent law allows for a limited one-year grace period from first public disclosure to file a patent application. After that one-year period, all patent rights in the published material are lost. In most foreign countries, absolute novelty is required when filing a patent application, so any unrestricted public disclosure of inventions will limit or eliminate foreign patent rights.
Q: Do I need to disclose all my inventions to OIC?
If any of the three following criteria apply, then yes. If you receive a paycheck from the university, if you use any university research facilities, or if you receive funding through the university, you must disclose your inventions to OIC, regardless of whether you believe UC should own them.
Q: Who do I contact to get an update on my disclosed invention?
There are two means to locate the information:
- Go to the OIC website and click on the Inventor Portal link. Log on using your password. Once you have logged on, the portal will display a summary of your disclosures and their status.
- Call the licensing officer assigned to serve you.
If you don’t remember the name of your licensing officer, you may email us at firstname.lastname@example.org
The UCSD Inventor Portal will be decommissioned on June 1, 2016. Please contact the licensing officer assigned to your invention case to get updated information on the patent status of inventions disclosed to our office. The following link has contact information for the office: http://invent.ucsd.edu/invent/us/oic-team/oic-directory/
Q: What is a patent?
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. However, your rights may be affected by the rights of other parties who have related patents.
Q: What is the criteria for a patentable invention? How is this determined?
An invention is patentable if it is novel, has utility, and is not obvious to others who work in your field. It must be usable by others who are considered skillful in the field of your invention so that they can use the invention without undue experimentation. Ultimately, it is the patent examiner in the USPTO office who will determine whether an invention satisfies the above requirements.
Q: Who owns a patent?
The inventor usually owns the patent. However, by contracts and by common laws (i.e., employer-employee relationships), the employer generally owns the patents for inventions that are created by their employees. At the University of California, all employees sign a Patent Agreement or a Patent Acknowledgement Form when they are hired by the university. This agreement generally awards ownership rights to the Regents of the University of California. There are few exceptions to this rule.
Q: What is the process for filing a patent at UCSD?
Q: What should I do if I want to send research materials to other researchers?
Instructions and forms are available at the material transfer process website.
Q: May I receive and use research materials from external sources?
Instructions and forms are available at the material transfer process website.
Q: What are the guidelines regarding the ownership and copyright of taped lectures?
Is the faculty member the owner of the material or does he/she share intellectual property rights with the university? This depends on who took the initiative to tape the lecture and what resources were used. For example, if the lecture is taped through the lecturer’s own initiative and does not use university resources, then the lecturer owns the copyright. If the taping of a lecture utilizes university resources, such as funds provided by the university, then the university owns the copyright. If the taping is done by the university with permission from the lecturer, then the university owns the copyright unless, as a condition, the lecturer specifically demands to have ownership of the copyright. A more detailed description of the UC policy regarding this matter may be found at http://www.ucop.edu/ucophome/coordrev/policy/9-25-03policy.pdf.
Q: I have copyrighted work that is owned by UC San Diego. May I allow another university to use it for a “not-for-profit” purpose?
Yes. Please contact OIC and we will give you a simple, one-page “shrink-wrap permission” statement to send to the university that wishes to use your work.
Q: I have a software program that I want to post on the Internet so that other users may download it for “not-for-profit” uses for free. Is this allowed?
Yes. However, OIC has a “click-wrap simple permission statement” that you should post on or before the first page of your downloadable program.
Q: Why do we need “permission” statements when a product or technology is free for others to use?
There are issues other than money to consider; it protects yourself and the university. A permission statement contains several important legal statements, which include:
- Disclaiming any implied or express warranty.
- Disclaiming any liability that may arise from the use of the program.
- It requires the users to acknowledge the copyright is owned by The Regents of the University of California and satisfies a requirement for continued ownership by the university.
Q: Does the university allow the open-source release of software?
It is not UC San Diego’s preferred practice. This is because of the “viral” or “infectious” nature that requires all downstream work to be released in the same manner. However, UC San Diego does allow open-source release when the following conditions are met:
- All involved developers and authors consent to the request in writing.
- There are no conflicting sponsor obligations (e.g. DFAR).
- All developers and authors agree in writing that they will not pursue personal financial benefits from activities related to the use of the open-source released software (this is to comply with conflict-of-interest regulations).
In addition, it should be noted that it is difficult to monitor and enforce the contractual obligations under open-source release.
There are several types of licenses available for open-source software release. UC San Diego will, to the extent possible, use the Berkeley Software Distribution (BSD) license because it does not have the restrictive, evolving nature that is inherent in GPL licenses. The latest proposed version of the GPL also conflicts with UC policies governing patents and copyrights.
Q: I am a non-faculty, staff employee and do not work in a research capacity. Does the University of California own intellectual property rights for a business or product idea that I develop while I am employed by UC San Diego?
That depends on several items. The first relates to the specific job functions you perform at UC San Diego. Secondly, how does the intellectual property relate to those job functions? Also, were UC San Diego resources used in the conception, development, or creation of the intellectual property?
UC intellectual property policies do apply to all UC employees; it is not limited to research employees. For example, if you are hired as a staff architectural designer, your work product and the copyrights that exist in your designs belong to UC although you have no research role.
The answer to this question will depend on the circumstances and facts in each case. A full disclosure to OIC about the intellectual property in question will allow a determination be made in a timely manner.
Q: I am currently participating in the $50K business plan competition where UC San Diego students present their ideas to a board of judges. 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.
Novelty is a legal determination based on patent law and only the U.S. Patent and Trademark Office and the U.S. courts (to settle disputes) can provide a definitive determination. In general, there are two basic elements that may negate novelty and they are publication and obviousness. If nobody else has published the idea, then the applicable criterion is obviousness. The question to ask in this case 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 is highly dependent upon the viewpoint of the patent examiner who processes the patent application, or the judge in court who rules 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, 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 OIC are knowledgeable in patent law and provide advice on the novelty of your idea, they cannot make the official determination.
Q: Is there a UC San Diego biotech incubator?
No, currently UC San Diego does not have a biotech incubator. However, there has been at least one local biotech incubator sponsored by a large pharmaceutical company. Even in the absence of a formal incubator, our entrepreneurial researchers have been involved in, or formed, over one hundred new startup companies and have licensed technologies to company’s in the biotech or hi-tech industries.
OIC licenses technologies to local startups and companies, as well as those in other regions of the country and world. We can provide contacts for local business networks. We also manage a large portfolio of technologies and welcome the opportunity to work with you. Our available biomedical technologies are listed here.