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Making a disclosure of a new innovation to TechTIPS
is a relatively easy process. You can download the disclosure
form (one for inventions
and a different one for copyright
materials), send us an email
or simply call us
to send you an electronic or a hard copy. 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. Once the form is
completed and returned to us (except for the signature
page, you can do this all electronically or by a hard
copy), what happens next appears to be a mystery to
many UCSD researchers. Technology licensing and transfer
is a complicated process and many researchers feel lost
once they disclose their innovations to us. We hope
the following overview will help to demystify the process.
After a disclosure is received by TechTIPS, it initiates
a chain of activities at the offices and interactions
with the discloser and other administrative units on
campus and beyond.
First, the TechTIPS 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 TechTIPS. A typical docket number
for a San Diego copyright disclosure will appear as
SDCYY-XXX with "SD" signifying "San Diego
campus", the "C" signifying it is for
a "copyright" material, "YY" indicating
the fiscal year the disclosure is made (e.g. 99 for
1999; 01 for 2001), and "XXX" the serial number
indicating the sequence of disclosure received by this
office. If the disclosure is for an invention (e.g.
a new idea of doing things or a new composition matter
etc.) and not a copyright material, the designation
"C" following "SD" will be omitted.
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.
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 TechTIPS. 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.
Once most of the "background information"
is available, the disclosure is reviewed by the Assistant
Vice Chancellor or an Assistant Director of TechTIPS.
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 the licensing officer know so we can
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 or any of the
service managers. They are listed on our Web site.
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