Office of Research > UC Davis InnovationAccess

Patent Services

Technology Transfer manages the process of filing and prosecuting the necessary patents for UC Davis's intellectual property, including both domestic and foreign patents:

• U.S. Patent Process
• Foreign Patent Process
• Maintaining Records and Avoiding Public Disclosure

U.S. Patent Process

The patent process begins with the Record of Invention (ROI) (DOC | PDF | RTF). Inventor(s) are invited to contact Technology Transfer early in this process for guidance and assistance. Once Technology Transfer has reviewed the ROI, and determined that a patent application is appropriate, the preference is to first market the invention. For details on this, please see Licensing Services.

Typically a U.S. patent application is prepared and filed at an early stage. U.S. patents may be issued for utility, design or plant inventions. Plant Variety Protection Certificates may also be obtained for plants, which are sexually reproduced or tuber propagated.

There are two principal types of U.S. patent applications: the provisional patent application and the non-provisional (or conventional) patent application. The provisional patent application is not processed but provides a filing priority date for up to 12 months, until a non-provisional patent application is filed. The non-provisional patent application may be the first filing or may result from conversion within twelve months of the filing of the provisional patent application.

External law firms, approved by the UC Office of General Counsel, always conduct the filing of patent applications while Technology Transfer assumes responsibility for managing this process.

A patent is property that may be sold or licensed and since individual governments issue a patent, it is territorial. A patent must demonstrate:

• utility,
• novelty, and
• a lack of obviousness "to one of ordinary skill in the art."

It describes the invention, teaches how to practice the invention and must reveal the best mode for using the invention. A patent’s value lies in what it claims as the invention.

Each inventor must make an intellectual contribution to at least one patent claim. Thus, persons who qualify as co-authors on a publication or public presentation, but served only to perform the directives of the true inventor(s), are not considered inventors. Inventorship is determined by a legal process conducted by the patent attorney.

Upon notification of the allowance of a patent, issuance fees must be paid. These typically are only good for 3-5 years, depending on the country. At their expiration, if the patent is to be maintained, extension fees (e.g., maintenance fees or annuities) must be paid which often increase in cost over the life of the patent. Under current patent law a patent term starts on the date of filing and runs for up to 20 years.

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Foreign Patents

If foreign patents are desired, a PCT (Patent Cooperation Treaty) application is typically used, but must be filed within twelve months of the initial U.S. filing. Since the University’s revenues for patent prosecution are limited, foreign filing will normally occur only if a license agreement has been executed with a firm that agrees to cover these expenses.

Within 18 months of the initial U.S. patent filing, the application is normally published in the U.S. and is also published abroad if a foreign filing is made. The PCT publication starts a twelve-month waiting period for foreign processing. In the U.S. patent prosecution may already be underway. After a required waiting period for a PCT application, patent prosecution will follow in the designated foreign countries. Thus, typically, foreign patent applications don’t enter the prosecution process until 30 months after initial U.S. filing. A U.S. patent may have already issued in this time.

Upon entering the national phase (country by country) for a PCT application, the application must generally be translated into the native language of the country in which prosecution will occur. The lack of trade barriers across the European Union makes filing in each country necessary and expensive.

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Maintaining Records and Avoiding Public Disclosure

Since U.S. patent policy rewards an inventor who is the first to invent, the maintenance of good laboratory records is important. Experiments should be written out and explained in a bound notebook. Data may be maintained in separate folders referenced in the laboratory notebook. Pages of the notebook should be dated and signed regularly and should be periodically witnessed. It is best if they are also periodically witnessed, signed and dated by a knowledgeable colleague who is not likely to be named as a co-inventor. Obviously discussion within a research group is permissible, but discussion with others can be interpreted as public disclosure, including departmental seminars or “enabling” detailed discussions with visitors.

Technology Transfer does not seek to interfere with academic freedom, but care must be taken to protect valuable inventions. As was shown during the pre-1980 era, free dissemination of inventions can lead to a total lack of commercialization that in turn provides no practical benefit to the public. These are thorny intellectual issues. For example, what you may think of as not qualifying as a significant invention, may in fact be of considerable value and only through the patent and commercialization process will others benefit. If you have questions, please confer with Technology Transfer.

The best way to avoid public disclosure is to not discuss your experiments in a manner that others can readily duplicate. If you seek advice from outsiders, then a Confidentiality Agreement may be needed. In any discussions with representatives from companies it is always good practice to have Technology Transfer put a Confidentiality Agreement in place. Again, if you have questions or doubts, confer with us first.

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