Office of Research > UC Davis InnovationAccess > for UC Davis Community > Information Center > IP Management at UC Davis

IP Management at UC Davis

UC Davis InnovationAccess is responsible for licensing UC Davis's technology to the private sector, to enable commercialization of UC Davis's inventions and return the research to the public for the public's benefit.

Your obligations to disclose inventions to the University

All UC Davis employees and visitors using UC Davis facilities or equipment are required to sign the University of California State Oath of Allegiance, Patent Policy, and Patent Acknowledgement Form (PDF) on their first day at the University. These are then filed by the host department. This obligates the disclosure of inventions to the University.

The Regents consider employees to be 24 hour/day and 7 day/week employees, so all inventions are to be disclosed. UC Davis disclosure obligations dominate any other obligations. In some cases, such as consulting relationships, assignment may be determined to belong to the firm for which the employee is consulting, but disclosure must be made to UC Davis InnovationAccess to make this independent determination.

All patents are assigned to The University of California Regents.

Once you disclose

We look at a number of factors during the technology assesment process related to ownership and patentability, including

• Inventorship
  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 a patent attorney appointed by us.
• Ownership/Joint Patents
  If inventors come from different institutions, the patent is jointly owned. Each owner has undivided rights to practice and license the invention. If the inventors come from other research institutes, we contact our counterparts at their institutes to decide who will manage and market the technology. This agreement is known as an Inter Institutional Agreement.
  If one of the inventors is from a private company, that company automatically has rights to exploit the patent. They become a natural licensee for the university’s rights to the joint invention so that they have exclusive rights to the patent.
• Available Rights
  We look at previous public disclosures to determine if we have any U.S. rights (patent needs to be filed within 12 months of the disclosure) or foreign rights (patent needs to be filed prior to disclosure). Public disclosure is the sharing of enabling information in a non-confidential setting and includes, but is not limited to
  
  • Publication of a research award
  • Online Pre-publication of a journal
  • Indexing of a thesis
  • Posters
  • Presentations
  • Publication in a journal
  • Oral discussion
• Novelty and Non-Obviousness, Conditions For Obtaining A Patent
  In order for an invention to be patentable it must be new as defined in the patent law. The invention must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. Learn more at http://www.uspto.gov/web/offices/pac/doc/general/index.html#novelty.
• Marketability Assessment
  We use multiple secondary and primary resources to understand the market structure and potential of the technology to add needed value. Things that we look at include
  
  • Who are the players and what are their pricing strengths
  • How the technology changes the industry structure
  • The cost factors for the production needs
  • The switching costs for the customer to use the technology

Patent Prosecution

If the invention is patentable and has market potential, we hire an external law firm, approved by the UC Office of General Counsel, to conduct the filing of patent applications while we manage this process. The law firm is typically chosen based on the academic or industry background of their lawyers. The patent attorney and the intellectual property officer assigned to the case will work with you to develop the patent application.

Patent Maintenance

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.

Releasing Rights to Inventors

Where no overriding sponsor rights exist, patent rights may be released to the inventor when the University elects not to file a patent application or to commercialize an invention or when the equity of the situation clearly indicates such release should be given. Even if outside sponsorship is involved, the inventors may be able to obtain rights. University Licensing Office personnel will assist the inventor in these procedures and in the procedures necessary for the inventor to obtain clear title from sponsoring federal agencies, if applicable.

The following two invention release letters have been developed by UC Davis InnovationAccess for UC inventions in which (1) a patent application has been filed or issued (DOC | PDF | RTF) and (2) no patent application has been filed (DOC | PDF | RTF). These letters set forth terms that must minimally be met in order for the University to consider the release of an invention to an inventor. The above notwithstanding, the University, in its sole discretion, reserves the right to final determination of whether or not to release an invention.