Patents and Licensing
Patents and Licensing
Table of Contents
It is the obligation of all University of California employees
to disclose to the University any invention or discovery which they
conceived or developed while employed by the University or during
the course of utilization of University facilities or in any
connection with the receipt of a gift, grant or contract research
funds received through the University. See UC Patent Policy and Patent Acknowledgement.
If you believe you may have a potential, commercially viable
invention, you may document this through use of the Record of Invention (ROI)
form. An ROI form with original signatures should be sent to
An invention is considered to be complete when it is:
Conceived - Formation in the inventor's mind of a
complete and operative idea, the means by which a problem is solved
or a result obtained. Conception is a mental process.
Reduced to Practice:
- Actual - Involves the successful physical
demonstration of the invention, testing its physical embodiment to
determine if it performs as contemplated.
- Constructive - Involves only the formal
descriptive filing in the U.S. Patent & Trademark Office of a
patent application describing the invention without its actually
having been made or tested. A Patent Examiner may issue a patent
based upon this description.
Anyone who contributes to the conception or idea of the invention
is named an inventor. The inventor may also participate in the
required reduction to practice. Inventorship is a legal
Joint inventors or the party to which they are obligated to assign
are joint owners of invention property, each having an equal and
undivided interest in the invention.
All invention disclosure forms should be completed and routed
through the Office of Technology Commercialization located in the
Office of the Vice Chancellor for Research, 200 University Office
Bldg. Invention Disclosures must be signed by the inventors as well
as two technical witnesses who have read and understood the
Disclosure and Record of Invention Form.
The OIPS provides information about obligations to sponsors of the
research. The OIPS forwards the completed invention
disclosure to the Office of Technology Transfer (OTT) where the
review process will begin and a Licensing Officer will be assigned
to your case.
The OTT Licensing Officer conducts an in-house patentability and
licensing assessment and initiates marketing of the property. This
assessment can take sometimes up to several months before a fully
informed decision can be made. The UC Riverside Office of
Technology Commercialization will do everything it can to keep the
inventor(s) informed during the review process and advise of any
new developments which may require more prolonged evaluation. The
Licensing Officer will contact the inventor if additional
information is needed.
Public disclosure of the invention, in any manner, before the date
that a formal patent application is actually filed in a national
patent office, automatically destroys patent rights in most foreign
countries. While United States patent law allows inventors up to
one year to file a patent application after the first printed
publication, public use or sale, - the loss of foreign patent
rights is immediate upon public disclosure prior to filing a patent
application. Availability of foreign patent rights is often very
important to potential industrial licenses.
While the decision to publish is within your discretion, this
could be detrimental both to the University's and your own
interests. You must notify our office, preferably well in advance,
if you intend to publish, present a paper or disclose this
invention in any manner to others outside the University, prior to
examination of the disclosure material and a University decision
about filing a patent application.
What is a patent?
A patent is a government grant, for a 20 year period, of the
rights TO EXCLUDE OTHERS from making, using or selling the
substance of your invention.
To be patentable, an invention must be:
- Novel - Must not be known or used by others,
patented, or described in a printed publication.
- Useful - Must have legal and moral use
- Non-obvious - Must not be logically deducible
from things known or obvious to one of ordinary skill "in the art"
to which the subject matter relates
Why seek Patent Protection?
- Patent system is designed to disseminate new and useful
- Provide incentives for companies to invest in new
- Companies develop new ideas
- Practical application of new ideas in products for the
- Meet patent-related obligations to research sponsors
- Project licensing revenues for UC research and education
- Incentives for inventor participation
Licensing of patented inventions to business and industry is
often a key step in what is called "Technology Transfer". The
conversion of ideas into commerce has become a national
Changes in federal law, the Bayh-Dole Act (1980-1982), gave
Universities new power to control and develop ideas created in
federally funded faculty research by giving them the right to seek
patents to inventions developed in their research
programs. (www.ucop.edu/ott/bayh.html) Previously,
the government claimed ownership of inventions derived from
federally funded projects and they were rarely licensed or
Seeing great economic potential, many universities moved to
capitalize on those new powers by more aggressively licensing their
patents to business. In general, industry is unlikely to develop an
idea without the exclusive rights to make and sell a product
or service through a licensing arrangement that protects them
against competition while they invest resources to bring the
product to the marketplace.
Why is the University in the business of licensing its
- Transfer research results to the public benefit
- Meet sponsor obligations
- Generate revenue for University Research programs
- Inventor incentives
- Build industry research partnerships to enhance research and
For UC Riverside inventions, The UC Office of Technology
Transfer coordinates all licensing contacts and identifies
qualified commercial licensees. Licensing considerations may
- Type of Technology
- Development stage
- Potential market
- Anticipated profit margin
- Perceived risk
- Strength of patents
- Projected cost to bring to market.