IP Disclosure & Ownership

IP Disclosure & Ownership

Who owns the inventions and discoveries that I create?

All inventions and discoveries conceived or developed at UCLA are assigned to the University of California Regents via the University of California’s Patent Policy and Patent Acknowledgement (“Patent Acknowledgement”), which is signed by employees upon commencement of employment with UCLA.  Ownership of inventions made as a result of research funded by the U.S. Government is also impacted by certain provisions of the Bayh-Dole Act, as further detailed below. 

  1. UC Regents’ Patent Acknowledgement 

Any person who (i) accepts employment with UCLA, or (ii) uses UCLA research facilities (e.g., visiting scientists or other non-UCLA employees), or (iii) receives gift, grant, or contract research funds through UCLA and/or the UC Regents, is required to sign the University of California Oath of Allegiance, Patent Policy, and Patent Acknowledgment (see http://ucnet.universityofcalifornia.edu/forms/pdf/upay-585.pdf), which signature is typically requested by the applicable Human Resources Department upon hire. 

  • The Patent Acknowledgment obligates all such persons to assign to the UC Regents all inventions conceived or developed: 
    • within the course and scope of such employment while employed by UCLA (except those resulting from permissible consulting activities without the use of UCLA research facilities);
    • during the course of using such UCLA research facilities; and/or
    • through any connection with the use of any gift, grant, or contract funds received. 
  • In addition, the Patent Acknowledgement requires such persons to promptly report and disclose the conception and/or reduction to practice of ALL potentially patentable inventions to UCLA’s authorized licensing office, i.e., UCLA’s Technology Development Group (see http://tdg.ucla.edu/submit-invention-report).
  1. Federally Funded Research

In the case of inventions and discoveries arising from federally funded research, the Bayh-Dole Act allows universities and other non-profit institutions to retain ownership of such inventions, provided certain obligations are met.  

  • These obligations include granting the government a license to practice the invention, making efforts to protect and commercialize the discoveries, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability, and sharing any resulting royalties with the inventors.  
  • If the university does not elect to retain title, then control of the invention passes to the Federal agency and, if the agency waives its right to take title to the invention, the agency may allow the inventors to retain title to their inventions.  
What about the data resulting from my research? Who owns it? Can I transfer, license or otherwise commercially exploit it?

It is highly likely ownership resides with The Regents and it cannot be transferred, licensed or exploited without first obtaining specific permission by the appropriate authorities on campus.  While a quick answer to this question would be ideal, it depends upon too many details to go into here.  Please check in with UCLA’s Technology Development Group and they can help direct you to the correct authority, which may include the Chief Information Officer for UCLA Health Sciences.

Do I have to disclose inventions that I make in my spare time or under a consulting agreement?

Yes. All UCLA employees sign a Patent Acknowledgement Agreement that requires them to disclose any potentially patentable inventions, whether or not UC resources are utilized. If, however, the invention is created in your spare time, without using UC resources, and is outside of the scope of your employment, UCLA may relinquish rights to the invention. For more information on consulting, please go to http://tdg.ucla.edu/policies-forms

I think I’ve created an invention. What is the first step?

File an Invention Report through UCLA’s Technology Development Group (http://tdg.ucla.edu/submit-invention-report). 

  • Any person who (i) accepts employment with UCLA, or (ii) uses UCLA research facilities (e.g., visiting scientists or other non-UCLA employees), or (iii) receives gift, grant, or contract research funds through UCLA and/or the UC Regents, is required to promptly report and fully disclose the conception and/or reduction to practice of potentially patentable inventions to the University authorized licensing office (UCLA TDG’s Invention Report template is available at http://tdg.ucla.edu/submit-invention-report). 
    • Note that such persons are obligated to disclose to the licensing office ALL inventions and discoveries, including those made in the course of outside professional activities, e.g., consulting. 
  • The Invention Report is a confidential document that requests a full description of your invention, including how to make and use it, and any supporting experimental data that you have generated.
    • Submitting an Invention Report should occur well before (at least one month, when possible) presenting the discovery through publications, abstracts, poster sessions, conferences, press releases, or other communications. 
    • Presentation or publication of an invention in any form before filing for patent protection may restrict or eliminate the ability to obtain a patent, particularly outside of the United States. 
    • Timely reporting your invention is also crucial to enable UCLA to meet its obligations assumed under legal contractual obligations with regard to intellectual property and is vital to the protection of a valuable intellectual property asset.  With proper safeguarding, your invention can be developed to its fullest capacity. 

UCLA’s TDG greatly appreciates your efforts in making such disclosures as it will help TDG further its mission of creating economic value to support UCLA’s scholarly and educational missions and the State of California.    

How does TDG decide whether to patent and license a technology?

Upon receipt of a disclosure of a technology to TDG, such technology is assigned to the relevant Business Development Officer (BDO) for review and assessment of its patentability and commercial potential.  As necessary, the BDO may contact a patent attorney for a preliminary analysis and/or reach out to industry contacts to assess the level of interest.  If a technology appears to be patentable and possesses a requisite level of commercial potential, then the BDO pursues patenting of the technology and TDG commences its marketing efforts to identify the most ideal industry partners to commercialize the technology.

What are the typical steps in the process?

Research—Research often leads to discoveries and inventions with commercial potential. These discoveries or inventions may comprise intellectual property that would benefit  from  protection  through patents, copyrights, and occasionally trademarks. Early contact with the Technology Development Group (TDG) when you believe you have an invention is important.

Invention Disclosure—Inventions are disclosed to TDG by submitting an Invention Report. This submission formally begins the technology transfer process, although you should feel free to contact us before  you even start to fill out an Invention Report. The Invention Report is a confidential document where we ask that you provide a full description of your invention, including how to make and use it, and any supporting experimental data that you have generated. The Invention Report will  be assigned to a licensing officer, and assigned a tracking number.  TDG will report the invention to sponsors of the research that led to the invention and/or any institutions that may be co-owners, as applicable. You will be notified of this information via email. The Invention Report can be found at http://tdg.ucla.edu/submit-invention-report

Assessment—Our office will work with you to evaluate your invention’s commercial potential, including its novelty and utility, and to help identify potential applications. Faculty inventors can check the status of their invention(s) at any time by going to http://piportal.research.ucla.edu using their UCLA login.

Patent Protection—a provisional patent application may be filed if the invention is sufficiently developed, has commercial potential, appears to be patentable, and where a patent position on the invention will facilitate finding a partner to commercialize the technology.

Marketing—When the invention is ready to be marketed our office will develop marketing materials to help highlight the licensing opportunity   to potential industry partners, which will likely include generating a non- confidential description of your invention. Your input in the development of this one-page document is very valuable as it helps refine and craft the message for industry. A list of target companies, investors, etc. for marketing the invention is compiled from many sources including our contacts database, market research and your industry contacts.

Licensing—A license agreement is a contract between The Regents of the University of California and a third party in which The Regents’ rights to a technology (intellectual property and property rights) are licensed for commercial development and use. In exchange, UCLA and the inventors receive financial remuneration (generally in the form of upfront payments, milestone payments and royalties on the sale of products and services that make it to market). Our office enters into license agreements with both startup and established companies. Often times, prior to entering into a license agreement, we will implement a Letter of Intent (LOI) which is a short term, easy to execute agreement that allows a company to  “lock up” the technology for a short period of time while negotiating the license, raising capital, etc.

How do I know whether I have an “invention”?

An “invention” can be anything from a new material, device, research tool, or mouse model, to a novel algorithm and even a new use for a known drug. We encourage you to contact the Technology Development Group even before filling out an Invention Report, and we can talk through your idea and how we might best proceed.

When should I file an invention disclosure?

It’s never too early to talk to our office about an invention that you think might have commercial potential. You should disclose your invention to TDG before the work is published or publicly presented. Although we may still be able to secure an intellectual property position in the US  if a patent application is filed within one year after a public disclosure,   the ability to secure foreign patent protection is invariably lost. With   some exceptions, submission of a manuscript to a journal is generally not considered a disclosure, but with many journals rapidly publishing online following acceptance, it is important to be aware of the actual publication dates. As always, feel free to contact us before filing an Invention Report or if you have questions as what constitutes a public disclosure.