What if the University is not interested in or does not own the invention?
If the University determines that it does not own an invention (such as when it was made outside of university duties and with only de minimus use of university facilities post-docs, research staff, or students employed by the university; and without use of gift, grant or funding in contracts received through the university), or concludes that it is not interested in patenting and licensing an invention, then the invention must be offered to the sponsor of the research (often the U.S. government). If no sponsor obligations exist then the OTL may waive title to...
Will the University license my invention to a startup company that I founded?
The many start up companies that Berkeley employees have founded to commercialize Berkeley technology have made tremendous contributions to the local and State economies. The University has as obligation to license a given technology to the best qualified company, and to comply with the University and State conflict of interest and conflict of commitment rules. The best choice of licensee is often the company with the requisite expertise, and such expertise is often possessed only by one or more of the inventors. Faculty inventor entrepreneurs have successfully balanced their duties...
What is a patent and what is the consequence of patenting at the University?
A patent is a property right that protects an invention. A patent allows its owner to prevent others from commercially exploiting the patented invention. Patenting does not preclude publishing, on the contrary, it requires full disclosure of what it is that others may not do for the life of the patent, in the absence of a license to (or ownership of) the patent. Three types of patents may be obtained: utility, design, and plant.
Patents owned by the University are responsibly licensed in a way that protects the University's goals of basic research, education, and public service,...
How are Berkeley's inventions and other discoveries commercialized?
Inventions are commercialized through licenses. The Berkeley OTL licenses Berkeley's patent rights, personal property rights, and certain copyrights to companies for commercial development. Technology licenses grant companies the right to sell goods and services based on the University's inventions in exchange for fair compensation to the University. Licenses can be exclusive, nonexclusive, co-exclusive, and can also be limited in duration, specific geography, or particular purpose. Regardless of the type of license, the University retains the right to continue to practice the inventions,...
Your input into the process of finding the best match between the invention (or software/copyrights) and a private sector licensee is welcome, as your web of research relationships and even personal consulting relationships are often vital to reaching the right decision makers in industry. Conflict-of-interest in licensing policies don't allow you to make unilateral decisions, but by effectively partnering with you we can usually find a good match for the IP rights by finding licensees that fulfill the mission of translating great research into useful products and services that...
What happens to my disclosure after it is submitted?
Rights management:After a disclosure is received by the OTL, federal and other sponsors of the research program that led to the invention are notified (as is required by law), and the disclosure is assigned to a member of the licensing staff. That individual becomes the primary contact person for the inventor and manages the processes of: (a) determining the invention's ownership, third party rights and obligations, (b) evaluating the invention's commercial and patent/copyright potential, (c) assessing licensing prospects, and (d) prosecuting patents.
An inventor is anyone who actually conceives an invention and/or has contributed to conception of an invention with another inventor. All inventors need not make equal contributions. Inventorship is a legal determination made by a patent attorney and is not the same as authorship on a scientific paper.
Employees of the University have an obligation to disclose their inventions in writing to the Office of Technology Licensing. The IPIRA website provides links for disclosing your invention or copyrightable work as well as information about the process for disclosing an invention, tangible material, copyrightable software, multimedia (including software), or technical data.
Due to restrictions on patenting, if a disclosure is made to the OTL after it has been publicly disseminated in an enabling way...
An invention is a development that is a new, useful, and unobvious process, machine, algorithm, manufacture, or composition of matter, or any new and useful improvement thereof.
In general, an invention is a form of intellectual property that is, or may be patentable under Title 35 of the United States Code (the so-called patent statute).
Intellectual property (IP) refers to a category of intangible property rights comprising primarily patents, copyright, trademarks, and trade secrets.
Review the UCOP IP Essentials for Academic Researchers for an interactive overview about each of the various types of IP and how they are protected, as well as the IP rights and responsibilities of researchers.
My research group is planning to release some or all of our work under an open source license. Should we talk to OTL before we start the project?
Yes, this is a good idea, just as it is with any software development project. For open source licensing plans, in particular, it will be important to determine whether you need informed consent from all UCB authors and to check for conflicting license terms. In addition, it is important to understand the open source licensing model you have chosen, as the licenses vary widely in their implications and may force you and future project participants to accept certain obligations regarding the use and distribution of any modification to the code. The OTL can help you answer questions...
My research group will be starting a software development project soon. Should we talk to OTL before we start the project?
Yes, it is a good idea to make certain arrangements beforehand if you plan to use a particular distribution model to ensure your ability to easily distribute the code in a manner consistent with your goals for the project. For example, if you plan to distribute under a license that will preclude authors from realizing their right to share potential revenue from licensing the resulting software, then the project needs the informed participation of all authors and concurrence of any other owners. OTL can work with you to obtain the informed participation and concurrence. OTL...
I have developed some software and would like to release it under an open source software license. How can I do this?
Fill out the software disclosure form. Please indicate the type of open source license under which you want to release your software. The academic license commonly used at Berkeley may be viewed. The OTL will work to quickly determine any possible encumbrances and will work with you to release the software under your chosen license or another appropriate license that meets your goals. Please make sure, however, that all authors of the software sign the completed form before submitting it to the OTL. If you are planning to release software into an existing collaborative project, you...
What are some open source licenses that are commonly used by the UCB community, and where can I obtain a copy?
Different types of projects may favor different kinds of open source licenses. You may want to check with others in your department or field of study to find out what types are commonly used. If you are planning to release software into an existing collaborative project, you may find that a license has already been chosen. If this is the case, it is a good idea to check with the OTL before committing to the project. The OTL can work with you to help you choose an appropriate open source license and provide you with an example of the open source license document. Some licenses that...
Open source is a term that loosely describes software that is licensed under terms that allow the user of the software to look at the source code and modify it, and to distribute the modifications. Beyond these general characteristics, open source licenses vary widely in their requirements. Some open source licenses (for example, the BSD license) allow modifications to be kept proprietary; some (such as the General Public License, or...
If the University licenses software to a company, will I still be able to use it in research?
Yes. All commercial licenses reserve to University researchers the right to continue using the licensed software authored while employed by the University and subject to UC Copyright Policy for research and educational purposes.
Can software be released under more than one type of license? When would this be a good idea?
Software may be released simultaneously under several different types of licenses. For example, software may be released as object code for one purpose and as source code for another application, or may be released at one fee for commercial users and at a reduced fee or for no charge under a license that allows only academic use. Some sections of the code could be released under an open source license and the entire code under a traditional proprietary license. Software may be licensed to one user for internal use only, but a license to another user may allow external distribution of...
Which types of licensing models can I use to distribute the software I have developed at Berkeley?
There are many different types of licenses that can be used to release software, depending on the form in which the code is being released (source or object), what rights the licensee will have in the software, and whether the software is protected by patent as well as copyright. Options include licenses that allow commercial use, licenses that allow only non-commercial or academic use, open source licenses, and many others. The OTL can work with the authors/inventors to determine the licensing program that best meets your needs.
If I want to release software under an open source license, how long will the OTL evaluation take?
If the software disclosure indicates the authors' preference for a specific form of distribution, such as distribution under an open source license, the University's evaluation of the software would consist primarily of determining third party rights, the most appropriate form of intellectual property protection, whether the software can legally be distributed as requested by the authors, and obtaining concurrence of any co-owners of the software. If the distribution method affects the authors' right to a share of revenue in accordance with campus policies, OTL needs to confirm the...
OTL works with the authors to determine ownership and third party rights, and to evaluate the software for commercial value and the most appropriate form of distribution and intellectual property protection. Determination of ownership and rights involves sorting out authors from other contributors, determining the employment status of the authors and contributors, establishing whether works are "works made for hire" or made through independent effort, and considering whether a work is a joint work, a compilation, a derivative work or uses pre-existing content owned by others. OTL...
Software is disclosed by submitting to the Berkeley IPIRA Office of Technology Licensing a brief description of the software along with information about the authors and sources of sponsorship utilized in creating the software, related software such as underlying works and derivative works, and an indication of how the authors would like to release the software. This disclosure may be downloaded from the IPIRA web site.
Do I need to disclosure the software I have developed to the OTL? If so, why?
Software should be disclosed to OTL before it is distributed outside the University, so that the University can determine under which conditions the software may be legally distributed. Also, disclosure may be required by the contract under which the software was developed, or may be required by a co-owner of the software. Software that embodies a patentable invention may have additional disclosure requirements under federal statute or under the development contract that funded the creation of the software.
The UC Copyright Policy provides that the University owns software developed using University resources, funds and facilities. If the software embodies a patentable invention, there may be additional ownership issues to consider.
Which laws and University policies govern the disclosure and release of software?
Primarily, software is governed by the UC Copyright Policy (and any local copyright policies implemented by the campus) and the UC Patent Policy. The UC Copyright Policy specifies ownership of various categories of copyrighted works and provides for the sharing of licensing revenues received by the University with the authors of copyrighted works as determined by local campus policies. Under the UC Patent Policy, as a condition of their employment, employees agree to disclose potentially patentable inventions made during the term of their employment, and to assign their rights to the...
Who owns software that I have developed while working at the University?
Under the UC Copyright policy, with some exceptions called out in the policy, the University owns software that is produced by its employees in the course and scope of their employment, and software that is produced with the use of University facilities or funds, and software that is produced by or through the University in the performance of a written agreement between the University and a sponsor. Software that embodies a patentable invention is also subject to the UC Patent Policy. For software governed by both policies, the UC Patent Policy takes precedence.
What is the difference between patenting and copyrighting software?
Patents and copyrights are two different types of intellectual property rights. U.S. patent law gives the patent holder the right to prevent others from making, using, selling or importing a program that performs the same function or process as the patented software, even if the code is entirely different from the patented software, whereas copyright law protects only the code as it is written. It is possible to protect some software under both copyright and patent law. Another significant difference between patent and copyright for software is in the definition of an inventor versus...
The "author" of software is generally the original creator or creators of the code (note that a piece of software may have several different authors). The author(s) own(s) the copyright in the program. Under U.S. Copyright Law, when software is created in the course of the creator's employment, however, the employing institution (such as a company or academic institution) is considered the "author" of the code for copyright purposes under the "work made for hire" doctrine. This means that the institution owns the copyright, rather than the individual creator(s). Consistent with U.S....
Copyright, a form of intellectual property law, protects the expression of original ideas, but not the ideas themselves.
Copyright protects original works of authorship, such as software source code, manuals, survey instruments, and videos, when they are fixed in a tangible medium of expression. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
Copyright gives a copyright holder exclusive rights in some uses of the copyrighted work....
A Data Use Agreement is required when receiving non public data from a third party including where the receipt of data bears restrictions on use, sharing, confidentiality, publication, or other legal terms and conditions.
A Data Access Agreement is required to gain access to another party's secure data site to use the data there; no data transfer takes place.
What is the difference between data use and data access?
Research Data Use Agreements (DUAs) govern access to and treatment of data provided by an outside organization to Berkeley for use in Berkeley research.
Similar to a Data Use Agreement, a Data Access Agreement (DAA) is an agreement used to gain access to another party's secure data site to use the data there; no data transfer takes place. To have your DUA or DAA reviewed, contact the Industry Alliances Office.
When do I need an Institutional Review Board review for my data agreement?
Consult with the UC Berkeley Office for Protection of Human Subjects (OPHS) Committee for the Protection of Human Subjects (CPHS) for guidance on what needs CPHS/OPHS Review
Confidentiality: When confidential information is exchanged along with the material, the company may request that such information not be further disclosed. If the information is necessary for interpretation of the research results obtained using the material, that same information may also be required for publication of those results. Having agreed to hold the information confidential could prohibit an investigator from ever publishing the results of work using the company’s material.
Delay in publication: In order to protect potentially patentable...
MTAs for live animals or custom antibodies must have protocol(s) reviewed and approved by the Animal Care and Use Committee.
MTAs for human tissue must have protocol(s) reviewed by the Committee for the Protection of Human Subjects.
MTAs for hazardous materials and/or select agents must follow EH&S compliance procedures.
MTAs where the decision to undertake the research is based on receiving access to the material(s) from a nongovernmental provider must follow Conflict of Interest Committee requirements for financial disclosure.
How do I request an MTA for outgoing materials - materials leaving UC Berkeley?
In order to start the MTA process for outgoing materials, start by filling out the outgoing MTA request form. This form will ask you to provide the following information:
Does the material belong to UC Berkeley? Or was it acquired in-part or in-whole from a third party? If so, under what arrangement and from whom (i.e., under an MTA, informal transfer, purchased, etc). Was the original Berkeley material modified with third party material? If it is UC Berkeley material, is it covered under an invention disclosed...
Since the winter of 2015, Berkeley has been transitioning from a paper-based MTA request process to an online-based form in Phoebe. CSS/Department Research Administrators are encouraged to use Phoebe for all new MTAs for incoming materials. Contact IAO with any questions about MTAs and [email protected] for Phoebe-related questions.
How do I set up an MTA for incoming materials for the first time?
Register with the Industry Alliance Office by completing the registration form. The Principal Investigators and their Administrative Assistant must sign a completed MTA Registration Form and return it to the IAO. Afterwards, either the PI or the registered Assistant can submit an MTA Request Form electronically without it having to be signed.
Fully complete the MTA Request Form for incoming materials and email it to ...
A Material Transfer Agreement (MTA) is an agreement between the University and a provider that covers receipt of research materials, software used in research, and research data from the provider (which may be another institution, company, laboratory, or agency). All MTA requests for incoming materials or data are routed to the Industry Alliances Office (IAO) for negotiation and execution.
Do I need to disclose my startup advising to the university?
If you are receiving compensation (e.g. cash or equity) in return for advising a startup, then it’s considered a Category II activity, and accordingly, you need to annually report this activity to the university.
If you are not receiving compensation for your advising, then the activity is not likely to incur the time and responsibility required to merit annual disclosure to the university.
Here’s a good summary of the different categories of activity, and corresponding policies:
If my startup advising results in IP, then what should I do, and who owns it?
Under UC policy, employees agree to disclose to the university their development of patentable inventions and copyrightable software. Furthermore, UC can take an ownership interest in any resulting patent rights or software copyrights if the activity that led to the intellectual property: (a) was funded via the university, (b) used material university resources, or (c) is part of the scope of work of the university employee.
Your advising to startups is not likely to be funded via the university, or use material university resources. Nonetheless, if you develop inventions or...
Do I need to be aware of any conflicts of interest or conflicts of commitment?
Simply advising startup companies doesn’t create a conflict. However, conflicts can arise if, for example: (a) you or the startup conduct commercial work in your lab, or (b) you are compensated by the startup and advise the startup more than the allowable number of days.
Should I sign a confidentiality agreement with the startup, and what should I know about consulting agreements?
Signing confidential agreements could limit your future ability to publish, collaborate, or even perform sponsored research. Consequently, it’s not a good practice to sign confidentiality agreements, and you should be judicious about what confidential information encumbers you.
IPIRA can provide a set of provisions that are recommended as best practices for including in a consulting agreement between faculty and a company.
What are the most common types of agreements used for commercialization of intellectual property and industry collaborations?
License Agreement
A license agreement provides a company the right to commercially use intellectual property such as a patent or copyright. The agreement spells out the financial and legal terms under which the University grants the licensee rights to commercially utilize this intellectual property so as to benefit society and the general economy.
Option Agreement
An option agreement provides a company a time-limited right to obtain a full license agreement by “exercising” the option to obtain this license. Options are typically used...
