A patent for an invention grants “the right to exclude others from making, using, offering for sale, or selling” the invention or importing the invention into the country where patent rights exist. Patentable subject matter includes new compounds, methods, plants, and software. Obtaining a patent can take many years and significant expense. Learn more at the UC Berkeley Patent Website.
Copyright protects the effort that goes into creating “original works of authorship” and art by providing exclusive rights to the copyright owner (who is not necessarily the author or artist) for a limited, time. The types of “work of authorship” are very broad – from the writings and artwork you expect to things like choreography, web pages, computer programs, databases, architectural drawings and boat hull designs. Learn more at the UC Berkeley Copyright Website.
Trade and Service Marks
A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a “confusingly similar” mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the US Patent & Trademark Office. Some UCB trademark matters, such as trademark registration and licensing of UC Berkeley’s name and trademarks, are administered by UCB’s Business Contracts and Brand Protection - http://bcbp.berkeley.edu/brand-protection/trademarks.
Trade secrets are confidential information, methods, machinery etc. that provide a business competitiveness. UCB generally does not assert rights to the "know-how" or a trade secret held by the faculty. UCB occasionally may maintain, transfer and/or receive confidential information under secrecy agreements. UCB, however, does not generally license know-how or trade secrets.
What is not Patentable: Laws of nature, physical phenomena, Abstract ideas, Literary (dramatic, musical, and artistic works), those inventions that are useful or offensive to the public.
Because there are two types of MTAs, perhaps after this introduction is made we make a large button, where people can decide if they want to recieve or send materials, and then we provide that process. (All of this information can be in the same page, we simply anchor the text and send them to the relevant pages)
Fully complete the MTA Request Form and email it to email@example.com copying your Principal Investigator if applicable.
MTAs were previously requested using a paper form, and a Lab Manager, grad student, faculty, or other employee working with the materials may have requested the MTA directly from IAO. Phoebe replaces the former Material Request Form. CSS/Department Research Administrators are now responsible for creating the Phoebe record for new incoming MTA requests, and the material user will be responsible for completing the Questions tab prior to submission to IAO.
For general Phoebe proposal preparation instructions, visit Phoebe Proposal Development guidance. This guidance will focus on the specifics of Material Transfer Agreements and will highlight the differences in requirements.
Only CSS/Department Research Administrators have permission to create MTA records in Phoebe. Material requesters, such as Lab Managers, Graduate Students, Postdocs, and Researchers, will need to be added as “aggregators” on the Permissions tab. This way, the material requester will be able to log into Phoebe and answer the questions on the Questions tab as well as upload any required compliance information.
This general information is a starting point for the drafting of the appropriate outgoing MTA and will help speed the MTA process. We will let you know when your outgoing MTA is completed.
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.
Delay in publication: In order to protect potentially patentable inventions, companies often demand a review period for the investigator’s manuscripts, abstracts or hard-copies of presentation materials. This demand may jeopardize the timeliness of publication.
Use of materials in sponsored research projects: Many industry MTAs contain language that prohibits the use of the material in research that is subject to licensing or consulting obligations to any third party, including the sponsor of the research project.
Definition of material: The industry provider may propose a definition of material that includes not only the original material, but also modifications or derivatives made from the material that incorporate the investigator’s original ideas or concepts. If the provider also claimed ownership of the modified material, the provider could own the results of the investigator’s research. The investigator could be prevented from using research results in further research, transferring them to other organizations, meeting obligations to research sponsors, or ensuring that the results are made public.
Loss of control of intellectual property: If MTAs preempt ownership rights, investigators may be restricted in their ability to interact with a future sponsor or may have conflicts with obligations to current sponsors. Intellectual property restrictions may prevent the institution from obtaining or conveying rights to future licensees.
Conflicts with existing agreements: Industrial MTAs may contain obligations that conflict with obligations in a preexisting agreement. Also, the material may be used in conjunction with a separate material received under another MTA. These situations could result in granting two or more parties conflicting rights to the same invention.
When MTAs are used in conjunction with federally funded research, the federal government has certain rights to resulting inventions (Bayh-Dole Act).
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).
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. You can see specific information about the process for disclosing an invention, tangible material, copyrightable software, multimedia (including software), or technical data here disclose your invention or copyrightable work.
Due to restrictions on patenting, if a disclosure is made to the OTL after it has been publicly disseminated in an enabling way, (such as fully described in a seminar or a printed publication), then patent rights outside of the United States are generally not available. Therefore early disclosure is recommended. The optimal time to disclose is after the invention has been conceived and initial data are available, but before it has been publicly divulged.
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.
Inventions that are made collaboratively by a Berkeley inventor and a researcher at another institution are analyzed for joint ownership and when appropriate, joint management agreement(s) are entered into with co-owners of the invention.
Patent applications are not filed on every invention disclosure. A U.S. patent alone can cost ~$25,000 to obtain (over a three to four year period). The University cannot justify the considerable expense of patenting unless the patent forms the basis for a commercial R&D program and provides an incentive to a commercial licensee to commercialize the invention. We work with approximately 30 patent law firms and dozens of patent attorneys (all with technical backgrounds and many with Ph.D.s) to obtain patent rights.
Marketing: Licensing professionals work with the inventors (and/or authors in the case of copyrights) to develop marketing materials to use in gauging commercial interest in thetechnology. Non-confidential descriptions are disseminated that describe the features and benefits of the invention, what problem it solves, how it constitutes an improvement over thestate-of-the art, and market specifics. Licensing professionals also contact potential licensees that have the capability and interest to commercialize the rights. Corporations, as potential licensees, sign secrecy agreements to learn more. Over 50% of licensees are found through existing contacts and relationships of the inventors (or authors) and a network of relationships between IPIRA and the private sector. Many, but by no means all, licensees are in our local, i.e. - regional and state- innovation ecosystem.
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, and otherwise use the licensed items, for education and research purposes. If you are entrepreneurial and are interested in commercializing the rights through a startup company, please inform the licensing professional and start the discussion early. Also see below under "Will the university license "my" invention to at startup company that I founded?
Reimbursement of patent costs is commonly obtained in licenses. Licensing revenue is distributed annually and is divided between the inventors, their department, and the campus.
The OTL seeks corporate licensees that are qualified to commercialize Berkeley inventions and copyrights, then negotiates and manages the resultant agreements. Some corporate licensees have either sponsored research at the University that resulted in the licensed invention, or have collaborated with University researchers. Some discoveries may be protected both by patents and copyrights (as in the case of copyrightable software containing patentable algorithms). Others, such as certain cell lines, transgenic animals, plasmids, certain software, may be licensed without patent or copyright protection under the University's property rights.
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, while providing an incentive to the private sector to sell goods and services for public consumption.
Prestige, revenue, products and services result from patent licenses but an equally important consequence is the ongoing corporate sponsored research that it engenders (to fund improvements to existing inventions) and other opportunities for collaborative research. Relationships with companies, whether intellectual property-based on not, are mutually beneficial and a desirable outcome of OTL's efforts.
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 to Berkeley with multiple obligations in the private sector and the experience so obtained is beneficial to Berkeley.
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 the inventor(s), often pursuant to an agreement by which royalties are shared and/or the University's out of pocket legal expenses are recouped. If the inventors elect to patent or copyright protect the invention then they cannot use the University's resources or facilities as the vehicle for commercializing the technology, as that would constitute use of a public facility for private gain.
Copyright, a form of intellectual property law, protects original works of authorship, including software, 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. This means that others may not engage in these uses without the copyright holder's permission (i.e., a license). These rights are: 1. The right of reproduction (i.e., the right to copy the work); 2. The right to create derivative works (such as modifications); 3. The right to distribute the work; 4. The right to perform the work in public; 5. The right to display the work publicly; and 6. A digital transmission performance right. UC's copyright and disclaimer notice see: copyright notice There are limitations on the rights granted by copyright law. For example some uses that infringe copyrights are considered "fair" uses that do not require permission of the copyright holder. An example of this might be a critic's use of a short passage from a book in her negative review of the book. If her use meets certain criteria, then the copyright owner cannot prevent this use, even though she has infringed the copyright owner's reproduction and distribution rights. Additional information on copyright matters can be found at the U.S. Copyright Office web site at http://www.copyright.gov and the University's web site athttp://www.universityofcalifornia.edu/copyright.
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.
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 in instances where the company would like to do further research and development to evaluate the technology prior to entering into a full license agreement. One of the key differences between an option and license agreement is that the former does not allow the company to commercially market and sell the technology.
Letter of Intent
A letter of intent (LOI) provides a company with a time-limited negotiation period in which to negotiate a license agreement. It is typically used in instances where the company would like to “lock up” the intellectual property rights while conducting due diligence or speaking with investors and other potential partners.
Unfunded Research Collaboration
An unfunded research collaboration agreement spells out the terms and conditions associated with a collaboration with industry around a research project. Unlike a sponsored research agreement, an unfunded research collaboration agreement does not include a provision for funding from the company.
Sponsored Research Agreement
Sponsored research agreements are used when a company is going to fund a research project at a lab at the University. It spells out various items such as the scope of work of the project, the budget and various legal terms and conditions. For more information on sponsored research agreements please visit Industry Sponsored Research.
Material Transfer Agreement (MTA)
Material transfer agreements (MTAs) are used to govern the sharing of tangible research materials (e.g. mice, antibodies, computer chips, software code, etc.) between the University and outside entities such as companies and other research institutions. For more information on material transfer agreements please visit Transferring Research Materials.
Inter-Institutional Agreement/IP Management Agreement
Inter-institutional agreements (IIA’s) or IP Management Agreement are used in instances where an invention is jointly made by a University employee and someone from outside the University. It spells out which party will take the lead on patenting and licensing the resultant intellectual property as well as various other terms.
Visiting Scientist Agreement (VSA)
Visiting scientist agreements (VSAs) are signed by people from outside institutions or companies who will be doing work here at the University. They are put in place before the visiting scientists starts at the University and spell out items like the scope of the project, ownership of any resultant IP, how long the scientist will be at the University, etc.