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Frequently Asked Questions
The Berkeley Office of Technology Licensing (OTL) is a campus-based operation that licenses patentable inventions, copyrightable software, and tangible materials to companies. In licensing this intellectual property (IP), the OTL's goal is to transfer the technology to the private sector to enable the technology to be developed into products that benefit the public and return a fair compensation to the University and its inventors. The OTL also supports related campus units in the negotiatiation and administration of agreements that include intellectual property (IP) terms. (Top)
Since the mid 1990s, >780 companies have signed IP agreements with UC Berkeley. Inventions and copyrights have been licensed to hundreds of companies including over 145 startups -- most of which are based in the San Francisco Bay area. 45% of the startups are life science companies, 26% IT, 15% electronics and hardware, 12% cleantech. 65 companies have raised an average of $13.8M. Licensed startups have received over $67M in SBIR and STTR funding.
Over $200M has been received in gross licensing revenue, inventors have received >$43M in direct payments. Departments have received an equal amount. For more detail see our brochure.
The OTL also facilitates hundreds of research collaborations, sponsored research agreements and other relationships with industry in conjunction with the Industry Alliances Office (IAO). OTL and IAO are peer divisions within the Office of Intellectual Property and Industry Research Alliances (IPIRA). (Top)
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). (Top)
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. (Top
Employees of the University have an obligation to disclose their inventions in writing to the Office of Technology Licensing (OTL, mail code 1620). You can see specific 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, (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. (Top)
After a disclosure is received by the OTL, federal and other sponsors of the research that lead 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 $20,000 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. (Top)
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. Reimbursement of patent costs is commonly obtained in exclusive licenses. Licensing revenue is distributed annually and is divided between the inventors, their department, the campus and the State.
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. (Top)
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. (Top)
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. (Top)
If the University determines that it does not own an invention, 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 (if any). 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. (Top)
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 Law, University of California (UC) policy provides that the University owns software that is created by employees in the course of their employment or created using University resources and facilities; however, the authors are entitled to a share of the revenue from licensing of University-owned software that they create. (Top)
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:
- The right of reproduction (i.e., the right to copy the work);
- The right to create derivative works (such as modifications);
- The right to distribute the work;
- The right to perform the work in public;
- The right to display the work publicly; and
- A digital transmission performance right.
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 at http://www.universityofcalifornia.edu/copyright. (Top)
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 an author. For more information on patents and inventorship, see "Patents 101" on the UC web site at http://www.ucop.edu/ott/ttprimer.html. (Top)
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. (Top)
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. (Top)
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 employees, as a condition of their employment, agree to disclose potentially patentable inventions made during the term of their employment, and to assign their rights to the University upon request. The Patent Policy also provides for the sharing of net licensing revenues received by the University with the inventors of inventions made during a University employee's term of employment. The Patent Policy governs intellectual property that can be protected by both patent and copyright. Links to the copyright and patent policies may be found on the Office of Technology Licensing (OTL) web site.
Federal and state laws that also govern development and distribution of software at the University include the Bayh-Dole Act (addressing obligations to the U.S. Government for patentable inventions made with federal funding), the Tax Reform Act of 1986 and its implementing regulations (restricting the use of tax-free bond-supported University facilities for the benefit of private interests), and the California Political Reform Act of 1974 (restricting the role of University employees in the University's decision-making process where the employee has a financial interest in the decision).
Other University policies that can apply to software include: Guidelines on University-Industry Relations (requiring University employees and others who use University funds or facilities to adhere to the UC Copyright Policy); Principles Regarding Rights to Future Research Results In University Agreements with External Parties (defining the core principles to be addressed in University agreements with external parties as to rights to future research results including patents, copyrights, tangible property, and data generated by the University community or through the use of University resources or funds); the Academic Personnel Manual (addressing ethical principles, conflict of interest and conflict of commitment for academic appointees); and Regulation 4, Special Services to Individuals and Organizations (limiting research to activities that are appropriate to the University).
Links to these laws, policies and guidelines may be found at: http://www.ucop.edu/ucophome/coordrev/ucpolicies/policyindex.html. (Top)
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. (Top)
Software is disclosed by submitting to OTL 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 OTL web site. (Top)
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 also evaluates the commercial potential of the software and assesses whether it should be protected by patent as well as copyright. Although most software programs, like most other inventions, can be the subject of a patent application, the question for each invention and software program is whether patenting is the most appropriate form of intellectual property protection. The University usually doesn't seek patent protection for software unless a research sponsor requests patent protection; however, software that is potentially patentable often must be reported to the sponsor (including federal sponsors) as an invention under the terms of the sponsorship agreement.
Inventions and discoveries, including computer software, made in the course of research sponsored by federal agencies, industry or other sponsors generally must be promptly reported to the sponsor. OTL also fulfills any notification requirements that are revealed during the evaluation process. (Top)
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 informed participation of all the authors
If there are no obligations to third parties such as research sponsors or other co-owners, and all authors have given their informed consent, the evaluation process is quick and simple. (Top)
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. (Top)
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 the code. Distribution can be tailored to the specific needs of the author and the user community. If you are unsure of the distribution model to use, the OTL can help you decide what license or licenses will best address your goals. This is best done early in software development, to avoid any delays once the code is ready for distribution.
Another common licensing approach is to establish separate fee structures for academic use and commercial use, or for internal use only versus distribution rights. Fees may be based on use at a specific site (site licenses) or use on a server or computer (seat licenses).
Other authors might wish to request release of the object code at no charge and provide for fees or royalties for source code licensing with modification and distribution rights. (Top)
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. (Top)
"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 (BSD license) allow modifications to be kept proprietary; some (such as the General Public License, or GPL) require that the source code for any modifications also be distributed and modifiable by users. Open source licenses generally allow the distributor to charge a distribution fee.
A wide range of licenses could theoretically be called "open source," so the Open Source Initiative (OSI) provides a certification mark for licenses that meet its definition of "Open Source." OSI has approved the most commonly used open source licenses. More information about OSI and approved licenses are available at http://www.opensource.org.
If you are developing some software that you think you would like to release under an open source license, the OTL can help you find the best distribution model and identify in advance any potential conflicts and restrictions resulting from the use of such a model (for example, encumbrances created by sponsored research agreements or issues created by the requirements of the license you would like to use) in advance. (Top)
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 are commonly used at UCB include open source licenses such as the BSD license, the General Public License (GPL), the Lesser General Public License (LGPL), the Artistic License, and the MIT License. More information about these and other open source licenses is available from the Open Source Initiative web site at http://www.opensource.org/licenses.
Another license commonly used at Berkeley was developed by the UC legal office and is colloqially known as the academic license. Many authors wish to release source code freely for academic and not-for-profit use while retaining the option of realizing some revenue from licensing for commercial use. The academic license is well-suited for this: it provides academic and not-for-profit licensees to freely use and modify the code for their internal use, and refers commercial inquiries to the OTL. The academic license is available. (Top)
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 may find that the project leaders have already pre-selected a license distribution model for use under the project. If this is the case, it is a good idea to check with the OTL before committing to the project as there may be conflicting licensing requirements with your sponsored research agreement or other potential encumbrances associated with your software. (Top)
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 representatives can also discuss ways to avoid situations that can restrict your ability to release the software under the desired distribution model (e.g., incorporating code subject to conflicting license terms). (Top)
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 and address any issues. If you are planning to release software into an existing collaborative project, for example, you may find that the project leaders have already pre-selected a license distribution mode for use under the project. The OTL can determine beforehand whether any issues with using this license distribution model exist for your project. (Top)