Evaluation of Inventions

You've submitted an invention disclosure to the UC Berkeley Office of Technology Licensing (OTL). What happens next?

How does OTL Assess Invention Disclosures?

Licensing Officers at Berkeley IPIRA OTL examine each invention disclosure to review: the novelty of the invention; protectability and marketability of potential products or services; relationship to related intellectual property; size and growth potential of the relevant market; amount of time and money required for further development; outside parties pre-existing rights associated with the intellectual property (IP); and potential competition from other products/technologies.

Think Like a Licensing Officer: Review Considerations

  • Patent Value | Is it:
    • a thing or a method?
    • fundamental? (blocking, no easy design arounds)
    • easy to detect infringement?
    • enforceable
  • Business Value | Look at:
    • commercial potential (unique benefits)
    • market size/share
    • likely business models
    • huge market shift to adopt?
    • in line with industry trends?
  • Technically Sound | Ask:
    • does it work?
    • is it safe?
  • Legal Matters | Will we:
    • be in compliance with legal deadlines?
      • publications, public use, or demonstrations
    • have exclusive commercial rights?
      • joint development? need for IIA? rights granted to commercial sponsors?

    All these factors affect the decision of whether to pursue a given case. Inventors are urged to keep the assigned officer apprised of any action they are contemplating, especially any publications or other public disclosures that might affect rights in the invention.

    If an invention qualifies for further consideration, the licensing officer will work with the inventor to assess commercial interest in the invention. If patentability and commercial viability appear positive, the case will be referred to a patent attorney to file a patent application.