Frequently Asked Questions

Online resources often mention a “one-year grace period” for filing U.S. patent applications. However, these resources don’t consider international patent law, first-to-file litigation risk, and other factors. The best time to engage with OTL is before a public enabling disclosure.

The free and unfettered dissemination of information, knowledge, and discoveries generated by researchers is an essential element of the university's mission. The guidance for researchers to disclose discoveries to the OTL before public dissemination aligns with the goal of ensuring that impactful innovations can benefit society fully.

Invention disclosures allow the OTL to assess the commercial potential of your invention, protect intellectual property (IP) rights, and possibly move toward licensing or commercialization. Publicly revealing information about an invention before submitting an invention disclosure can have consequences for patent protection and commercialization opportunities, making the invention ineligible for patent protection, which can reduce its commercial value. Without patent protection, potential investors or companies are less likely to pursue a product that can't be protected from competitors.

If you disclose your invention without filing an invention disclosure, you risk losing control over how it is used. Others could potentially use your ideas without compensating you or the university.

A public enabling disclosure of an invention triggers a 1-year deadline for filing a patent application on that invention in the US and disqualifies filing a patent application on that invention in most non-US nations. Public enabling disclosure of an invention refers to any communication or sharing of key information about the invention that makes it available to the public. Here are common examples of public enabling disclosure:

• Publishing in a peer-reviewed journal, book, or conference proceedings
• Presenting a talk or poster at a conference
• Posting information on any public online platform, including arXiv or bioRxiv
• Describing your invention (with enabling detail) to a non-UC Berkeley employee, such as an industry partner or collaborators at other institutions without a confidentiality agreement
• Posting open-source software, for example if it includes patentable algorithms
• Selling or offering the invention for sale, even in prototype form

What Does Not Count as Public Disclosure?

• Private communications that are covered by a confidentiality or non-disclosure agreement (CDA or NDA) with industry partners, or to a journal for review.
• Sharing the invention within your research institution or lab in a way that is not accessible to the public (e.g., internal presentations or reports).

It’s important to submit an invention disclosure to the OTL before any of the above actions to avoid jeopardizing patent rights.

If you have any questions about public disclosures, contact the OTL or submit your question through the IPIRA Concierge.

Anyone conducting research at UC Berkeley who is not employed by UC must sign the Patent Acknowledgement prior to admittance to a program or lab and commencing research. This includes: undergraduate students, Visiting Scholars, Visiting Student Researchers, Visiting Industrial Fellows, Affiliates, and Volunteers.

To submit a signed UC Patent Acknowledgement, the UC Berkeley host should connect the visitor to their HR Business Partner, as identified by Berkeley Regional Services. The HR Business Partner can also confirm whether a Patent Acknowledgement has already been signed.

Yes. Report inventions created outside of the scope of your UC employment to the UC Berkeley Office of Technology Licensing using the Invention Disclaimer Request Form, omitting any proprietary information. Based on your request, OTL will ask your department leadership for the release of the invention.

If you are a UC Berkeley employee, you signed a Patent Acknowledgement as a condition of employment. Employees can review the Patent Acknowledgement by logging into UCPATH. In the Dashboard, navigate to Employee Actions > Personal Information > Patent Acknowledgement.

Employees hired before July 1, 2024, signed an older version of the Patent Acknowledgement and will be prompted to sign the amended form.

Signing the Patent Acknowledgment obligates you to:

1. Promptly disclose all inventions (as defined in the UC Policy), in writing, to the UC Berkeley Office of Technology Licensing 

2. Assign ownership of IP rights to UC for inventions developed by you and owned by UC in accordance with UC IP policy. 

3. Acknowledge that you are responsible for ensuring that any employment or consulting agreements you enter into with third parties do not conflict with your preexisting and ongoing obligations to the university

See the UCOP website for more information and to read the full text of the UC patent policy. 

Every UC employee is required to sign the Patent Acknowledgement as a condition of employment.

A person not employed by UC must sign the Patent Acknowledgement before:

1. Using UC Berkeley research facilities. This includes visiting scientists and other non-UC Berkeley employees, or

2. Receiving gift, grant, or contract research funds through UC.

The Patent Acknowledgement is an agreement where an individual acknowledges that while they are employed by, or using the resources of, the University of California, the institution owns the rights to all inventions/patents/intellectual property (IP)  they develop — except teaching materials, scholarly works, or IP resulting from permissible consulting activities without use of university facilities. Persons signing the Patent Acknowledgement agree to disclose promptly all potentially patentable inventions to UC.

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. 

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. 

Here’s a good resource regarding conflicts of interests: https://researchcoi.berkeley.edu/faq.html

Note that UC Berkeley has a program administered by IPIRA that enables startups affiliated with the university’s accelerators to conduct new product R&D in faculty labs – under certain conditions. Learn about the Berkeley RIC Faculty Lab eXceptional-use for Innovation & Entrepreneurship (FLEXIE) program at https://ipira.berkeley.edu/entrepreneurs/berkeley-ric-flexie-program

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 software during your advisory activities, then it’s a good practice to confer with the OTL on your disclosure responsibilities and ownership assumptions.  

Here are 2 good resources regarding UC intellectual property policies: 

https://ipira.berkeley.edu/ip-protection

https://www.ucop.edu/research-policy-analysis-coordination/policies-guid...

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:

https://academicpersonnel.ucr.edu/resources/coc/ConflictCommitmentUCRsum...

Blast-out startups are typically co-founded by faculty who are preeminent in their field, or previously co-founded a successful startup. Many of Berkeley’s most promising startups blast out of the campus. In most, but not all, cases, blast outs do not need the majority of the campus’s startup resources. Instead, at their onset they get VC funding, experienced leadership, and commercial space. The challenge with plugging into this pipeline is identifying blast outs (and perhaps helping to catalyze them) as they coalesce in campus labs. Otherwise, they blast out before getting on your radar.

In order to plug into Berkeley’s pipeline of blast-out startups, start with the steps for pursuing the roll-out pipeline (above). In addition, we recommend:

5. researching faculty expertise via the Berkeley Research Interest website and developing a rapport with faculty

6. funding research via Berkeley’s Industry Alliances Office

7. joining a Berkeley Industry Affiliate Program, such as BAIR

8. periodically learning about Berkeley Bakar Fellows via the Bakar Fellows Program website.

At most universities, including Berkeley, the majority of startups are roll outs. Roll-out startups are typically founded by undergraduates, graduate students, and postdoctoral researchers who are embarking on their first entrepreneurship journey. These founders leverage many of Berkeley’s startup resources including incubators, accelerators, mentor networks, and Berkeley-centric early-stage investors. Many roll-outs exit the campus with robust momentum, including funding and revenue.

Suggestions for plugging into Berkeley’s pipeline of roll-out startups include:

1. signing up for e-newsletters, for example, from the Berkeley IP licensing office (IPIRA)
2. attending events, such as the periodic demo days
3. volunteering as a startup mentor, for example a SkyDeck Advisor
4. establishing a rapport with Berkeley-focused VCs, such as Berkeley Catalyst Fund, The House Fund, and SkyDeck Fund

From San Francisco or Fremont, take a Richmond-bound train to the Downtown Berkeley station (from the Concord area, take an SF/Colma or Fremont train first, then transfer to a Richmond train at MacArthur station). If you're coming from the El Cerrito area, take an SF/Colma or Fremont train to the Downtown Berkeley station. At the Downtown Berkeley station take the long escalator up to Shattuck Avenue. The office is located directly across from the Downtown Berkeley BART entrance/exit at 2150 Shattuck Ave., at the intersection of Shattuck and Center St. The trip from San Francisco takes approximately 20-25 minutes. The IPIRA Office of Technology Licensing and Industry Alliances Office are on the fourth floor, suite 408.

Take Interstate 80 West in the direction of San Francisco. You will cross the Carquinez Bridge and typically 15-25 min. thereafter, you will see the Berkeley exits. Exit onto University Avenue, the second Berkeley exit (the first is Gilman). Following the signs to Berkeley, drive east on University Avenue to Shattuck Avenue (approximately three miles). Turn right onto Shattuck, and go three blocks to Allston Way (there is a Walgreens on the right corner). Turn right on Allston and go 1/2 block; there will be a public parking garage on your right. This garage is adjacent to our building, and there will be a charge. From the ground floor of the parking structure, follow the signs to the lobby of 2150 Shattuck Ave. The IPIRA Office of Technology Licensing and Industry Alliances Office are on the fourth floor, suite 408.

Take the San Francisco-Oakland Bay Bridge (Hwy 80 East) toward Oakland. As you come off the bridge, stay to the left and follow the signs in the direction of Sacramento. You will be still be on Highway 80. Continue on Highway 80 for about 1.5 miles, then exit onto University Avenue. Continue East on University Avenue to Shattuck Avenue (approximately 3 miles). Turn right onto Shattuck for three blocks to Allston Way. Turn right on Allston and go 1/2 block; there will be a public parking garage on your right. This garage is adjacent to our building, and there will be a charge. From the ground floor of the parking structure, follow the signs to the lobby of 2150 Shattuck Ave. The IPIRA Office of Technology Licensing and Industry Alliances Office are on the fourth floor, suite 408.

Take 580 West towards San Francisco. Exit on the Highway 24 ramp (the junction says "Berkeley/Walnut Creek"). Immediately take the 51st Street/Martin Luther King exit. Stay in the left lane. The off-ramp veers to the left, then right. Stay in the middle lane and continue straight onto Martin Luther King. Turn right on Allston Way. After you cross Milvia Street, you'll see a public parking garage on the left. This garage is adjacent to our building, and there will be a charge. From the ground floor of the parking structure, follow the signs to the lobby of 2150 Shattuck Ave. The IPIRA Office of Technology Licensing and Industry Alliances Offices are on the fourth floor, suite 408.

No, contact UC Berkeley Property Management about equipment loans or to transfer equipment.

No. MTAs and DUAs are contracts between institutions rather than individuals, so the agreement must be signed by UC Berkeley

Research materials and data are owned by the university, not by individual researchers. Only an officer with the delegated authority to bind the institution can sign on behalf of UC Berkeley.

You need a material transfer agreement (MTA) whenever tangible materials (e.g., mice, cell lines, blood, saliva, tissue, human cells) are transferred to or from UC Berkeley. A data use agreement (DUA) is needed when data (e.g., economic/financial data or healthcare data, including human patient data governed by HIPAA) is transferred to or from UC Berkeley. MTAs and DUAs are contracts between institutions rather than individuals, so the agreement must be signed by UC Berkeley.

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 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).

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.

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:

1. 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?
2. If it is UC Berkeley material, is it covered under an invention disclosed to our office? If so, what is the UC Berkeley OTL case number? If not, what federal agency funded the creation of the material?
3. What is the name, title and institution of both the UC Berkeley P.I. sending the material and the receipting of the material (P.I. only). What is the name and description of the material? Is there a publication, web link or write up about the material? If so, please provide.
4. Please provide a ten word description of the requester’s research (use of the material). If you don’t have this, we can obtain this from the requesting researcher once the MTA has been requested.

This general information is a starting point for drafting of the appropriate MTA for outgoing materials and will help speed the MTA process. We will let you know when your outgoing MTA is completed.​

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 phoebe-help@lists.berkeley.edu for Phoebe-related questions.

Incoming MTAs were previously requested using a paper-based Incoming MTA Request 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.

Please refer to the Phoebe Proposal Development - MTAs on how to submit an MTA for incoming materials to the Industry Alliances Office.

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 mta@berkeley.edu copying your Principal Investigator if applicable.

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.

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 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.

Data Use Agreements

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.

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.

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.

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).

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.

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 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 https://opensource.org/licenses. 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.

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 https://opensource.org/licenses. Another license commonly used at Berkeley was developed by the UC legal office and is colloquially 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.

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.

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.

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.

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.

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.

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.

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.

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 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: https://policy.ucop.edu/

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.

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 "IP Essentials for Researchers" on the UC web site

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.

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. 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.

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 and the University's web site

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.

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. To learn more, reference the Entrepreneur's Startup Guide

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 benefit the public.

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, (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.

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).

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

Research IT reviews and consults on security plans.

Learn more about Data Management Plans from UC Berkeley’s Research Data Management program

The Sponsored Projects Office handles federal, state, and non-profit awards.

The Industry Alliances Office handles industry contracts as well as stand-alone data use agreements.

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.

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.

Your work is patentable if it meets 5 criteria:

1. Patentable Subject Matter: Process, machine, article of manufacture, composition of matter, improvement of any of these.

   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.

2. Utility: What is the purpose of your innovation? Do you, as the inventor, still need to find its function? Before applying for a patent your innovation requires a use, function, or purpose. It can not be determined, or researched more during the patent process. You invention is not required to be made, built or constructed to be patented, but its use must be predetermined.
3. Novelty: Is your innovation new and original? Has your idea already been patented, printed, or in use for over a year? If your idea is to be patented it must not be in use for up to a year of the filing. Your innovation should be new and innovative. Initially it should be something that others have not already processed and patented.
4. Nonobviousness: Does your innovation take the extra step? Does it take your field one notch further? Your innovation must have a non-obviousness aspect to construct its patent. The innovation must be novel and bring your studies to a new level that it has yet to be reached. Therefore, it must be useful to your field and be an additive to the process of your research or innovation.
5. Describable : Do you know the specific way to enact your invention? Can you describe it in detail? The requirement to be able to describe your innovation in complete confidence, with precise detail so that someone in your field could repeat the process, is required of you to achieve a patent.

A patent protects novel ideas for useful products and methods. 

A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

The UC Patent Policy(link is external) governs the University’s ownership of patentable inventions.

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.

Patents

 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.

Copyrights

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 - found here.

Trade Secrets

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.

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. 

Institutes are typically organized and reviewed at UC Berkeley as organized research units (ORU). Depending on the complexity of the institute, UC guidelines for establishing multicampus research units (MRU) may be relevant.

• UC Berkeley requirements for ORUs 
• UC Office of the President requirements for MRUs

The largest percentage of the overhead, 10.5%, is returned to the I&E program and its supporting administrative unit. Similar to the overhead distribution for Industry Affiliate Programs, the net overhead returned to campus from Innovation Services for Extramural Sponsors (adjusted to reflect the fact that the Office of the President retains a percentage of the overhead generated) is distributed in its entirety by a formula based on the following breakdown of the 20% rate:

• 4%: To the Director of the Innovation & Entrepreneurship Program, or academic department for program support, which can be allocated to the Principal Investigator on request
• 10.5%: To Research Administration and Campus Research Support
  • 7.5%: To local administering unit
  • 2%: To central research administrative units
  • 1%: To Berkeley future grants and matching funds
• 4%: To the Central Campus for Facilities and Infrastructure Support
• 1.5%: To the Office of Intellectual Property and Industry Research Alliances for Contract Negotiation & IP Management

While UC Berkeley’s Facilities and Administrative (Indirect Cost) Rate Agreement already covers Other Sponsored Projects and Sponsored Instruction, an exceptional 20% indirect cost rate applies to Innovation Services agreements when the following criteria are met:

1. The university is supporting its entrepreneurial ecosystem through this program.
2. The companies using this program are pre-revenue companies (no product sales).
3. The agreement is non-negotiable as with other membership-type agreements. All companies in the program sign the same agreement.

Please remember to build the 20% indirect cost rate into your budget.

The largest percentage of the overhead, 10.5%, is returned to the I&E program and its supporting administrative unit.

Innovation Services Agreements are treated by the campus as “Other Sponsored Projects.” In some cases (including for entrepreneurship training and mentoring) the same activities could be deemed Sponsored Instruction. The Code of Federal Regulations (CFR Appendix III to Part 200) defines and determines indirect costs and rates for higher education institutes.

IPIRA handles agreements with third parties for UC Berkeley’s innovation and entrepreneurship programs. These are called Innovation Services Agreements and may be entered with startup companies, accelerators, incubators, and economic development organizations. By handling Innovation Services, IPIRA helps nurture and enhance: Berkeley’s relationships with entrepreneur networks on and off campus, its contracting authorities, its stewardship of campus intellectual property, and its connection to university compliance offices. IPIRA also has ample experience with the policy issues relevant to providing such programs to extramural partners: conflict of interest (including a new form developed for this purpose for SSUFIEs), conflict of commitment, space planning, intellectual property, export control, animal use and care, environmental health and safety, and risk management.

Email IPIRA Office of Technology Licensing with your questions at mta-admin@berkeley.edu. Your request will be assigned to an analyst with whom you can communicate directly.

Please check with the Office of Environment, Health & Safety. EH&S reviews shipping plans to ensure hazardous and other regulated materials meet the requirements of the U.S. Department of Transportation and can answer your questions.

If your research requires human biological specimens or data that was collected from humans, the research project must be reviewed and approved by the Office for the Protection of the Human Subjects (OPHS). OPHS coordinates the Institutional Review Board (IRB) for the Berkeley campus. Please check with the OPHS Committee for the Protection of Human Subjects (CPHS) for guidance on what research needs CPHS/OPHS review

Further transfer will depend on the terms of the provider’s MTA or DUA. Some providers include a “no further distribution” clause, which means you cannot further transfer the materials without their permission. OTL will determine whether further transfer is possible.

Learn more about Data Management Plans from UC Berkeley’s Research Data Management program

Research IT reviews and consults on security plans.

No, if the sponsor of your project is the federal or state government, or a non-profit or a foreign government, please keep working with the Sponsored Projects Office (SPO). If your project is sponsored by industry, the Industry Alliances Office (IAO) will handle your agreement. If the review and negotiation of the agreement requires advice, SPO and IAO will work together to come to a workable solution.

Visit the Berkeley Research Data Portal for information on data gathering, sharing, management, analysis, security, and privacy.

The more complete the information provided at the outset, the more expeditious the review. The material or data provider’s agreement will likely include language that must be negotiated so that the final terms are aligned with UC policies and practices, as well as state and federal laws and regulations, so please plan ahead.

Your request will be assigned to an IAO negotiator who will review the information you have provided. In the case of materials, IAO will verify with the UC Berkeley Office of Environment, Health and Safety (EHS) that the use of the materials is compatible with your lab’s biological use authorization (BUA). In the case of data, IAO will work with Research IT and/or the Privacy Office if needed on questions pertaining to data security, data management plan, or privacy.

Since most MTAs and DUAs will require some revision, the IAO negotiator will reach out to the material or data provider to negotiate any changes needed to the terms of the agreement. When finalized, IAO will sign the agreement on behalf of UC Berkeley.