What happens to my disclosure after it is submitted?

Rights management: After a disclosure is received by the OTL, federal and other sponsors of the research program that led to the invention are notified (as is required by law), and the disclosure is assigned to a member of the licensing staff. That individual becomes the primary contact person for the inventor and manages the processes of: (a) determining the invention's ownership, third party rights and obligations, (b) evaluating the invention's commercial and patent/copyright potential, (c) assessing licensing prospects, and (d) prosecuting patents.

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 the technology. Non-confidential descriptions are disseminated that describe the features and benefits of the invention, what problem it solves, how it constitutes an improvement over the state-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.