A patent protects novel ideas for useful products and methods. The UC Patent Policy governs the University’s ownership of patentable inventions.
A copyright, in contrasts, protects the expression of original ideas, but not the ideas themselves. Software may contain copyrightable source code, patentable algorithms, or both. If you are an author of software (including multimedia with embedded software), then please read about Software Disclosures to the right.
Other works are also protected under copyright, including manuals, survey instruments, videos, and more. If you want to protect one of these under copyright use the Copyrightable works form.
All inventions made by UC employees must be disclosed to the University, regardless of when or where they are invented. This is a legal obligation of University employment. The form to use in this case can be found by clicking either of the buttons to the right. In many cases, the invention can then be assigned back to the inventor; however, under certain conditions the University may assert its ownership right to an invention.
UC’s official guidelines regulating faculty and academic employee consulting can be found here. Consulting agreements with outside entities are personal agreements. Therefore, it’s the University employee's responsibility to ensure that the terms of the agreement (including intellectual property rights) are consistent with University employment obligations.
If you developed an invention in the performance of activities outside of the University (such as under a consulting agreement with a company), and you don't want to disclose proprietary information as part of your invention disclosure to the University, then you can use the Invention Disclaimer Request Form.
The Berkeley Software Distribution license (BSD) may also be helpful.
Links include: Software Copyright Notice And Disclaimer New Open Source Software (OSS) Resources Updated BSD License (PDF) Intellectual Property Essentials for Academic Researchers nventors' Guide: Technology Transfer (PDF) Entrepreneurs' Startup Guide (PDF) Sample Exclusive License Agreement (PDF) For information regarding the Berkeley Software Distribution license (BSD), click here Advertising_clause_removed_from_BSD_license.pdf
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.
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 found here.
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://www.ucop.edu/ucophome/coordrev/ucpolicies/policyindex.html.
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.
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