Who Should Disclose Inventions

How do you know if you should disclose an invention to the Berkeley Office of Technology Licensing (OTL)?

Submit an invention disclosure if any of the following is true. The innovation was created:

by a UC Berkeley employee as part of their scope of employment, or
using UC Berkeley research facilities, or
using funds administered through UC Berkeley

An invention that meets any of those criteria, and therefore could potentially be owned by the university, must be disclosed to OTL under the UC employee agreement. This ensures the University of California meets its legal obligations and contractual responsibilities.

Intellectual property ownership is case specific based on each set of circumstances. OTL makes the final determination on intellectual property ownership. If you are unsure whether the university could have an ownership interest in your IP, please contact the OTL for clarification.

Inventions created by UC Berkeley faculty, postdocs, research staff, or administrative staff

Every UC Berkeley employee signs a Patent Acknowledgement Agreement as a condition of employment. The agreement requires employees to disclose any inventions, in writing, to the Berkeley Office of Technology Licensing (OTL), including inventions made during paid or unpaid consulting work.

All inventions must be disclosed to OTL as soon as possible after conception of the idea.

If you developed an invention in the performance of activities outside of the university (such as under a consulting agreement with a company), and believe that the invention was created outside of the scope of your UC employment, you can use the Invention Disclaimer Request Form. The OTL will use your request and the form to ask for the release of the invention from your department leadership.

Is an invention ever not owned by your employer?

If an innovation was made outside of university duties and with only nominal use of university facilities, and without use of funding administered through the university, then the university wouldn't have an ownership interest in any resulting intellectual property rights.

Inventions Created by Visiting Scientists or Industry Fellows

Visiting scientists who are not employed by UC but who visit the university and use UC funds and facilities are required to sign the UC Patent Acknowledgement Agreement, and, as with UC employees, are obligated to disclose all inventions to UC Berkeley OTL. If the work that led to an invention used UC Berkeley research facilities or funds administered through the university, then the university could have an ownership interest in any resulting intellectual property rights. Learn more about Visiting Industrial Fellows and Entrepreneurs.

Inventions Created by Students

What about inventions created by graduate or undergraduate students employed full time or part time by UC Berkeley?

Every paid employee of UC Berkeley signs the UC Patent Acknowledgement Agreement before starting work. Under the terms of that agreement, they are required to disclose all inventions created using the university's resources, using funds administered through UC Berkeley, or within the scope of their employment, to the Berkeley Office of Technology Licensing. The university can take an ownership interest in inventions made:

within the scope of faculty-supervised graduate thesis or dissertation work
with funds received by the university from gifts, grants, or contracts, or using specialized university research facilities or equipment that are not normally accessible to individuals outside of a university setting.

For UC-owned inventions, student inventors will receive a share of income from the university’s licensing of their invention. See the UC Patent Policy.

An invention may not belong to UC if it was made:

during participation in a university course,
in commonly available, general purpose campus facilities such as student libraries, entrepreneurship centers, or makerspaces,
without the use of UC Berkeley funding without the use of specialized UC Berkeley research facilities, and
outside the course and scope of your employment at UC Berkeley

You can disclose an invention without assigning it to the UC by indicating on the UC Berkeley Invention Disclosure Form that you do not believe that the UC owns the invention. If OTL determines that UC does not own the invention, OTL will provide documentation of that finding.

What about inventions by students who are not employed by UC?

In most cases, students who are not employed by UC own their original academic work. UC may own the IP if an invention was created with funds administered through the university or using specialized university research facilities or equipment that are not normally accessible to individuals outside of a university setting.

What about a student working as an unpaid volunteer in a university research lab?

People who use UC research facilities are required to sign the UC Patent Acknowledgment Agreement, regardless of whether they are employed by the university.

By signing the Patent Acknowledgement Agreement, student volunteer researchers, like employees, are obligated to disclose all inventions to UC Berkeley OTL. Any invention that used UC Berkeley funding or research facilities is likely owned by UC.

What about inventions created by unpaid students in a UC Berkeley entrepreneurial program?

In most cases, university funding for entrepreneurial programs does not confer university ownership of innovations created by participants.