Invention Disclosure

What do I do when I have made a discovery?

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...

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...

Software Disclosures

UC Berkeley Office of Technology Licensing assists inventors and authors in licensing software under a variety of distribution strategies. In addition to licensing software code for commercial development and distribution, OTL licenses research code for non-commercial and/or academic purposes and assists authors in offering software via open source licenses.

What is Intellectual Property (IP)?

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.

What is a patent and what is the consequence of patenting at the University?

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,...

How can I assist the marketing efforts?

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...

How are Berkeley's inventions and other discoveries commercialized?

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,...

Who is an inventor?

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.

What is an invention?

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).

What if the University is not interested in or does not own the invention?

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...