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...
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...
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.
At UC Berkeley, different administrative offices have the delegated authority to negotiate and sign specific legal agreements. Signature authority is typically based on (1) the agreement type and (2) the type of funding. The Decision Support Tool for Contracts can help in determining the appropriate contract office to execute your agreement.
There are several different forms of licensing arrangements that companies can explore for commercializing UC Berkeley research discoveries. The IPIRA Office of Technology Licensing negotiates these contracts on behalf of UC Berkeley, with standardized terms designed to lower transaction costs, and accelerate the commercialization of university research. Companies choose whether to enter into an IP rights letter agreement or option agreement, or pursue a full license agreement immediately, based on their strategy for ...
UC Berkeley encourages the formation of companies that develop products based on technologies that are created by our researchers. Successfully developing products and building companies is extraordinarily challenging. Accordingly, the campus provides an innovation and entrepreneurship ecosystem that supports our entrepreneurs and startups. As part of our ecosystem, the UC Berkeley Office of Technology Licensing follows 12 practices to support early stage startups that license the university’s IP. An asterix (*) designates practices that are also followed when licensing to mature startups...
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:
