Protecting Intellectual Property (IP)

Disclosure and Assignment of Patentable Inventions  /  Who Owns What?

"UCI Applied Innovation’s connections between UCI researchers and the corporate community streamlined the commercialization process as they negotiated exclusive licenses for inventions developed by myself, and my colleagues here at UCI."  – Bruce Tromberg
 
Intellectual Property (IP) refers to a category of intangible property rights comprising primarily patents, trademarks, copyrights, and trade secrets.

DISCLOSURE AND ASSIGNMENT OF PATENTABLE INVENTIONS 

As a condition of employment at the University of California, faculty, staff, and researchers are obligated to disclose all inventions to the University of California and to assign to it their rights over any possibly patentable inventions developed within the scope of their University of California employment. This is accomplished through signature of the Patent Acknowledgment.

To preserve patent rights, you should disclose inventions by submitting a Record of Invention to Invention Transfer Group (ITG) before making any form of public disclosure, e.g., a paper, poster session or discussion with a colleague.  ITG Licensing Officers make a preliminary evaluation of the Record of Invention. Factors such as patentability, benefit to the public, commercial potential, and patent rights of outside parties are considered in selecting cases to pursue further.

If ITG evaluation determines that a case qualifies, ITG begins marketing the invention to assess commercial interests and find a qualified licensee. You should indicate in the Record of Invention if you are interested in starting a company around the invention so the ITG licensing officer can keep this in mind during the evaluation.

If ITG decides to proceed with filing a patent application, ITG authorizes and coordinates the process, and engages a patent attorney to draft the patent application. In doing so, the attorney will often work closely with you to complete the application.

The completed patent application is submitted to the United States Patent and Trademark Office (USPTO). At the time of filing of the application, you execute legal documents assigning the patent to the University of California pursuant to the inventor’s Patent Acknowledgment. After the application has been submitted to the USPTO, the whole patent process commonly takes at least three to five years.

Procedures differ for filing applications in foreign countries, and they are very costly. ITG recommends filing foreign patent applications only when the cost is likely to be recovered from a licensee. If a publication has been made after a U.S. patent application filing, a preliminary foreign filing date must be made within one year of the U.S. filing date in order to preserve rights in other countries.

The section below summarizes various types of IP ownership at the University of California.

Intellectual Property at the University of California: Who Owns What?

Patents
UCI employees, as a condition of employment, must disclose and sign patent rights to the University of California. The patent application process is administered by ITG and the University of California Office of Technology Transfer. If the invention resulted from unrelated outside work, UCI may decide that it does not have a right of ownership.

Copyright
Ownership of the copyright in the work depends on the conditions and funding of the particular work. If classified as a “Work for Hire” or part of a sponsored research, the copyright belongs to University of California. If the work results from other intellectual activity, the copyright will generally belong to the individual. Administration of University of California-owned copyrights is carried out by the UCI’s Invention Transfer Group (ITG).

Trade Secrets
UCI generally does not assert rights to the “know-how” or a trade secret held by its faculty. UCI occasionally may maintain, transfer and/or receive confidential information under secrecy agreements.