Bold and creative thinkers at UC Davis push innovation to its limits. Last year alone, InnovationAccess assessed 177 invention disclosures, filed 159 patent applications and completed 77 license agreements.
Why Do I Need to Get a Material Transfer Agreement (MTA) Before I Exchange Materials with Other Researchers?
Material Transfer Agreements (MTAs) are very important agreements that allow researchers to either receive or transfer research materials critical to carrying on research and provide clarity as to what conditions, terms, limitations the research material may be used and what happens to any discoveries (i.e., intellectual property) that are made using that research material. For example, MTAs address liability and indemnification issues, rights to publish, and whether there are controls over using the materials in other research. MTAs can also serve to protect patent rights. UC Davis InnovationAccess negotiates and signs MTAs on behalf of the campus for transferring all materials, whether in or out, to research institutions, non-profits or commercial companies. Learn more about transferring research material or data.
Tell me about confidentiality / non-disclosure / secrecy agreements at UC Davis. Who signs them?
Good question! Several units at UC Davis are authorized to negotiate and sign confidentiality agreements, also known as CDAs, non-disclosure agreements or secrecy agreements. Ideally, you will work with the unit most likely to help you with the next stage agreement. If you are exploring a research agreement, you should contact the Sponsored Programs office. If you may provide services, you will work with either Contracting Services or Sponsored Programs – contact one of them for assistance. If this regards software, contact the copyright officer in UC Davis InnovationAccess. If this is about transferring materials or discussing/licensing technology, UC Davis InnovationAccess will handle it. If you are going to provide personal consulting services as permitted by university policy, you will negotiate and sign the confidentiality agreement yourself, although if you have concerns about language related to ownership of inventions, UC Davis InnovationAccess will be glad to answer questions about whether your agreement may conflict with UC policies (e.g., UC Patent Policy, Conflict of Commitment and Conflict of Interest policies).
Why should I disclose an invention to UC Davis?
Under the Patent Acknowledgment you signed upon starting work at the university, you have an obligation to disclose all of your inventions, whether or not patentable, to UC Davis InnovationAccess for evaluation. The disclosure is made using the Record of Invention (ROI) form to UC Davis InnovationAccess. UC Davis InnovationAccess will review your ROI and make a determination whether the university has ownership in the invention as described above and, if yes, whether or not the university will file a patent application for that invention. The development, distribution and commercialization of your invention may provide significant public benefit and generate income for research and education at UC Davis. A licensee of your invention may wish to sponsor research in your laboratory. Also, inventors receive a portion of net income generated by their inventions.
I’ve been working on something interesting. At what point do I submit a Record of Invention (ROI) form? Should I disclose before I submit an abstract or manuscript?
The ideal time to disclose an invention to UC Davis InnovationAccess is as soon as you believe you made a patentable invention (i.e. after it has been reduced to practice and well before it has been published or presented publicly). If you disclose an invention after it has been published or publicly presented, some or all of the patent rights may have been lost.
Disclosing to UC Davis InnovationAccess well before publication affords many advantages, including proper assessment of the technology, development of an appropriate invention management and marketing plan, and the ability for interested companies to evaluate the licensing opportunity.
Complete a Record of Invention (ROI) form, sign it, have your signature witnessed as indicated, and send it via e-mail to [email protected] with the original ROI sent through intercampus mail, or you can deliver by hand during office hours. If you are not sure, call UC Davis InnovationAccess for assistance.
What is a “public disclosure”?
A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. Journal articles, including online publications prior to the journal’s hardcopy release, posters, slide shows, thesis publications, websites, e-mails, verbal presentations, and even funded grant applications (the NIH posts the title and abstract online and makes the application available in response to a Freedom of Information request) may be considered a public disclosure.
In most foreign countries, such a disclosure prior to filing a patent application will forfeit the ability of the university to obtain patent rights and, therefore, foreign patent applications will not be filed. The U.S. allows a one-year grace period from the date of public disclosure to apply for a U.S. patent. Ideally, an inventor will submit a Record of Invention (ROI) to UC Davis InnovationAccess before he/she publicly discloses the invention in any detail. UC Davis InnovationAccess can then review the ROI and determine whether filing an application is appropriate.
If you are uncertain if a disclosure will be considered an enabling public disclosure, please contact UC Davis InnovationAccess.
Does filing a Record of Invention (ROI) form protect patent rights?
Filing a formal Record of Invention form with UC Davis InnovationAccess is not equivalent to filing a patent application and does NOT directly or automatically protect patent rights. Protection of patent rights is only obtained through filing a patent application. UC Davis InnovationAccess assesses each invention in terms of patentability and licensability, in order to determine whether to file a patent application. If the invention is appropriate for patent filing, UC Davis InnovationAccess works with the inventor(s) and with outside law firms to file and prosecute patent applications. UC Davis InnovationAccess will continue to manage the patent application as long as it is deemed commercially valuable.
What happens to my Record of Invention (ROI)?
An Intellectual Property Officer in UC Davis InnovationAccess will be assigned to your invention. The invention will be given a UC case number and may be reported to sponsors or co-inventing institutions, if required. After evaluating the invention for patentability and commercial potential, a patent application may be filed.
If the invention is ready to be marketed, UC Davis InnovationAccess will develop a non-confidential description (NCD) of your invention for marketing purposes. A list of companies that may be interested in licensing the invention will be compiled from many sources. Perhaps the most important of these sources are referrals from the inventors themselves. These companies will be given the NCD and any public publications. Any third party who desires detailed, confidential information will be required to sign our standard confidential disclosure agreement.
Who should be listed as “inventors”?
Unlike authorship of a scientific publication, inventorship is determined in accordance with U.S. patent law. It is not uncommon for the inventors on a patent application to not be the same as the authors on a corresponding scientific publication. A lawful inventor is one who makes an inventive contribution to one or more of the patent claims that formally define the invention. Someone who provides equipment, space or money, no matter how critical to the development of the invention, is not an inventor. Also, someone who only performs work under the supervision of another party is not an inventor, even though that person may have worked long hours or conducted a critical experiment. An issued patent that fails to correctly and completely name the inventors may be ruled invalid under certain circumstances.
Because patent claims may change as the patent application is being drafted and also while it is undergoing prosecution by the patent office, the names of the inventors may change as well. For the purposes of filing your Record of Invention (ROI) form with UC Davis InnovationAccess, simply name as inventors any individuals who you believe have made a creative contribution to the invention (a creative contribution may include contributing a seminal idea towards the conception of the invention or overcoming a technical hurdle in the reduction to practice of the invention). Your Intellectual Property Officer can provide you with a brief description of inventorship and a few relevant guidelines. When necessary, UC Davis InnovationAccess will retain outside patent counsel to determine inventorship.
I made an invention on my own time without university resources. Can I commercialize my invention myself?
Under the Patent Acknowledgment, you agreed to disclose all inventions – even those made on your own time or as a consultant – to UC Davis InnovationAccess so that UC Davis InnovationAccess can determine if the university has any rights to the invention. You will be entitled to own your invention if: a) you made the invention without using any university facilities or resources, b) the invention is not subject to a third party obligation, such as a sponsored research grant, and c) the subject matter of the invention falls outside the scope of the subject matter of the research conducted by you and your immediate work group. If the university has no rights to your invention, UC Davis InnovationAccess will, at your request, provide you with a non-assert letter. More information can be found here.
I am thinking of starting a company that will focus on the technology developed in my lab. Should I contact anyone at the university?
UC Davis InnovationAccess is available to discuss your plans to receive future research funding at UC Davis related to company’s business interests, and how this might impact your plans to found the company. If your company is interested in licensing the rights to this invention, this may create a potential conflict of interest under the California Political Reform Act of 1974. UC Davis has procedures to help mitigate this conflict.
To start, your Intellectual Property Officer (IPO) will as you to file a Record of Invention form with UC Davis InnovationAccess. The IPO handling your case will determine the appropriate licensing strategy for this technology which may or may not include licensing to your start-up. The IPO has an obligation to seek the best means to commercialize the invention for the benefit of the public.
I want to copyright or trademark something. Where do I start?
While they’re all intellectual property, copyrights and trademarks are handled differently than patents and material transfers at UC Davis.
Copyrights happen automatically now – you don’t have to actually do anything to get one. Details about copyrights, including how to get and register them, is here.
Trademarks also happen automatically – when the eligible mark is used in interstate commerce, you have a trade (or service) mark. Registration is unnecessary and expensive, but sometimes a very good idea. UC Davis trademarks must be handled by specialized attorneys hired by UC. For more information and to get the process started, go here.
What’s the difference between copyrights, patents and trademarks?
Put simply, the three protect different aspects of the products of our minds, hence the name intellectual property. Patents protect ideas. Copyrights protect original expressions of those ideas. And trademarks protect the value associated with things like name, slogans, and logos associated with a commercial product which is often associated with something patented or protected by copyright. For more information on patents at UC Davis go here, and for more on trademarks at UC Davis, go here.
There are actually six copyrights – the legal rights to control what people can do with creative work(s), usually called “works” for short. Federal copyright law gives copyright owners exclusive rights to:
For the limited lifetime of the copyrights, one needs permission of a copyright owner to do any of these but there are exceptions including certain library and archive uses (beyond the scope of this website), Fair Use and the TEACH Act for the distance education.
What works are protected by copyright?
Copyright protects “original works of authorship” that are “fixed in any tangible medium of expression…” This means literary works, including software and web pages; musical works (including words); dramatic works (including music); pantomimes and choreography; pictorial, graphic and sculptural works; motion pictures and audiovisual works; sound recordings; and architecture.
Ephemeral works such as unrecorded speech, music or dance are not fixed in a tangible medium and so are not protected by copyright, although the prewritten text to a lecture would be. A simple way to protect your creativity is to record it!
Material that is not eligible for copyright protection includes ideas, facts, procedures, processes, systems, and concepts, although those might be patentable; nor titles, short phrases, and names, which might be trademarks; nor works containing no original authorship, works with expired copyrights, and works created by U.S. government employees in the performance of their jobs. Material that is not protected by copyright is in the Public Domain and can be freely used, including for the creation of new copyright-protected works. For more, go here.
Who owns copyrights?
Ownership can be complicated, especially in a research institution. You can find great information on ownership of works whose creation is some way associated with the University of California go here.
How long do copyrights last?
The answer to this has changed several times since the first US Copyright Act in 1790. The earliest protection lasted 14 years from registration. As of January 1, 1978, copyrights spring into being automatically and last for the life of the author plus 70 years, and it can be longer for unpublished or corporate works.
To make it more complicated, in the past some works which would otherwise qualify for copyright protection actually didn’t because some formality such as registering with the Copyright Office or including a copyright notice was skipped; these are said to have gone straight to the Public Domain. There are some great tools online to help figure this out. But to be safe, assume that all types of works which can be protected, are protected, even if there’s no copyright notice, and be particularly careful with new media such as material on the Internet.
Can I use someone else’s work for teaching, research or in my coursework?
This is a good question which warrants a detailed answer. Go here.
Do I need to do anything before I distribute UC Davis’s copyrighted work?
Of course! Sharing copyright-protected work that belongs to The Regents of the University of California requires thoughtful consideration, but can be simple and quick if you plan ahead, as many necessary steps are easier to do as the material is created rather than after-the-fact. For more information, go here.
How do I publish my article as ‘open access?’
Historically, academic journals required authors to assign their personal copyrights to their scholarly works in order to be published. Sometimes authors had to pay additional costs! The trend is towards “open access,” which means that the article has been published in a print or electronic journal that makes articles available at no charge, although sometimes after a period of paid access. This makes research results more widely available, sooner.
To assist authors in negotiating terms of publication, the NIH in 2008 began requiring that articles resulting from NIH funding be made available in “open access” within 12 months. In July 2013 the university established its own UC Open Access Policy to assist authors in negotiating publication agreements.
Since publication agreements are usually signed by research authors rather than The Regents, compliance is up to the authors. Changing publication agreements retroactively can be difficult or impossible, so advance planning is key, which can start with choosing author-friendly publishers using resources such as the Sherpa RoMEO database. Information to help authors do so is the UC Davis library website.
I want to ‘open source’ my software. How do I do that?
“Open Source” (or OS) is a commonly misunderstood term; it means simply that the software source code is available. The conditions – shareability, commercial or nonprofit use limits, cost – are in the copyright license that goes with the particular code. There are hundreds of “official” open source licenses, each with different terms and conditions.
Take a look at “Software is Special” and the answer to FAQ 6 above for more information on how to provide the information the campus copyright officer needs to determine the appropriate open source license for your code.
I found my syllabus/old exams/course materials on a website which I did NOT give permission to do so! How do I make them stop?
As the copyright owner of your course materials, you’re the only one who can go after these sites for copyright infringement. You could send a “cease and desist” letter to the owner of the website. However, Congress passed the Digital Millennium Copyright Act (DMCA) in 1998 to provide a usually-simpler way to do it. Basically, you send a “notification” with certain information/statements to the DMCA agent (list here) for the Internet Service Provider (ISP) hosting the website. If your notification has all the right information they have to take your copyright-protected material down “expeditiously.”
For Course Hero, use their form here: https://www.coursehero.com/copyright-infringement/
However, this is a bit whack-a-mole – you will need to monitor the website(s) for new postings or materials and repeat the DMCA notification each time. A more comprehensive way to approach this is to change the behavior of the students who are providing your intellectual property to the website. Most often they simply don’t know this is copyright infringement rather than intentionally wanting to violate your intellectual property. Students for time immemorial have shared notes and old exams, and the concept that doing it online is very different than passing out paper copies just doesn’t occur to them. Suggestions:
What is the Digital Millennium Copyright Act (DMCA) and why did I lose my Internet connection?
The DMCA (as commonly abbreviated) was enacted in 1998 as a way for copyright owners to address copyright infringement via illegal file sharing through internet service provider networks. UC Davis is considered one of those networks, and The Regents comply with the DMCA for a variety of reasons. You can get more information here.
Do I really need to know this stuff about copyright?
Yes. It may sound complicated, but copyright relating to UC Davis gets easier with time. Everyone is responsible for taking care of the copyrights they deal with; since each situation depends on the facts, the person who knows the facts best is in the best position to do the right thing. Getting it wrong can be expensive and can potentially lead to loss of a job or criminal liability! Rare, it’s true, but it happens.
And complying with copyright law is the right thing to do – we respect other people’s copyrights, and we expect them to respect ours.