- What is ITG?
- How do I know if I have an invention?
- How should I disclose my invention to ITG?
- When should I disclose my invention to ITG
- How do I benefit from disclosing an invention?
- Should I publicly disclose my invention?
- Who owns what I create?
- How do I determine who is an inventor?
- Does the order of names matter in an invention or patent?
- Why should I keep records of my invention?
- What is a Patent?
- Will my invention be considered for patenting?
- Who pays for the patent and how much does it cost?
- The patent attorney sent me a draft patent application, what do I do?
- How long does it take to get a patent?
- What are the types of patent applications?
- What is technology transfer?
- What is a license?
- How are licensees found?
- Can I start my own company?
- Does the government have rights in the invention?
- How can I find out the status of my invention?
- What is the role of inventors in the technology transfer process?
- What to Expect from ITG
What is ITG?
The Invention Transfer Group (ITG) is a unit of UCI Applied Innovation which fosters alliances between UCI and industry, protects UCI’s intellectual property (IP), including patentable inventions and copyrightable software, and commercializes UCI’s IP for public benefit by licensing UCI’s IP to startup and existing companies. A printable brochure and information from a faculty’s perspective can be found here.
How do I know if I have an invention?
An invention is a unique and novel discovery by you that is generally categorized as a composition of matter; method of doing something; a product, machine (or device);or any improvements thereof.
Should I disclose my invention to ITG?
Yes! Any UCI employee should disclose their invention to ITG if they believe their invention can be commercialized by a startup or existing company for public use and benefit. Each employee signed UC’s patent acknowledgement agreement (PAA), which obligates them to disclose potentially patentable inventions to ITG. The current PAA can be found here: http://ucnet.universityofcalifornia.edu/forms/pdf/upay-585.pdf.
How should I disclose an invention to ITG?
Inventors can submit their invention via UCI’s record of invention form (ROI) which is available here: http://ITG.uci.edu/top-menu/forms/record-of-Invention-disclosure.doc
When should I disclose an invention to ITG?
You should submit an ROI whenever you feel you have discovered something unique and novel with possible commercial value and application. Ideally, the ROI should be submitted to ITG before it is disclosed to any non-UCI personnel or the general public. If a patent application is not filed on an invention before a public disclosure (presentations, publications, etc.), patent rights might be forfeited by law.
How do I benefit from disclosing an invention?
If your invention is commercialized, any revenues from fees and royalties – minus ITG’s costs of pursuing a patent - are shared with the inventors. Under current UC policy, inventors receive 35% of any revenues. Also, if an invention is licensed to a startup or existing company, the inventors may benefit from an alliance with the company, such as industry sponsored research funding.
Should I publicly disclose my invention?
You may publish or present whenever you feel appropriate, but you should contact ITG to be informed of the consequences of doing so and how it might affect your patent rights. It is possible to both file a patent and publicly disclose your invention, if done in an appropriate manner. Ideally, an ROI should be submitted to ITG before the invention is disclosed to any non-UCI personnel or the general public. If a patent application is not filed on an invention before a public disclosure (presentations, publications, etc.), patent rights might be forfeited by law.
Who owns what I create?
UCI is assigned ownership to any invention that you conceive or develop:
- within the course and scope of your University employment;
- using any University research facilities; or
- using any gift, grant, or contract research funds received through the University.
When in doubt, please contact ITG: http://www.ITG.uci.edu/top-menu/contacts/index.html.
How do I determine who is an inventor?
There is a certain set of rules under US patent law which is used to determine who is an inventor. Authorship for a publication and inventorship for a patent have different criteria and are not the same. For purposes of the ROI, list any individual who has made an intellectual contribution to the invention itself. If unsure, please contact ITG. More information on inventorship determination can be found here: http://ITG.uci.edu/top-menu/forms/inventorship-4web.pdf
Does the order of names matter in an invention or patent?
No. The order in which inventors are listed in an ROI or patent is of no consequence and bears no relationship to their contribution to the invention.
Why should I keep records of my invention?
The issue of who should be named an inventor and who is entitled to a patent may be decided on the basis of records kept by the parties to the dispute. For more information on recordkeeping in relationship to patent, go here: http://ITG.uci.edu/top-menu/forms/recordkeeping-4web.pdf
What is a patent?
A patent is a property right that gives the owner of an invention the right to prevent others from making, using, selling, or offering it for sale. This right expires 20 years from the date the invention was filed as a non-provisional patent application, assuming the patent is allowed to issue. The US Patent and Trademark Office has general information on patents here: http://www.uspto.gov/inventors/patents.jsp
Will my invention be considered for patenting?
Whether or not an invention is filed for patent protection is determined by ITG on a case-by-case basis. Because of the substantial costs of patenting your invention, ITG considers: patent eligibility under U.S. patent law, technical merit, commercial value, and other factors.
Who pays for the patent and how much does it cost?
If ITG selects an invention for patenting, UCI will pay a qualified patent attorney to apply for a patent on our behalf. An issued United States patent can cost as much at $25,000-$35,000 or more to prosecute. Costs for worldwide patent rights can quickly approach hundreds of thousands of dollars. Once the invention is licensed to a startup or company, ITG will seek reimbursement of these costs from that licensee.
The patent attorney sent me a draft patent application. What do I do?
Please review and provide your comments and feedback. On average, only about 50% of patent applications sent to the USPTO will be allowed to issue as a patent. It is important that an inventor review the patent application for completeness and accuracy in capturing the uniqueness and commercial value of the invention. Any company who is interested in licensing the technology will want to review the patent for these criteria.
How long does it take to get a patent?
It takes on average about three (3) years for a patent application to be allowed to issue, if at all. The US Patent and Trademark Office has general information on the patenting process here: http://www.uspto.gov/inventors/patents.jsp.
What are the types of patent applications?
A "PROVISIONAL” is an informal patent application that is not examined by the USPTO, but can be filed quickly and easily prior to disclosing the invention to non-UCI personnel or to the general public. A provisional expires within 1 year, and a decision to file a non-provisional and/or PCT should be made before then.
A “NON-PROVISIONAL” is a formal patent application assigned to a USPTO Examiner who will reject or allow the patent to issue. The Examiner will make theiropinion known through “office actions” which the application will need to respond to. This process is known as “patent prosecution.”
A “PCT” (or “international application”) is an application under the Paris Convention Treaty. The PCT allows the same application to be sent to different countries for patent prosecution at the “national phase” level.
A “NATIONAL PHASE” application is analogous to a non-provisional, and constitutes a formal application in a particular country.
What is technology transfer?
From a university’s point of view, “technology transfer” is the process by which the university: (1) identifies new inventions; (2) protects them through the patenting process; (3) licenses them to third parties to manufacture and sell; and (4) receives consideration from the licensee. One of the goals of technology transfer at UCI is to benefit the public either through the use of new inventions or job creation from the manufacture and sale of new technologies. Some details on technology transfer at UCI can be found here: http://ITG.uci.edu/top-menu/forms/partnership-brochure-4web.pdf
What is a license?
Under technology transfer, a license is an agreement between UCI and a third party which allows the third party to manufacture and sell UCI’s inventions. In return, UCI receives consideration, such as reimbursement of patent costs, fees and royalties. Without a license, UCI can prevent the third party from manufacturing and selling the invention if it has been patented.
How are licensees found?
Potential licensees are sought in a variety of passive and active efforts by ITG, ideally with inventor involvement. One of the best sources of potential licensees comes from the inventors themselves, as they may know which companies are in their field of expertise and may have existing relationships with those companies.
Can I start my own company?
Yes! If you are motivated to start a company based upon the technology you invented at UCI, it is possible to do so. A list of UCI’s startups can be found here: http://www.ITG.uci.edu/startup-companies/index.html. Please contact ITG to determine what you should consider before doing so, and what your first steps might be.
Does the government have rights in the invention?
If the invention was created in the process of research funded by the government, the government retains certain rights in the invention.
How can I find out the status of my invention?
Your invention will be assigned to a Licensing Officer (LO) at ITG and be given a UC Case identification number. Please contact the LO managing your case with any questions at: http://www.ITG.uci.edu/top-menu/contacts/index.html. If you have just submitted your invention or are unsure of your invention’s LO, please call our Records Manager at (949) 824-3133 to request your LO.
What is the role of inventors in the technology transfer process?
The inventor(s) play a role at many stages of the licensing process. For example, ITG relies on them to:
- disclose new inventions/technologies
- work with attorneys to help prepare patent applications and respond to the patent office
- review marketing materials and suggest companies as possible licensees and commercialization partners
- help respond to technical questions and meet with interested companies
- keep ITG informed of upcoming publications and interactions with companies related to your invention
What to Expect from ITG
The First Week: Your invention will be assigned to a Licensing Officer (LO) at ITG and be given a UC Case number.
The First 3 Months: An LO will begin evaluating the invention for: 1) patent eligibility under U.S. patent law, 2) technical merit, and 3) commercial value. During this time a provisional application may be filed. If the invention is ready to be marketed, ITG will develop a non-confidential disclosure (NCD) to disseminate. Companies that may be interested in licensing the invention will be contacted with the NCD. Third parties who desire more detailed information may be asked to sign our non-disclosure agreement here: www.ota.uci.edu/top-menu/forms/non-disclosure-agreement.doc. Inventors are encouraged to stay actively involved in the marketing process, including seeking out and engaging potential licensees on their own. Please keep the LO appraised of your activities.
The Long-Term: If ITG decides to apply for a non-provisional patent on your invention, we will work with a qualified Patent Attorney throughout the prosecution process. ITG will continue to manage the invention as long as it is deemed commercially valuable.