Technology Commercialization

The core mission of UC Davis is to generate, advance, disseminate and apply knowledge. Technology commercialization plays a key role in accomplishing this goal, often leading to new products, services and startup companies that have a transformative impact on society.

Transferring Technology

Overview

Our office enables the transformation of technology to commercial applications through a wide range of services including educational and outreach programs (both within and outside the university), filing patents, managing trademarks and copyrights, establishing licensing and commercialization agreements as well as enabling the formation of new companies.

Our office works with industry, community partners and researchers to ensure that new discoveries and inventions reach society to improve the lives of others.

Invention Disclosure
Record of Invention is Submitted
Patentability Marketability Evaluation
Technology Marketability Assessment Process Begins
Patenting
Patent Application Developed and Examined
Invention Marketing
A Non-Confidential Description (NCD), of the Invention is Developed
Confidentiality Agreement
Confidentiality Agreement is Requested
License
Identify and License Technology of Interest

Invention Disclosure

For directions on submitting an ROI, go here

Patentability Marketability Evaluation

Technology Marketability Assessment Process Begins

Once you disclose, we look at a number of factors during the technology assessment process including:

Inventorship

Inventorship is determined by a legal process conducted by an appointed patent attorney.
Each inventor must make an intellectual contribution to at least one patent claim. Thus, persons who qualify as co-authors on a publication or public presentation, but served only to perform the directives of the true inventor(s), are not considered inventors.

Ownership / Joint Patents

If inventors come from different institutions, the patent is jointly owned. Each owner has undivided rights to practice and license the invention. In this case, the technology transfer offices of the two institutions decide, in an “interinstitutional agreement,” which office will manage and market the technology.
Alternatively, if one of the inventors is from a private company and assigns their rights to that company, then the company automatically has rights to exploit the patent. The company may be interested in licensing the university’s rights to the joint invention so that they have exclusive rights to the patent.

Available Rights

After receiving the original ROI, we examine public disclosures of the invention to evaluate possible patent rights. Public disclosures may include:

Publication of a research award
Online pre-publication of a journal article
Indexing of a thesis
Posters
Presentations
Publication in a journal
Oral discussion

Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new, useful, and non-obvious. Usefulness is typically an easy requirement to meet. Rejections based on lack of novelty or lack of sufficient inventive steps to make the invention non-obvious are most common from patent offices. Learn more at http://www.uspto.gov/web/offices/pac/doc/general/index.html#novelty.

Marketability Assessment

We evaluate the market structure and potential of the technology to add needed value. Things that we look at include:

Who are the players and what are their pricing strengths
How the technology changes the industry structure the cost factors for the production needs
The switching costs for the customer to use the technology

“Non-Assert” of Ownership by the University

A different situation (the “non-assert” situation) occasionally arises when an employee invents something that he/she believes is outside his/her scope of employment with the university and in which no university resources or funding have been used. In this event, in order to fulfill the duty to disclose all inventions to the university, the inventor should submit to UC Davis InnovationAccess a Record of Invention form. UC Davis InnovationAccess will review the invention disclosure for completeness, including with respect to source of funding. If the invention is completely disclosed and no university resources or funding have been used, UC Davis InnovationAccess will request that the inventor’s Department Chair and Dean confirm that the invention is outside the inventor’s scope of employment. Once that confirmation is made, UC Davis InnovationAccess will then provide a non-assert letter to the inventor stating that the university does not assert ownership rights to the invention. This letter will be important in working with other companies about the invention.

Patenting

Patenting
If the invention is potentially patentable and has market potential, we use outside counsel to draft and file patent applications while we manage this process. The law firm is typically chosen based on the academic or industry background of their lawyers. The intellectual property officer and the patent attorney assigned to the case will work with you to develop the patent application.
Prosecution (examination of a patent application by a patent office) can take many years and cost tens to hundreds of thousands of dollars. Often the inventor(s) are consulted during patent prosecution on technical aspects prior to responding to a patent examiner. UC Davis InnovationAccess may choose to discontinue a patent application during prosecution. Reasons to do so include lack of commercial interest in the invention; significant prosecution expenses in the absence of a licensee; and a decline in the probability of obtaining an issued patent discovered during prosecution.

Patent Maintenance
Upon notification of the allowance of a patent, issuance fees must be paid. These typically are only good for 3-5 years, depending on the country. At their expiration, if the patent is to be maintained, extension fees (e.g., maintenance fees or annuities) must be paid which often increase in cost over the life of the patent. Under current patent law a patent term starts on the date of filing and runs for 20 years.

Invention Marketing

Marketing Inventions

We work with the inventors to develop a marketing piece, called a Non-Confidential Description (NCD) of the invention. The NCD is a two to three paragraph information sheet used to “introduce” the invention to the commercial sector; it is geared to a non-technical reader and typically has very limited technical data. It also includes potential applications, advantages and non-enabling images of the technology.
We work with the inventors, and primary and secondary sources of research to identify and develop potential licensees.
View technologies currently available for licensing from UC Davis

Licensing Inventions

When a company is interested in licensing a technology , there are a number of ways in which we engage with them. Most often, the initial stage is a technical discussion with the inventor. We recommend doing this under a Confidentiality Agreement unless the discussion is limited to only publicly available information.

A Confidentiality Agreement establishes a legal record for preserving intellectual property and is generally designed to protect the confidential information of both parties. Be aware that confidentiality agreements are not perfect. Over time memories are fallible and the origin of ideas often becomes blurred. The best way to protect something is to mark it conspicuously “CONFIDENTIAL.”

If the company is interested in testing the technology in-house or wants to demonstrate contractual rights to the technology to investors, we typically give them the choice of a License or an Option Agreement.

An Option Agreement gives the company a period of time to evaluate their commercial interest in a technology. This agreement confirms a company’s intent to negotiate a license, to outline each party’s rights and responsibilities, and/or establish a company’s commitment to pay certain fees or patent costs incurred while the negotiation is underway. In some cases, it includes the financial terms of the final license if executed. At the end of the option, the company will either conclude a license or allow the option to expire.
A License Agreement grants intellectual property and/or material rights to the licensee. Intellectual property rights are typically granted for a period of time through the last to expire patent. Material rights are not time limited, but usually are written for a defined period of time. Licensing may be exclusive or non-exclusive or limited by field of use or geography. You can view a summary of typical patent exclusive license terms (see forms page.)

Royalty Income

Royalty income distribution is based on the patent policy that was in effect when you joined the University of California. Specifics are in the UC Patent Agreement/Acknowledgement and the Patent Amendment that you signed as a condition of employment. If you no longer have a copy, contact your department office.
A detailed comparison is available at http://www.ucop.edu/ott/patentpolicy/compare.html.

Confidentiality Agreement

Confidentiality agreements are an important way to protect research and business information from being made public inappropriately, such as to protect your unpublished research from being scooped and to protect intellectual property rights while they are being patented. Several campus units enter into these agreements on behalf of The Regents.

If the primary purpose of the information exchange is regarding a technology (and related research) that you have disclosed, complete a Confidentiality Agreement Request Form and submit as indicated. We will contact the company and inform you when the confidentiality agreement is executed. An example of what the agreement might look like is on the forms page as well.

If the information being shared is to establish a research collaboration or program, contact Sponsored Programs to set up the confidentiality agreement.

Conversations relating to university provision of services to a company under a services agreement are handled by Contracting Services.

If the discussion is related to you providing consulting services to a company in compliance with University policy, the confidentiality agreement is between you, as an individual, and the company. It is important that you ensure the terms of your agreement don’t put you at odds with the UC Patent Policy.

License

Available Technologies

At UC Davis, our bold and creative thinkers push innovation to its limit. Last year alone, InnovationAccess assessed 294 new invention disclosures, filed 170 patent applications and completed 85 license agreements. You can browse the list of our most recently developed technologies below.

Didn’t find the technology you were looking for? Search all our available technologies here.

Licensing

To begin the licensing process, you may first identify a desired technology, or alternatively, you may contact us directly at innovationAccess@ucdavis.edu and we will assist you in identifying technologies which suit your company’s needs. You will then have the opportunity to sign a confidentiality agreement and learn more about the technology.

Once the licensing process is well underway, an agreement will be drafted conforming to common UC patent license terms. At this time you will also be given the option of securing a low-cost, time-limited, letter agreement while negotiations proceed. This time-limited agreement provides you with the commitment that UC Davis will refrain from further marketing of this technology.

Why UC Davis?

When electing to license a UC Davis technology, you will undoubtedly benefit from the knowledge and expertise of our office as they assist you through the licensing process. Once you’ve made contact with one of our officers, you will often gain access to exclusive information regarding revolutionary technologies, along with the ability to discuss plans for licensing and commercializing these technologies with our industry experts.

Since 2004, more than 61 new companies have been spun off from UC Davis research, and the university held 800+ active patents at the end of the 2013 fiscal year. With over 1,000 novel technologies to choose from, and ample research capabilities, we encourage you to consider the immeasurable benefits of working with our inventors and licensing one of the groundbreaking technologies developed at UC Davis. If unable to begin the licensing process today, we invite you to keep in touch with us and stay informed on available technologies developed at UC Davis by subscribing to our newsletter.

Technology Transfer Process

The mission of the University of California is to provide public benefit through research and education. Technology transfer is a means of assisting us in accomplishing our mission.

Technology transfer contributes to this mission in a variety of ways ranging from education and outreach programs, both within and outside the university, to commercialization through patenting, licensing and support for entrepreneurship.

InnovationAccess

UC Davis InnovationAccess provides a broad spectrum of services specifically aimed at preserving valuable intellectual property and disseminating it for public benefit using the most appropriate means available.

InnovationAccess is responsible for handling and entering various types of contractual arrangements in order to properly and efficiently transfer intellectual property to commercial enterprises, as well as to universities and other non-profit institutions.

Use the following links for additional information regarding:

Process

Whenever a company wishes to enter into an agreement with the university concerning university intellectual property, the company should contact an Intellectual Property Officer (IPO) within InnovationAccess. Any IPO will be able to provide assistance with securing the necessary agreement. If the agreement involves rights to specific intellectual property of the university, then the IPO assigned to that intellectual property will handle the request. Each invention abstract published on the website will provide the name and contact information for the assigned IPO.

Information We Need

In order to determine whether or not the company is potentially an appropriate commercial partner for a licensing arrangement, the university will usually require a commercialization plan as described within the section on licensing.

Licensing Opportunities

With over 1,000 novel technologies to choose from, and ample research capabilities, we encourage you to consider the immeasurable benefits of working with our inventors and licensing one of the groundbreaking technologies developed at UC Davis.

Getting Started with the Licensing Process

To begin the licensing process, you may first identify a desired technology, or alternatively, you may contact us directly at [email protected] and we will assist you in identifying technologies that suit your company’s needs. Our intellectual property officers are experts in their designated fields and are available to help you find and proceed with acquiring new cutting edge technologies. When electing to license a UC Davis technology, you will undoubtedly benefit from the knowledge and expertise of our office as they assist you through the licensing process.

Initiating an Agreement

When electing to license a UC Davis technology, you will have the opportunity to sign a confidentiality agreement, learn more about the technology, and discuss plans for licensing and commercialization. Once the licensing process is underway, an agreement will be drafted conforming to common UC patent license terms. At this time, you will also be given the option of securing a low-cost, time-limited, letter agreement while negotiations proceed. This time-limited agreement provides you with the commitment that UC Davis will refrain from further marketing of this technology.

Unable to begin the licensing process today?

We invite you to keep in touch with us and stay informed about available technologies developed at UC Davis by subscribing to our newsletter.

Learn About Intellectual Property

The InnovationAccess TIPS program is here to answer your IP questions!

Copyrights

Copyrights protect the effort that goes into creating “original works of authorship” and art by providing exclusive rights to the copyright owner (who is not necessarily the author or artist) for a limited, albeit long time. The types of “work of authorship” are very broad – from obvious examples like writings and artwork to others like choreography, web pages, computer programs, databases, architectural drawings and boat hull designs.

Patents

A patent for an invention grants the owner “the right to exclude others from making, using, offering for sale, or selling” the invention or importing the invention into the country where the relevant patent rights exist. Patentable subject matter includes new compounds, methods, plants and software. Obtaining a patent can take many years and significant expense.

Trade and Service Marks

Trademark rights may be used to prevent others from using a “confusingly similar” mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the U.S. Patent and Trademark Office.

Tangible Research Property

Tangible Research Property (TRP) is tangible material produced in the course of research. TRP includes biological materials (e.g., cell lines, plasmids), chemical compounds, physical samples and prototype devices. TRP is separate from intangible property rights (such as patent rights or copyrights). TRP can be the subject of contractual rights embodied in agreements such as Material Transfer Agreements (MTAs). Such agreements can impose limitations on the use or transfer of TRP.

Trade Secrets

A trade secret is information which is not publicly available and which provides the holder with a competitive advantage. Reasonable efforts to maintain secrecy are typically required for enforcement of trade secrets. Trade secrets include inventions, know-how, processes, systems, devices or other confidential information. In the business realm, trade secrets can include customer lists, marketing strategies and manufacturing processes. In the academic realm, trade secrets are less applicable given that publication and information dissemination are key to the academic mission.

TIPS Resources

General IP Resources

Innovator & Inventor Resources

Innovator’s Guide to Commercialization [North Carolina State University]
- Download Innovator Guide PDF
An Inventor’s Guide Technology Transfer [UC Berkeley]

Learn about Patents

Learn about Licensing

Tech Transfer & Patent Prosecution Diagrams

Technology Development Diagram [Harvard University]
Technology Commercialization Process [University of California]
Roadmap for Typical US Patent Prosecution [Harvard University]

Helpful Publications

Patents and copyrights [See Fig. 2]
Commercialization [See Fig. 1]

TIPS Video Series

Types of IP

What is an Invention?

How is Patentability Assessed?

Who is an Inventor?

Filing and Obtaining a Patent

What is a License?

Request a TIPS presentation for your class, unit, or team

Learn more about Intellectual Property via a TIPS presentation

Industry-University Agreements

We are committed to effectively and efficiently managing industry-university research collaborations, with the appropriate, authorized representatives of both parties, to advance the mission of the university.

Principles for Industry-University Agreements

The established fundamental parameters for negotiating agreements with external parties to address rights and obligations associated with future university research results were established in 1999, and are based upon the following principles:

“For university relationships with external parties to succeed, agreements must address the parties’ interests in future research results through flexible application of fundamental principles to a broad range of specific circumstances. Rights and obligations associated with future research results shall be based on the following principles:

Open Dissemination of Research Results and Information
Agreements with external parties shall not abridge the ability of university researchers to disseminate their research methods and results in a timely manner. The most fundamental tenet of the university is the freedom to interpret and publish or otherwise disseminate research results in order to support the transfer of knowledge to others and maintain an open academic environment that fosters intellectual creativity.
Commitment to Students
Agreements for research relationships with external parties shall respect the university’s primary commitment to the education of its students.
Accessibility for Research Purposes
Agreements with external parties shall ensure the ability of university researchers to utilize the results of their research to perform future research.
Public Benefit
Agreements with external parties shall support the ability of the university to make available for the public benefit in a diligent and timely manner any resulting innovations and works of authorship.
Informed Participation
All individuals involved in research governed by a university agreement with an external party shall have the right and responsibility to understand the rights and obligations related to future research results embodied within the agreement.
Legal Integrity and Consistency
Commitments concerning future research results made in agreements with external parties shall be consistent with all applicable laws and regulations and the university’s contractual obligations to others.
Fair Consideration for University Research Results
Agreements with external parties shall provide fair consideration to the university and the general public for granting commercial access to future university research results.
Objective Decision-Making
When establishing or conducting university relationships with external parties, decisions made about rights to future research results shall be based upon legitimate institutional academic and business considerations and not upon matters related to the personal financial gain of any individual.”

Industry Funding Opportunities

Programs, partnerships and select industry funding opportunities include an assortment of competitive grants, private awards and in-kind opportunities.

In accordance with University of California policy, it is required that all research proposals for extramural support be reviewed by UC Davis Office of Research, Sponsored Programs before it can be formally submitted for consideration. Additionally, some proposal submissions may require direct interface and coordination through InnovationAccess when appropriate. Please note that all information shared as part of this process shall be considered non-confidential unless otherwise noted. Awards resulting from extramural funding programs will require internal coordination through UC Davis Office of Research.

Learn more >

Transferring Research Materials

Transferring Tangible Proprietary Materials and Information

A Material Transfer Agreement (MTA) is a contract between the university and one or more outside entities, e.g., another university, a company, or a non-profit organization, to facilitate and govern the transfer of tangible proprietary research materials, as well as the transfer of any associated data and information. A typical MTA will include terms that specify:

Permitted research uses of the materials and substances created through the use of the materials
Publication procedures
Inventions and intellectual property rights procedures
Confidentiality obligations
Other standard terms

Learn more >

Research Transactions

UC Davis encourages interactions and research support from commercial entities which support the missions of research, teaching, and public service. Company funding for specific projects can provide substantial benefits to both the researcher and the company. It enables the researcher to receive additional funding for support of laboratory personnel and other costs, collaborate with company scientists in the development of a scope of work for the research, and develop long term relationships with companies whose commercial interests are complementary to the researcher’s interests. Such relationships also have the added benefit of providing the possibility of future employment for UC Davis graduate students or post docs who may be interested in becoming company employees after they have completed their formal education at the university.

Companies often fund research projects in the hope that new technology emerges. The research agreement affords the sponsor rights to prospective intellectual property made by university personnel during the sponsored research, i.e., preferential rights to negotiate a commercial license agreement. In a license agreement the company has a right to certain aspects of an invention including making, using, or selling. A license agreement is a legal contract with the university and is separate from the research agreement. A license agreement contains its own terms, which include a financial structure, and provides that the licensee meet certain diligence requirements toward the timely commercial development and marketing of resulting products for the public benefit. The university retains ownership of the sponsored technology in order to meet its fiduciary responsibility to the state and to ensure university researchers freedom to continue their research in their chosen fields. Within the Office of Research, Sponsored Programs negotiates research agreements and UC Davis InnovationAccess negotiates license agreements.

Learn more >

Compliance

Overview
As university employees, faculty and staff researchers are expected to comply with university policies and state and federal regulations regarding the safe, objective and ethical conduct of research. Whether the research is privately sponsored or publicly funded, it is critical that university research be conducted in an objective manner free from outside influences. Some outside professional and personal activities, such as consulting, owning an equity interest in a business, or holding an executive, managerial or advisory position in a for-profit venture, can create actual or perceived conflicts of interest or commitment. These activities are prohibited unless they are disclosed to the appropriate reviewing body and subsequently approved.

Research Activity Approval
To protect research subjects and the campus community and ensure compliance with state and federal regulations, certain research activities also require advance approval. The Institutional Review Board (IRB) must review and approve all research protocols involving human subjects. Where the research involves the derivation or use of stem cells, approval by the Stem Cell Research Oversight (SCRO) Committee is required. Similarly, the Institutional Animal Care and Use Committee (IACUC) must review and approve all research involving animals. If the research involves the use of biological agents or harmful chemical agents, researchers must determine whether review by the Institutional Biosafety Committee (IBC) or Chemical and Laboratory Safety Committee (CLSC) is necessary. Additionally, if the research requires travel abroad or shipping research materials outside of the United States, the researcher should consult with the Office of Research Compliance unit to determine whether an export license is required.

Learn more >

Additional Industry Resources

We promote and encourage UC Davis’ interaction with industry, and there exist many different portals to begin a collaboration based upon the company’s needs, expectations and desired outcomes. Faculty members and professional researchers take the lead in the programmatic development of industry-university collaborations that build upon our research capacity. Each industry-sponsored research project is led by faculty researcher called a university Principal Investigator (PI) who guides the research, shapes the resulting technology, and is responsible for the scientific coordination with the sponsoring company. The PI and department chair are also responsible for ensuring that the project and employees comply with all applicable UC policies and procedures, such as the Disclosure of Financial Interest in Private Sponsors of Research.

As a premiere research university and a public trust, we promote appropriate collaborations and dissemination of our results of these alliances for the advancement of society. University policy and guidelines frame our interactions with industry and obligations to the university in these interactions.

Learn more >

Below are several links to guide industry partnerships at UC Davis:

Additional Researcher Resources

With our mission of research, teaching, and public service, industry-university collaborations built upon the campus’ research strengths often provide the opportunity to fulfill these goals: students are taught the most up-to-date research methods, cutting-edge research is performed and published, and research leads to an increase in knowledge, technology and business development which improves the quality of life. As a premiere research university and a public trust, we promote appropriate collaborations and dissemination of the results of these alliances for the advancement of society. University policy and guidelines frame our interactions with industry and obligations to the university in these interactions.

Learn more >

The University of California is a public trust, administered by The Regents of the University of California, a California constitutional nonprofit corporation. All contracts are issued in the university’s legal, corporate name: “The Regents of the University of California”. Though initial discussions most often begin between industrial sponsors and university faculty or research staff, authority to solicit, negotiate, and execute agreements involving research on the behalf of The Regents of the University of California is delegated to specific officials on campus. Numerous campus offices oversee the oversight and compliance of university policy relating to these transactions.

Technology Commercialization

Transferring Technology

Overview

Invention Disclosure

Patentability Marketability Evaluation

Patenting

Invention Marketing

Confidentiality Agreement

License

Inventorship

Ownership / Joint Patents

Available Rights

Conditions For Obtaining A Patent

Marketability Assessment

“Non-Assert” of Ownership by the University

Licensing Inventions

Royalty Income

Licensing

Why UC Davis?

Technology Transfer Process

InnovationAccess

Process

Information We Need

Licensing Opportunities

Getting Started with the Licensing Process

Initiating an Agreement

Explore Technology

Energy

Strawberry Licensing Program

Agriculture & Animal Science

Nanotechnology

Engineering

Unable to begin the licensing process today?

Learn About Intellectual Property

Copyrights

Patents

Trade and Service Marks

Tangible Research Property

Trade Secrets

TIPS Resources

TIPS Video Series

Types of IP

What is an Invention?

How is Patentability Assessed?

Who is an Inventor?

Filing and Obtaining a Patent

What is a License?

Industry-University Agreements

Principles for Industry-University Agreements

University of California, Davis

Innovation and Technology Commercialization

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