Frequently Asked Questions

What does the Office of Technology & Industry Alliances do?

UCSB’s Office of Technology & Industry Alliances has two main responsibilities: to manage the intellectual property developed through UCSB research (including out-licensing) and to manage the many agreements with industry partners that support research collaborations (including research agreements, material transfer agreements, non-disclosure agreements and memorandams of understanding). Our mission is to create lasting, mutually beneficial relationships between UCSB and industry in order to foster innovation and have our research benefit the public.

 

Disclosing an Invention

How can I disclose an invention to TIA?

Inventions are disclosed to TIA through the Invention Disclosure Form.  Please note that if you are disclosing a piece of software or other copyrightable work, as copyright and patent law differ, we have a separate disclosure form.  A TIA licensing officer will be assigned to review the disclosure and discuss its potential commercial value and/or relevance with you.

If you are not sure if your invention or software is ready for disclosure, a TIA licensing officer can meet with you to discuss the invention in more detail and help determine if it is ready for disclosure.

 

What is the purpose of the invention disclosure form?

The disclosure forms provide TIA with the information we need to review the invention or software.  With the information on the completed disclosure form, TIA can understand any pre-existing obligations to the invention (through research funding agreements, etc), determine if the invention is patentable, assess any legal deadlines (such as upcoming publications), and gain an initial understanding about the purpose and potential commercial significance of the disclosed invention.   In other words, the form is critical for assuring TIA understands both the legal landscape and potential significance of the disclosed intellectual property.

 

If an inventor or author is not current a UC employee, do I need to get their signature on the disclosure form?

No.  If one or more inventors are no longer employed by UCSB, it can be difficult to acquire signatures on the disclosure document.  It is critical to assure the form lists accurate contact information for those inventors, and it is beneficial to obtain their signatures when possible, but a signature is not required for non-UC inventors/authors.  It is good practice, however, to share the disclosure form with these non-UC authors/inventors – particularly if they were not UC employees at the time of the invention – since they may be required to involve their organization’s intellectual property office.

 

Patents

What Is a Patent?

A patent is a property right granted by a government that gives the owner of an invention the right to exclude others from making, using, offering for sale or selling or importing the invention covered by the patent into the country that granted the patent. For a full list of patent-related FAQs, see our Patent Basics page.

 

Can a publication affect my patent rights?

Yes.  Under U.S. patent law, an invention must be “novel” to be patentable.  To be novel, among other things, an invention cannot be described in an “enabling” publication, i.e., a publication that describes the invention in sufficient detail that a person skilled in the necessary arts can practice the invention based on that publication.  Once the invention is the subject of an enabling publication, U.S. patent law does provide the limited ability to file a patent application within one year of the publication date, although the breadth of this exception was limited by recent patent law reforms.  Outside the U.S., most jurisdictions require “absolute” novelty, meaning once the invention is the subject of an enabling publication, patent rights are no longer available.  If you believe your invention may have significant commercial value or relevance, it is a good idea to contact TIA about the invention at least three (3) months prior to any anticipated publication date (including on-line publication dates, which typically occur prior to the print publication date).

 

Other Agreements

What Is Copyright?

Copyright law protects the expression of ideas, not the ideas themselves. To be eligible for copyright protection, a work must be original and fixed in a tangible medium and be one of the following eight categories of works:

  • literary works, including computer software
  • musical works, including any accompanying words
  • dramatic works, including any accompanying music
  • pantomimes and choreographic works
  • pictorial, graphic, and sculptural works
  • motion pictures and other audiovisual works
  • sound recordings
  • architectural works

 

Can I Open Source Software?

An “open source” license is a license under which the copyright owner agrees to allow certain uses of the copyrighted material without the need for each end-user to seek advance permission from the copyright owner. Each of the over sixty different open source licenses has unique terms and conditions. Some of the common terms and conditions include the requirement that each end-user freely redistribute the copyrighted material and, in the case of software, that each end-user provide other users with access to source code. The Open Source Initiative, a nonprofit organization, tracks the different open source licenses and provides copies of common licenses on their website at: http://www.opensource.org/licenses. Two common open source licenses in the academic setting are the Berkeley Software Distribution (BSD) license and the General Public License (GPL).

When considering whether to provide software code to the public under an open source license, and when considering whether to use code acquired under an open source license, it is critical to recognize that not all open source licenses are alike.

If your UCSB research group is interested in releasing code under an open source license, please complete and forward the Request to Open Source Software form to the TIA Office.

 

How to I put an industry research agreement in place?

When a company expresses interest in funding a research project at UCSB, the first step is for the faculty member and company representative to agree upon a scope of work and a budget.  It is typically good measure to submit your scope of work and budget to the campus Sponsored Projects Office (SPO) at the point which the company requests the scope of work and budgetary detail, regardless of whether they in fact seek an institutionally-endorsed copy.  The faculty member should work with their respective departmental administrator/SPO Liaison to prepare the scope of work and budget any other compliance paperwork (e.g. Data Sheet, conflict of interest forms).  Once SPO approves the proposal (and submits the proposal to company, if requested), the file handed over to the TIA’s industry contracts team, who will review and negotiate the research agreement which contains the final terms and conditions for the project.

 

What is a material transfer agreement?

A Material Transfer Agreement (MTA) is a legally binding contract that governs the transfer of tangible research materials or samples between two organizations.  An MTA is typically used when an organization is providing the materials as a public service to support academic or scholarly research.  Consistent with this purpose, the materials are typically provided either for free or for a nominal fee to cover costs.  There is often no formal collaboration between the scientists exchanging materials, although MTA terms can be embedded in a research agreement (or an MTA simultaneously executed) when the parties anticipate materials will be exchanged during the research collaboration. MTAs are used to transfer a broad array of materials, including biological materials (such as plant samples, reagents, cell lines, plasmids, and vectors), chemical compounds, engineering components, and even software and data. MTAs are considered “Incoming MTAs” when materials are being provided to a UCSB researcher from another organization, and “Outgoing MTAs” when UCSB researchers wish to provide the materials to others.

 

Can I sign a material transfer agreement?

No.  Only UCSB employees with a written delegation of authority can sign MTAs.  Researchers do not have a written delegation of authority.  TIA is the only office at UCSB authorized to negotiate and sign MTAs on behalf of UCSB.   Please contact TIA’s MTA Officer if an MTA is needed.

 

Are there any circumstances where a material transfer agreement is not needed for an exchange of materials?

Yes.  In certain circumstances, a material transfer agreement is not needed to send materials from UCSB to another research organization.  Please see Office of Research’s Research Circular E.1. for a discussion of when outgoing MTAs are not required.  Even if an outgoing MTA is not required, TIA will put an outgoing MTA in place at any time, upon the researcher’s request.   If the material relates to an invention disclosure to TIA by your research group or has particular significance to your group, an outgoing MTA is always encouraged.

 

What is a Non-Disclosure Agreement?

A non-disclosure agreement is an agreement where the parties agree to keep certain information they receive from the other party confidential.  When a company is discussing potential research collaborations with a UCSB researchers the company may express the need to share some information that it considers proprietary or confidential in order to allow for an effective and robust discussion.  A UCSB researcher may also have information that he or she considers confidential that is necessary to reveal while discussing potential research collaborations (such as unpublished research results or the details of patentable inventions).  In such circumstances, the company or the researcher may ask that the parties enter into a Non-Disclosure Agreement (NDA), alternately called a Confidentiality Agreement or a Secrecy Agreement, in order to protect pre-existing proprietary information.

 

Can I sign a non-disclosure agreement?

If the non-disclosure agreement concerns a current or potential university research project or university IP, no.  TIA is the only office at UCSB authorized to negotiate and sign NDAs on behalf of UCSB.   Please contact TIA’s NDA Officer if an NDA is needed.

 

Licensing

How much does it cost to license an invention or piece of software from TIA?

It depends.  Licensing terms are unique and depend on the circumstances.  When discussing a licensing arrangement, many factors drive a potential license’s financial terms and there are different types of agreements that are used (letters of intent, options, licenses, end-user agreements, etc.)  If you have an interest in a specific invention, please contact the assigned licensing officer who can explore potential financial terms with you in more detail.

 

I want to found a startup company. Who should I contact?

TIA maintains a Startup Support Program, managed by Director Sherylle Mills-Englander. The Startup Support Program exists to help foster entrepreneurs on campus and guide them through the process of starting a company. If you are thinking of starting or company, or if you have a startup and need some particular advice, the Startup Support Program can be an extremely useful tool.  Feel free to contact Sherylle to set up a meeting.

If you are interested in forming a startup based on one of our Available Technologies, please contact us. There are over 65 startups that were founded based on UCSB technologies, and we would be glad to help your company do the same.