Intellectual Property/Licensing

Disclosing Your Innovation

If, in the course of your UCSB research, you believe you have discovered or developed something of potential commercial value or commercial relevance, the first step is to complete the appropriate invention disclosure form.  Since patent and copyright law differ significantly, TIA has two main disclosure forms: one for patentable inventions and one for copyrightable materials (software, multimedia, etc.):

Invention Disclosure Form

Software/Copyright Disclosure Form

If you would like to discuss the innovation’s commercial potential in advance of completing the form, please contact our office.

After Disclosing the Innovation

Once our office receives the disclosure form for your innovation, it will be assigned to an individual licensing officer, then reviewed for patentability/copyrightability and to identify any pre-existing legal obligations to third parties that must be honored. Our office will also review the innovation’s potential to attract commercial interests. The licensing officer will contact you, often requesting to meet to discuss the technology’s background and commercial advantages in more detail. 

If the technology has potential commercial relevance, the licensing offer will seek appropriate intellectual property protection and our marketing team will create a non-confidential description and try to identify companies that may be interested in commercializing the technology. It is very important for the innovators to provide their insights both on potentially interested companies (even if a specific contact within the company is not known) and in identifying key data or images that most dramatically demonstrates the commercial value of the technology.

If a company wants to evaluate the technology, our office will provide them with relevant publications and other non-confidential materials. If the company desires to have a deep discussion with the innovators, or have access to unpublished materials during its evaluation, our office will put a non-disclosure agreement between the University and the company first.

If the company is interested in pursuing commercialization and is a good fit for the technology, our office will negotiate with the company to put a license, or an option to secure a license, in place. The license may grant exclusive commercial rights, exclusive commercial rights for a particular product or market area or non-exclusive rights, depending on the circumstances.  Typically, the innovators do not need to be significantly involved in this process, although we will provide periodic updates upon request.

While our office backs as many technologies as possible, for as long as possible, securing patent rights is expensive and complex. Thus, at times, if a technology is unable to attract any commercial interest, we may need to close that case to preserve resources for future innovations.     

Patent Law Basics

What is a patent?

A patent is a property right granted by the government that gives the owner the right to exclude others from making, selling, offering for sale, using or importing the invention covered by the patent. Because an owner must grant permission for a third party to use the patented invention, the owner can grant permission subject to conditions, such as royalty payments, or limit its permission to use the patent to certain territories, products or markets. The term of a patent is twenty (20) years from the date the patent application is first filed.  After the patent expires, the covered invention enters the “public domain” and anyone can use it for any purpose without the permission of the owner.  A patent only extends to the issuing government’s territory. For example, a patent issued by the United States is only effective in the United States and its territories.

What is patentable?

Under U.S. patent law, patents may be used to protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (typically referred to as “inventions”). In other words, “anything made by a human.” A patent cannot be obtained for a mere suggestion or idea, anything that naturally occurs, the laws of nature or observations of a natural process.  From time-to-time, the U.S. Supreme Court will make specific rulings on what patents that often limits what may be patented within certain sectors, so the precise subject matter that may be patentable can change over time.

In addition, a patentable invention needs to meet three primary legal criteria:

1. Usefulness

To be “useful,” the invention must have a useful purpose and must exist and/or be operational (typically referred to a “reduced to practice.”)  For example, if a patent application covers a new chemical compound, the patent applicant must demonstrate that the chemical compound can be made in the described form. If it covers a process, the patent application must demonstrate that the process actually works as described. The invention cannot be purely theoretical and unproven.  Research data is typically presented in the application to meet this requirement. If data is not available, it is much more difficult (and expensive) to try to convince a patent office that the invention is actually “useful,” and the patent office may ultimately deny the request for a patent.

2. Novelty

The claimed invention cannot be described in any printed publication (either the inventors or anyone else), or have been in public use, on sale, or otherwise available to the public, before the patent application is filed. Most countries require “absolute novelty,” meaning all patent rights are lost on the date of first publication, sale or public use. The United States, however, has a grace period of one (1) year after the first public description, use or sale to file a patent application. For universities, printed publications most often consist of academic journal articles, but it is important to note that conferences slides/posters, YouTube videos, or even press releases are considered publications. And, posting the article, slide or poster on a website is considered a publication.   

Not all publications automatically result in lost patent rights. Under U.S. patent law, a publication must be “enabling” to affect patent rights. In other words, the publication must expressly anticipate or make obvious all of the elements of the claimed invention, so a person with the requisite skills can replicate the invention based on the publication. For example, if an abstract of a potential conference presentation describes the impressive results obtained through a new process, but does not describe the process itself beyond a generic reference, the abstract is likely not enabling. Similarly, if a powerpoint slide describes the general properties or performance of a new material, but does not provide the specific chemical structure, it is likely not enabling.

3. Non-Obvious

An invention must also be “non-obvious.” In other words, the subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For instance, the substitution of one color for another, or changes in size, are ordinarily not patentable. In its simplest terms, there must have been an “aha!” or “eureka!” moment that led to an insight that resulted in the invention – an insight that a person with ordinary skills in the relevant area would not necessarily have had.

Who is the inventor(s) of a patentable invention?

Unlike the authorship of an academic article, which is determined according to academic customs and tends toward inclusiveness, the “inventor” of a patent is a legal determination based on a legal definition of an “inventor.” Under U.S. patent law, an “inventor” is anyone who contributes to the conception of the invention. Imagine that a faculty member leaves precise instructions for a new graduate student to run an experiment that proves a new process works. If that graduate student follows the instructions exactly and the experiment proves the process works, the graduate student may be an author of the resulting paper, but is not an inventor under patent law. However, if the instructions did not result in a working process, and the student realized that running the experiment at a higher temperature with a slightly different catalyst would work, then the student is an inventor of the improved process because the student contributed intellectual to the conception of the modified process that actually works. (The faculty member is also an inventor, as the tweaks were to a process the faculty member conceived.) 

It is very important to identify the correct inventors on a patent application, since both the failure to list an inventor on a patent and the inclusion of a non-inventor on a patent can be grounds to invalidate an issued patent under U.S. patent law.

To learn more, click here for a great article that describes inventorship with scenes and plots from popular sci fi moves and television shows.

How long does it take to get a patent?

Patent rights are not automatically granted. A patent owner must formally apply to the government for a patent. Once the application is filed, describing what the patent owner believes to be a useful, novel and non-obvious invention, the government reviews the application and compares it against previous publications and patents (typically referred to as “prior art”). If the government believes that the invention has been described before or is obvious, it will issue an “office action” that rejects certain claims made in the patent application, citing the reasons for the rejection. The patent owner, with the assistance of specialized patent attorneys, must then present arguments to demonstrate why the prior art is not relevant and why the subject matter of the patent application should not be narrowed. There are often multiple rounds of these discussions and, at times, live interviews with the government’s patent examiners or appeals of preliminary decisions. As a result, the process of obtaining a patent (typically referred to as “patent prosecution”) can take from 3-6 years, at significant expense. 

Open Source Software

What does “open source software” mean?

When software is “open sourced,” it means that the software and underlying source code can be used in any manner consistent with the terms of the open source software license it was released under without the need to obtain specific permission from the owner for such use. “Open source” does not mean that the software is in the public domain or otherwise available for unrestricted use. If someone wants to use the software in a way that is not permitted by the designated open source software license, they must first obtain the owner’s permission. 

Using open source software

There are many different types of open source software licenses, each with its own set of rules that must be followed. The terms of most open source software licenses can be viewed on the Open Source Initiative’s website at: https://opensource.org/licenses.   When researching the terms of an open source software license, please note that many of the more common licenses have several different versions, so it is important to review the correct version of the license.  For example, the GPL license comes in multiple versions, including the GPL-2.0, GPL-3.0 and the LGPL, all with slightly different legal requirements.

It is important to understand that combining or incorporating a source code acquired under an open source software license with a separate code that you have written may affect how you ultimately distribute your software.  For example, if you incorporate a patch released under GPL-2.0 into a piece of software that you develop, then your code likely must also be released under the terms of the GPL-2.0, and everyone that incorporates your code into their own in the future would have to do the same. In contrast, if you incorporate a patch released under the BSD license, then you can distribute your code in any manner you choose without offending the license terms. 

Additionally, please be aware that some open source software licenses have terms which may be incompatible with the University’s policies (such as the GPL-3.0 or Apache 2.0, both of which require licenses to relevant patents owned by the University).  To learn more, please refer to the University of California’s website regarding open source software licensing at: https://security.ucop.edu/resources/open-source-software-licensing.html. This site contains, among other things a detailed Guide to Manage Open Source Software and a chart to help researchers determine which open source software licenses can be used by the University of California. Or, if preferred, please contact our office for a more detailed discussion.

Releasing Software under an Open Source License

The University of California supports releasing software developed by its researchers under open source software licenses when the researchers desire to do so.  However, prior to open sourcing any piece of software or agreeing to openly license software contributions owned by the University, the University must first assure it has the legal ability to do so and that the release is consistent with any pre-existing legal obligations (such as obligations to research sponsors or the terms for using any third party code incorporated into the software). To obtain permission to open source software, please complete the Request to Open Source Software and submit it to our office. Our office will review the request for legal issues.  If any issues are present, our office will work with you to clear the concerns as much as possible so the software can be released through an appropriate open source software license.

Prior to deciding to openly license your software, it is important to consider whether releasing under an option source license is the best option to meet your goals. Once software is released under an open source license, the decision cannot be changed.  And the decision can impact future versions of the code. If, for example, the authors intend to seek extramural research funding to continue developing the software, starting a company based on the software or receive financial compensation for commercial uses, then it may not be the best choice to release software under an open source software license. If you have concerns about the decision to release a piece of software under an open source license, please contact our office for a more detailed discussion. 

Copyrights

The U.S. Constitution granted to Congress the power “to promote the progress of science and the useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.” The copyright laws were enacted to govern the rights granted to authors to protect their writings, and patent law was enacted to govern the rights granted to inventors to protect their discoveries. Over time, the copyright laws were expanded to protect music, sound recordings, pictures and other visual art, movies and other audiovisual works, dramatic and choreographed works, and computer software. 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

If you would like to learn more about the policies associated with copyright law, review the UC Copyright webpage.

For more information, please contact Sherylle Mills Englander

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