// WHY SHOULD I DISCLOSE MY INVENTION?

All UC employees sign a Patent Acknowledgement Agreement that requires them to disclose to OIPA any potentially patentable inventions created while employed by UC, whether or not UC resources are utilized. See UC Patent Acknowledgement at http://www.ucop.edu/ott/patentpolicy/patentac.html

Most scientific research conducted at UCLA is sponsored by either federal or private sponsors who require that they be informed of all inventions arising from the research funding. In many cases, the sponsors may have rights to these inventions.

An industrial partner may be needed to complete the development of your invention into a product in order for it to serve the public good. Commercialization may generate financial benefits for the inventor and the University. In addition, it may lead to new and valuable industry collaborations and sponsored research.

Through OIPA, inventors can obtain patent or copyright protection for their intellectual property, and seek the assistance of experienced technology transfer, business development and marketing staff.

// WHEN SHOULD I DISCLOSE?

Ideally, you should disclose your invention to OIPA after reduction to practice and prior to any enabling public disclosure so that, if necessary, a patent application can be prepared and filed. Verbal or poster presentation at a scientific conference or to a company, or publication of a manuscript or abstract may constitute public disclosure. The U.S. Patent Office allows one year from the date of disclosure to preserve domestic patent rights, whereas foreign patent rights are automatically lost once the invention is disclosed to the public. Submission of a manuscript to a journal is generally not considered a disclosure, but with the advent of electronic publication, it is important to be aware of actual publication dates.

// I HAVE A CONSULTING AGREEMENT—SHOULD I DISCLOSE INVENTIONS TO OIPA?

Yes! The Patent Acknowledgement Agreement with UC requires you to disclose all inventions that you develop or co-develop during your employment at UCLA. The University needs to determine ownership of your invention as well as any obligation that we might have to federal or private sponsors.

// HOW DO I DISCLOSE MY INVENTION?

OIPA has created an Invention Disclosure Form that can be easily accessed online and may be sent to us electronically or in hard copy. Find the Disclosure Form at http://www.research.ucla.edu/forms/invention_report.doc

// DOES EVERY INVENTION DISCLOSED TO OIPA RESULT IN A PATENT APPLICATION?

No. The substantial expense of obtaining patent rights—roughly $25,000 for a US patent and up to $100,000 for worldwide coverage—forces us to critically examine the commercial potential of each invention disclosure. Furthermore, your invention may not meet the criteria for patentability, and different forms of protection may be available. See, OIPA Guide: "Your Patent Application: Timeline and Costs"

// HOW IS MY DISCLOSURE HANDLED?

The First Week:

• Your invention disclosure is assigned to a professional case officer within OIPA, given a tracking number and reported to sponsors or co-inventing institutions when applicable.

The First Month:

• The case officer will contact you to discuss the novelty, usefulness and potential commercial applications of your invention.
• A provisional or full patent application may be filed if the evaluation of patentability and commercial viability warrants this. The decision to file may be delayed in order to gauge commercial interest through marketing activities.

The First 30-90 Days:

• If the invention is ready to be marketed, OIPA will develop a non-confidential summary of your invention for use in marketing to potential licensees. Your input and assistance with the development of this one page summary is both needed and appreciated.
• A list of target companies that may license the invention will be compiled from many sources, including our extensive in-house industry database, our market research and your industry contacts.
• A marketing campaign will commence using the non-confidential summary along with any of your relevant publications. The case officer will actively contact appropriate companies to apprise them of your invention and determine their interest.
• Our marketing team will send you a summary of marketing activities.
• Ideally, the marketing efforts will yield companies who are interested in obtaining more details about your invention under a secrecy agreement.

The Long-Term

• Throughout the marketing phase, OIPA will manage the prosecution of the patent rights, working in concert with an intellectual property lawyer selected from a qualified law firm.
• OIPA will continue to manage your invention as long there are potential or existing patent rights that may be commercially viable.
• Ideally, OIPA finds a licensee for your invention, in which case OIPA negotiates, executes, and manages the resulting license agreement. Often licenses lead to collaborative research relationships or sponsored research agreements that are mutually beneficial and lead to valued long-term relationships.
• The marketing and licensing process is ongoing and may be done in stages as improvements are made. Please be sure to inform us of any new developments or contemplated publications that may describe improvements to your invention that could enhance its commercial potential.
  

FOR FURTHER INFORMATION:
– UC Patent Policy: http://www.ucop.edu/ott/patentpolicy/first.html
– UC Patent Acknowledgement Form: http://www.ucop.edu/ott/patentpolicy/patentac.html
– UCLA Invention Disclosure Form: http://www.research.ucla.edu/forms/invention_report.doc
– UCLA MTA Guide: http://www.research.ucla.edu/mta
– UC Copyright Policy: http://www.universityofcalifornia.edu/copyright/
– OIPA Home Page: http://www.research.ucla.edu/oipa