Office of Intellectual Property & Industry Sponsored Research

http://oip.ucla.eduTwitter: @UCLAinventions

310-794-0558

University of California

The UC family includes 10 campuses, more than 220,000 students, more than 170,000 faculty and staff, 37,000 retirees and more than 1.5 million living

alumni.

Fiscal Year 2009 - UC System-wide Inventions1482 Total Inventions*

UCR, 60, 4% UCM, 21, 1%

UCLA, 333, 22%

UCI, 112, 7%UCSD, 396,

27%

UCSC, 27, 2%

UCSB, 92, 6%

UCD, 172, 12%

UCB, 131, 9%

UCSF, 151, 10%

\

*Inventions having inventors from more than one campus are counted multiple times, once for each campus with an inventor.

Total US Patents*

UCLA, 581, 16%

UCSF, 744, 20%

UCM, 0, 0%

UCSC, 72, 2%

UCSB, 325, 9%

UCR, 84, 2%

UCI, 267, 7%

UCD, 414, 11%

UCB, 569, 16%

UCSD, 611, 17%

*Patents associated with inventors from more than one campus are reported multiple times in this exhibit.

UC-Wide Inventions – By Campus

Total Licensed/Optioned Inventions*

UCLA, 429, 19%

UCSF, 415, 19%

UCM, 15, 1%

UCSC, 27, 1%

UCSB, 263, 12% UCR, 62, 3%

UCI, 185, 8%

UCD, 144, 7%

UCB, 258, 12%

UCSD, 407, 18%

*Inventions that are subject to a utility license or an option agreement as of the close of the fiscal year. Inventions associated with inventors from more than one campus are reported multiple times in this exhibit.

Startup Companies Formed FY2009*

UCSD, 7, 14%UCB, 9, 18%

UCD, 2, 4%

UCI, 4, 8%

UCR, 0, 0%

UCSB, 4, 8%

UCSC, 0, 0%

UCM, 1, 2%

UCSF, 0, 0%UCLA, 22, 46%

*Year of start-up company formation based on execution date of the first license, option, or letter agreement granting rights to a UC invention managed by IAS or by a campus office.

Total Optioned/Licensed Inventions

UCB $7,202,000

UCD $10,846,000

UCI $5,989,000

UCLA $29,215,000

UCM $63,000

UCR $2,502,000

UCSB $5,010,000

UCSC $320,000

UCSD $26,631,000

UCSF $32,867,000

Other** $5,403,000

*Fiscal Year 2009, Total licensing income consists of two components: royalty and fee income, and patent/legal reimbursements.

**Total licensing income, primarily from a portfolio of IAS-managed DOE Laboratory inventions, most disclosed prior to the establishment of the Laboratory-based licensing offices.

Licensing Income by Campus*

Invention (Campus, Year Disclosed) FY2009 Royalty & Fee Income

Hepatitis B Vaccine (SF, 1979 & 1981) $15,909,000

Treatment of Intracranial Aneurysms (LA, 1989) $11,427,000

Interstitial Cystitis Therapy (SD, 1980) $8,723,000

EgfReceptor Antibodies (SD, 1983) $5,947,000

Bovine Growth Hormone (SF, 1980) $5,488,000

Subtotal (Top Five Inventions) $47,494,000

Total Income (Top 25 Inventions)** $74,698,000

Total Income (All Inventions) $98,705,000

% of Total from Top 5 Inventions 48.1%

% of Total from Top 25 Inventions 75.7%

*This list is limited to revenue-generating inventions that have been commercialized. The total income from royalties and fees shown here excludes payments from settlement of litigation.**Because of a tie for 25th place, a total of 26 inventions are listed here. For purposes of calculating "Top 25" total income, only income from one of the 25th place inventions is included.

UC Top Earning Inventions*

• UCLA Licensing Income for FY2010 - $27.5 M

• Inventor share (faculty and students) is 35%

• 2018 total active inventions under management

• 379 new inventions in FY2009-2010 (~50% from engineering/physical science)

By the Numbers:Licensing

Fiscal Year 2010

• Total Material Transfer Agreements: 1,037

• Total Number of Industry Contracts: 444

• Total Industry Sponsored Research Dollars: $28,347,563

By the Numbers:Material Transfer Agreements and

Industry Sponsored Research

• Educating the academic community about appropriate methods for protecting intellectual property

• Accelerating the development of UCLA discoveries for the public good

• Promoting economic growth in California

• Facilitating collaborations with industry for next-generation scientific breakthroughs.

The Mission of UCLA Tech Transfer

• Manage all inventions created by UCLA faculty, staff, postdocs, and students

– Accept invention reports from the above people

– Assign invention to a Licensing Officer who analyzes the report for several key aspects (obligations to third parties, patentability, commercial potential, potential licensees)

– Make a decision on whether or not to file for patent protection

• Market the inventions to find a commercial partner

• Negotiate, sign, and manage all of the licensing agreements giving companies or start ups rights to practice university intellectual property.

• Negotiate, sign and manage all sponsored research agreements with industry sponsors.

What do we do?

• Federal law enacted in 1980

• A fundamental change to patent ownership.

• University owns patent rights to inventions sponsored by the U.S. government

• University reports inventions to government and tries to commercialize

• Government gets a non-exclusive license

• Preference for Small Business licensee

• Royalties must (1) be shared with inventor and; (2) be used for research and education. UCLA policy is 50% back to UCLA general fund, 15% to the department, and 35% to inventor(s).

Bayh-Dole Act(35 U.S.C. §200-212)

Confidential Disclosure Agreements: Allows for disclosure of an invention to potentially interested company if the invention has not become public.

-protects patentability- disclosures under a CDA not considered public

-recipient contractually agrees not to share the information

Material Transfer Agreements: Allows for the transfer of materials to or from a company.

-protects ownership of the material-protects against potential liability

Sponsored Research or Collaboration Agreements: Sets out a scope of work and budget for work being done at UCLA or at UCLA and the company

-can give certain rights to new inventions developed

Working with IndustryHow our office can help

• Copyright – covers works of authorship – including software and algorithms

• UC licenses Copyright inventions

- Medical software

- Digital models of ancient Rome

- Algorithms

• Manage Open Source licensing issues

Copyrights

UCLAAdministration Organization

ChancellorGene D. Block

Provost andExecutive Vice Chancellor

Scott Waugh

Vice ProvostIntellectual Property and Industry Relations

Kathryn Atchison

OIP InternalAdministration Organization

Vice ProvostIntellectual Property and Industry Relations

Associate Vice Chancellor for ResearchKathryn Atchison, DDS, MPH

Director of LicensingEmily Loughran, MBA

Administrative AnalystRobin Faria, MA

DirectorIndustry Sponsored Research

Lillian Smith, JD

Chief Administrative OfficerStephen Lee

Patent Prosecution Team

Assistant Director,ISR/MTA

Brian Roe, JD

Associate Director,Licensing

Earl Weinstein, PhD

Assistant Director,Licensing

Claire Wake, PhD

Marketing Team

Copyright OfficerKat Fibiger, JD

Technology Transfer OfficersLicensing Team

MTA ManagerMougeh Mozafarian, JD

MTA Team

Industry Contracts Team

Technology Transfer Support Team

Marketing:• Non-confidential descriptions

• Company/VC/Angel contacts

• Industry Meet & Greet

• Social Media

Licensing• Letter of Intent

• Option Agreement

• License Agreement

• Startups

– CNSI Incubator

– SBIR

– VC funding

Patenting• Provisional

• PCT

• US & National Phase

Sponsored Research• Improve the

technology

• Research collaborations

• Visiting Scientists

Government Funding?• Report to funding agency

• Bayh-Dole obligations

• Manufacturing requirements

Private Funding?• Report to sponsor

• Evaluate sponsor rights

• Material Transfer Agreement

University Technology Process

Invention Report

Assigned to a licensing

officer

Licensing Support Group

Marketing Group

Patent Prosecution Group

Licensing Officers

Industry Contract Officers

MTA Team