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Guidance for Student Inventors at UCSC

Frequently we at UCSC IATC are asked by students, “Does the University own my intellectual property?”

Unsatisfyingly, the answer from IATC is often, “It depends”. This guide is intended to provide clarity around the process at UCSC and a baseline to help students be more informed when they approach IATC with questions surrounding intellectual property and patents.

However, it is most important to understand that no matter where you are in the invention process, UCSC IATC is happy to take any questions and discuss these matters with anyone in the campus community.

Typical situations (click for more information):

 

I am a graduate or undergraduate student employed full time or part time by the university…

Anyone who is a paid employee of UCSC has signed the UC Patent Acknowledgement before starting work and is obligated under the terms of that agreement to disclose all inventions to IATC through the UCSC Invention Disclosure Form.

You need to be logged into your ucsc.edu gmail account to access the form.

Graduate students receiving research or teaching stipends; students who work in offices, laboratories, or food service; or anyone paid a salary or hourly wage to work on behalf of the university is considered an employee for these purposes.

Note that disclosing inventions does not necessarily confer ownership of the invention to the UC. If an invention was made without the use of UCSC funding or UCSC research facilities and it is outside the course and scope of your employment at UCSC, it more than likely does not belong to the UC.

For example, an undergraduate is paid by the library to re-shelve books. If she invents a new device that makes it easier to re-shelve books, then that invention will likely be owned by the university. If she invents a new gearing mechanism for a bicycle and did it on her own time without university funding or facilities, that gearing mechanism would likely not be owned by the university.  

Note that you can disclose an invention without assigning it to the UC by indicating on the UCSC Invention Disclosure Form that you do not believe that the UC owns the invention.  IATC will consider the information you provide and determine ownership. If it is found that the UC does not have ownership of the invention, documentation of that finding will be produced and provided. Contact Director of Innovation Transfer Jeff Jackson (jeffjackson@ucsc.edu) prior to filling out the UCSC Invention Disclosure Form for how to best do this.

I am a student volunteering (unpaid) in a research lab…

According to guidance from the UC Office of the President:

UC employees, persons not employed by the university but who use UC research facilities, and persons who receive gift, grant or contract funds through the University are all required to sign the University Patent Acknowledgment (pdf).

By signing the Patent Acknowledgement, student volunteer researchers, like employees, are obligated to disclose all inventions to IATC. If these inventions used UCSC funding or research facilities, they are likely to be owned by the UC.

University funding means any funding received by the university and managed by the Office of Research (Federal, philanthropic, or industry sponsored research funding) or by University Relations (gift funding). There are specific exceptions, particularly in entrepreneurial programs, where university funding does not confer university ownership of inventions.

University research facilities does not mean any building or equipment. It means specialized research facilities and equipment that are not normally accessible to individuals outside of a university setting (university facilities are more along the lines of an observatory or mass spectrometer rather than a dorm room or workshop, hand tools, soldering irons, or a general-purpose computer.)

As above, disclosure does not necessarily mean university ownership. Any inventor required to disclose can state that he or she believes that the university does not own the invention. IATC will consider the information you provide to determine ownership.  Contact IATC for specific guidance.

I am a student who is not employed by the university, I do not work in a university lab, and I invented something without the use of university funding or research facilities…

In this situation, you are not required to disclose the invention to IATC and the UC has no ownership. If you’re not sure (or want to make sure), please feel free to contact IATC to discuss the invention. Often, IATC will advise the student not to disclose the invention in this situation.

That UC has no ownership means that IATC cannot directly advise on or financially support patent prosecution, licensing, or any IP or business strategy related to the invention.

However, IATC can speak on intellectual property, licensing, or company formation generally and can refer students to other resources (both inside and outside the university) who might be able to directly advise students on these matters.  

Based on reading all of this, I think it’s likely that the University owns my invention, but I don’t think I want it to...

The feeling that it’s unfair that you did all the work on the invention but the university still owns it is a common one and very understandable. In addition, some potential investors may not be interested in funding a company based on university-owned IP (some are very interested in funding such a company.)

Having the university own the invention can result in a number of significant benefits to the inventor:

Patent costs - University ownership means that the university covers patent costs until the technology is licensed – the bare minimum cost of having a patent professional prosecute a US patent application to issuance is $3000-$10,000, provided that there are no challenges along the way (note that there are effectively always challenges along the way). The costs can easily go as high as $10,000-$20,000 per patent property not even counting the cost of foreign patent filings.

While there are resources that suggest that you can go it alone, effectively everyone who works with patents suggests having someone who knows what they’re doing help you. Doing things on the cheap up front can result in higher costs later. On top of that, there are dozens of ways to mess up a patent application – some can be fixed by spending more money, some cannot be fixed at all. Using an experienced patent professional will make it less likely that the application will be messed up.  

Royalty Sharing – Any revenues received by the University from licensing of its technologies (also known as ‘royalties’) are shared with inventors. For example, according to UC Patent Policy, inventors share 35% of net royalty income from patents.  Royalties are unrestricted funds (you can spend the money on anything you want) and they follow you even after you are no longer affiliated with the university. The patent policy spells this out.   

Licensing – Even though the university owns the invention, you can start a company to license the invention. While IATC can’t ‘hold’ the invention for you without an agreement in place, an option agreement - where the university agrees not to license the technology to anyone else for a period of time - can be available at a relatively low cost while the company seeks to raise funding. Note that if your company licenses the invention, it will be expected to reimburse the university for past and future patent costs.

Additional Resources

1) The Institute of Innovation Law at UC Hastings offers the Startup Legal Garage program in which law students provide legal work for early stage Tech and BioTech startups.

The Application for the Startup Legal Garage is here: https://docs.google.com/forms/d/e/1FAIpQLScfYIA6ZCDzcRx0555F
JuBOIpDDOFvcCXsVRCVeaukfOTnglw/viewform

Website: https://www.startuplegalgarage.org/

2) The Santa Clara Entrepreneurs’ Law Clinic https://law.scu.edu/elc/ at the Santa Clara University School of Law offers free consultation to entrepreneurs, including prospective student entrepreneurs on any of a number of topics related to new startups, including intellectual property topics. They’re happy to meet with you to answer questions you might have.

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Contact us:

IP Matters:
Jeff Jackson
Director, Innovation Transfer
jeffjackson@ucsc.edu
459-3976

Licensing Matters:
Andrea Pesce
Director, Industry Agreements & Licensing
apesce@ucsc.edu
459-3111