transfer report 2007 · 2020. 8. 15. · part 1: the campus portfolios 4 technology transfer...

B e r k e l e yD av i si rv i n el o s a n g e l e sM e r c e Dr i v e r s i D es a n ta B a r B a r as a n ta c r u zs a n D i e g os a n F r a n c i s c ol aw r e n c e B e r k e l e yl aw r e n c e l i v e r M o r e

u c T e c h n o l o g y t r a n s F e r

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Table of Contents

Technology Transfer Advisory Committee 2Message from the Director 3

Technology Transfer Activity and Financial InformationIntroduction 4Part 1: The Campus Portfolios 4Technology Transfer Activity 4

Invention Reporting 4Patent Activity 6Licensing and Related Activity 8

Technology Transfer Income 10Total Income from Licensing 10Royalty and Fee Income 10Payments to Joint Holders 11Income Associated with Patent/Legal Expenses 11

Technology Transfer Direct Expenses 12Legal and Other Direct Expenses 12

Income Distributions 13Inventor Shares 13General Fund Share 13Research Allocation Share 13Income After Mandatory Distributions 13

Part 2: The DOE Laboratory-Managed Portfolios 18Invention Disclosure, Patenting, and Licensing Activity 18Financial Results 19

Technology Transfer Organization at UC 20UC Technology Transfer on the Web 20

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General oversight of the UC Technology Transfer Program is under the purview of the Technology Transfer Advisory Committee (TTAC). This standing committee is chaired by the Executive Vice President, Academic and Health Affairs and meets periodically to advise the UC President on technology transfer policy and guide the direction of the overall program.

Keith Alley Executive Vice Chancellor & Provost, UCM

Kathryn Atchison Vice Provost of Intellectual Property & Industrial Relations, UCLA

Alan B. Bennett Associate Vice Chancellor for Research, UCD

Carol Berman Contracts & Grants Director, DANR, UCOP

Beth Burnside Vice Chancellor for Research, UCB

Lawrence B. Coleman Vice Provost for Research, UCOP

Arthur B. Ellis Vice Chancellor for Research, UCSD

Sherylle Mills Englander Director, Office of Technology & Industrial Alliances, UCSB

Cheryl A. Fragiadakis Department Head, Technology Transfer, LBNL

Warren M. Gold Professor, Medicine, UCSF

W. Rory Hume Provost & Executive Vice President, Academic & Health Affairs, UCOP

Susanne L. Huttner Associate Vice Provost, Research and Director, Industry-University Cooperative Research Program, UCOP

Charles F. Louis Vice Chancellor for Research, UCR

Duncan McBranch Division Leader, Technology Transfer, LANL

Karena McKinley Director, Industrial Partnerships & Commercialization, LLNL

Norman J. Oppenheimer Professor, Pharmaceutical Chemistry, UCSF

David G. Schetter Assistant Vice Chancellor, Research & Technology Alliances, UCI

Hans Schöllhammer Professor, Global Economics & Management, UCLA

P. Martin Simpson University Counsel, UCOP

William T. Tucker Executive Director, Research Administration & Technology Transfer, UCOP

A. Eugene Washington Executive Vice Chancellor & Provost, UCSF

2007 Technology Transfer Advisory Committee

Fiscal Year 2007Office of the President

Executive Vice President, Academic and Health AffairsOffice of Technology Transfer1111 Franklin Street, 5th Floor

Oakland, CA 94607-5200

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Message from the Director

The University of California’s technology transfer program plays a vital role in supporting UC’s world-class research enterprise and in translating promising discoveries into new products and businesses to bolster California’s economy. To realize the potential of UC’s inventions, the technology transfer program engages in numerous activities ranging from patenting and licensing to building relationships with industry and providing leadership on behalf of academic technology transfer at the state and national levels. Key to UC’s ability to successfully undertake such a broad range of activities is the division of labor between the UCOP Office of Technology Transfer (OTT) that coordinates technology transfer activities across the system, and campus-based technology transfer offices that are now almost entirely responsible for

the program’s core patenting and licensing activities.

OTT reaches out to industry and the investment community to foster collaborations and to increase awareness of opportunities to commercialize UC inventions. In FY07, OTT hosted its most successful systemwide technology transfer forum to date, which focused on nanotechnology. We also advanced UC’s research enterprise through collaborations with local and state organizations, supporting entrepreneurship and technology transfer education across the system and promoting business start-ups based on UC inventions. On the national level, UC has played a vital role in the ongoing discussions on patent reform and the impact of the Bayh-Dole Act on innovation and economic development. OTT and campus officials testified before Congress and participated in committee discussions to draft legislative language that addresses major issues of importance to the non-profit community to best serve our university mission.

The technology transfer program performed well in FY07, again showing increased activity over the prior year. New inventions disclosures increased by 7.9%, resulting in UC’s portfolio of active inventions increasing by 10.1% to 8,272. UC added 331 new US patents to our portfolio, a 22.6% increase over the number of US patents added in FY06. At year end, UC owned 3,425 US patents and 3,757 foreign patents. Systemwide, we entered into 209 new utility license agreements, an increase of 6.1% over the number of such licenses in FY06. Total licensing income (which excludes any dispute resolutions settlements) increased 6.3% to $116.9 million in FY07 continuing a steady trend of increases since FY03.

Overall, the technology transfer program this year expanded its contribution to UC’s mission of education, research, and public service, not only in terms of increased innovation and realization of public benefits from UC research, but also in undertaking initiatives to increase awareness of the contribution of UC’s research to the prosperity of the California economy.

Sincerely,

William Tucker Executive Director,Research Administration and Technology Transfer

TechnologY TransFer acTiviTY and Financial inFormaTionPart 1: The Systemwide/Campus Portfolios

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introductionActivity and financial information in this Annual

Report is divided into two parts. The UC Campus Portfolio section (pp. 4–17) presents results related to the patenting and licensing of inventions for the ten-campus system for the fiscal year ending June 30, 2007. This portfolio of inventions was managed by the Office of Technology Transfer (OTT) within the Office of the President (UCOP) and by nine campus-based licensing offices. These include the Office of Technology Licensing at UC Berkeley, InnovationAccess at UC Davis, the Office of Technology Alliances at UC Irvine, the Office of Intellectual Property Administration at UC Los Angeles, the Office of Technology Commercialization at UC Riverside, Technology Transfer and Intellectual Property Services at UC San Diego, the Office of Technology Management at UC San Francisco, the Office of Technology and Industry Alliances at UC Santa Barbara, and the Office for Management of Intellectual Properties at UC Santa Cruz.

The DOE Laboratory-Managed Portfolio section (pp. 18–19) provides activity and financial information related to technology transfer at the two Department of Energy (DOE) Laboratories managed by the University. Information on the Laboratories is reported separately because certain aspects of technology transfer are different at the Laboratories as compared with the rest of the University. Among these differences is the reporting period which covers the fiscal year ending September 30, 2007.

Part 1: The campus Portfolios

TechnologY TransFer acTiviTY

InventIon RepoRtInGDuring the twelve-month period ending June 30, 2007,

a total of 1,411 inventions were disclosed by faculty and researchers at the ten UC campuses; an increase of 7.9% over the number of inventions reported in FY06 (Exhibit 1).

ExhibiT 1

InventIonS RepoRteD

800

900

1000

1100

1200

1300

1400

1500

FY07FY06FY05FY04FY03

1,304

1,411

1,308

1,196

1,027

Half of this increase is accounted for by UC Irvine, where newly reported inventions increased by 50 from 141 in FY06 to 191 in FY07. Other campuses with large gains over this period include UC Santa Barbara (from 94 to 129), UC San Diego (from 310 to 333), and UC Davis (from 158 to 180). The campus distribution of newly reported inventions for FY07 is shown in Exhibit 2.

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ExhibiT 2

InventIon DISCLoSUReS BY CAMpUS*Year Ended June 30, 2007

UCSF 142UCB 133

UCD 180

UCI 191

UCLA 267

UCM 12UCR 31UCSB 129UCSC 16UCSD 333

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

As of June 30, 2007, the systemwide invention portfolio was comprised of 8,272 active inventions. The size of each campus invention portfolio is indicated in the exhibit below.

ExhibiT 3

CAMpUS InventIon poRtFoLIoS*Year Ended June 30, 2007

UCB 924

UCD 875

UCI 708

UCLA 1,401

UCM 13

UCR 209

UCSB 572

UCSC 120

UCSD 2,180

UCSF 1,378

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


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pAtent ACtIvItYThe University of California has received more patents

than any other university in the world. A patent is a form of intellectual property protection granted by the US or a foreign government that gives the patent holder the right to exclude others from making, using, or selling the patented invention for a defined period of time, generally twenty years from the date the patent application is first filed. Both US and foreign patent rights often must be pursued for an invention in order to maximize the likelihood of successful commercialization.

ExhibiT 4

pAtent ACtIvItY*Year Ended June 30, 2007

U.S. Applications FiledFirst Filings 644Secondary Filings 564

Total 1,208

First Foreign Filings* 315

US Patents Issued 331

Foreign Patents Issued 381

*An invention is counted only one time in the first foreign filings category regardless of the number of countries in which foreign patent protection is sought.

Systemwide patent activity for FY07 is presented in Exhibit 4. Acquiring adequate patent coverage for all aspects of a new technology may require more than one patent filing for a given invention. Such secondary filings frequently lead to the issuance of multiple patents related to a single initial invention. Often, several years will elapse between a filing and patent issuance. The number of first filings declined 9.8% compared to 714 in FY06, while the number of secondary filings increased 20.0% from 470 in FY06. Foreign patents issued declined by 35.0% from 586 in FY06. Exhibit 5 shows the number of US patents issued to the University in the past five years.

ExhibiT 5

US pAtentS ISSUeD to UC

0

50

100

150

200

250

300

350


331323

270 270

310

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At the end of FY07, there were 3,425 US and 3,757 foreign patents in the systemwide portfolio (Exhibit 6). The total number of foreign-filed patents continues to increase relative to total number of US-filed patents, having first overtaken the total number of US-filed patents in FY06. This trend may be an indication of the increasingly global nature of technology licensing. The number of US patents in each campus portfolio is presented in Exhibit 7. Because of the substantial lag time between invention disclosure/filing and patent issuance, UC Merced, which received its first invention disclosure in FY06, has not yet had a patent issued for its inventions.

ExhibiT 6

totAL UC pAtent poRtFoLIo

0

500

1000

1500

2000

2500

3000

3500

4000


U.S. Foreign

3,425

3,757

2,364

2,8372,7533,024

3,692

3,3163,168

3,275

ExhibiT 7

CAMpUS US pAtent poRtFoLIoS*Year Ended June 30, 2007

UCB 562

UCD 394

UCI 220

UCLA 498

UCM 0

UCR 82

UCSB 302

UCSC 61

UCSD 566

UCSF 755

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


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LICenSInG AnD ReLAteD ACtIvItYA license agreement grants a licensee access to

a University invention in exchange for the licensee’s commitment to further develop and commercialize the invention. Utility licenses generally cover useful processes, machines, manufactured items, or compositions of matter protected by utility patents and are likely to be licensed exclusively. In contrast, plant licenses cover sexually and asexually reproduced plant varieties and most are licensed non-exclusively to multiple growers and distributors worldwide.

The provisions of the license define the rights and responsibilities of the two parties. In the typical utility license agreement, the licensee is granted access to an early stage invention that is protected by a University patent. In exchange, the licensee makes a commitment to commercialize the invention and to pay the University agreed-upon fees, including reimbursement of patent expenses and royalty payments when products reach the marketplace. The specific terms of the agreement are determined through a complex negotiation process. Prior to the execution of a license, certain shorter-term agreements are sometimes executed. A secrecy agreement is used in conjunction with marketing and affords a potential licensee access to confidential information that assists the company in determining if it has an interest in pursuing a license for a given technology. In FY07, the University entered into 768 secrecy agreements. A letter agreement generally is used to confirm a company’s intent to negotiate a license and often commits a company to pay certain fees or patent costs while negotiations are underway. Option agreements are similar in scope to license agreements and protect a licensee’s interest in an invention while more in-depth technical or marketing research is performed.

In FY07, UC entered into 440 licenses and related technology transfer agreements. As indicated in Exhibit 8, these included 209 utility license agreements, 73 plant license agreements, 22 option agreements, and 136 letter agreements.

ExhibiT 8

LICenSInG ACtIvItYYear Ended June 30, 2007

Agreements ExecutedLetters 136Options 22Utility Licenses 209Plant Licenses 73

Total Active Licenses Utility Licenses 1,315Plant Licenses 504

At the close of the fiscal year, the systemwide portfolio totaled 1,819 licenses, an increase of 3.9% over the total at the close of FY06. In managing these agreements, the University must collect monies when due and monitor progress to ensure that the licensees exercise due diligence in developing inventions toward commercial application.

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ExhibiT 9

totAL UtILItY LICenSeS

0

200

400

600

800

1000

1200

1400


1,114983

1,200

902

1,315

ExhibiT 10

totAL pLAnt LICenSeS

0

200

400

600


454504

473

550488

Exhibits 9 and 10 show the five year trend in the size of the portfolio of UC utility and plant licenses. Each year some agreements expire or are terminated. In general, the total number of active utility agreements has continued to rise due to increasing licensing activity throughout the system. In the plant area, a wide variety of fruits, vegetables and grasses were the subject of 504 agreements.

UC continues to work with our licensees around the world to explore opportunities for gaining intellectual property protection and commercializing selected strawberry and other plant cultivars in countries where such intellectual property rights have not previously been available. In regard to the distribution of plant licenses among the campuses, the Davis campus has 383 plant licenses in its portfolio, Riverside has 120, and Berkeley has 1. Exhibit 11 shows the number of utility license agreements associated with each campus.

ExhibiT 11

totAL UtILItY LICenSeS BY CAMpUS*Year Ended June 30, 2007

UCB 257

UCD 100

UCI 79

UCLA 189

UCM 1

UCR 19

UCSB 43

UCSC 10

UCSD 305

UCSF 356

*Licenses associated with inventions that have inventors from more than one campus are reported multiple times in this exhibit.


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TechnologY TransFer income

totAL InCoMe FRoM LICenSInGTotal income from licensing—the income the

University receives from its technology agreements with industry—was $116.9 million in FY07 (Exhibit 12). This FY07 total licensing income represents a 6.3% increase from FY06 if one excludes the $100 million received in FY06 for settlement of the bovine growth hormone litigation. There are two components of total licensing income. The royalty and fee income component includes: agreement issue fees, maintenance fees, and other “milestone” payments received on specific dates or at specific points in the product development process. These payments encourage companies to diligently pursue product commercialization. Generally, earned royalties account for the largest portion of royalty and fee income and are received once products and processes using University inventions reach the marketplace. Reimbursements, the second component of total licensing income, represent the recovery of patent and legal expenses.

ExhibiT 12

totAL LICenSInG InCoMe*(Millions)

0

20

40

60

80

100

$120


Patent/legal reimbursement revenue

Royalty & fee income

19.3

97.6

67.0

79.314.3

13.9 92.9

16.7

$116.9

$81.3

$93.2

$109.6

93.5

16.5

$110.0

* The total licensing income reported for FY06 ($110 million) does not include the upfront payment of $100 million from the settlement of litigation involving bovine growth hormone.

Exhibit 13 shows the amount each campus contributed to FY07 total licensing income. For the first time our newest campus, UC Merced, contributed to this income. UC Los Angeles increased its contribution by $3.2 million (14.4%) over its FY06 contribution, while UC Santa Barbara

increased its contribution by $1.2 million (37.3%). While the contributions shown in Exhibit 13 only involve income arising from University inventions, in FY07 UC Santa Barbara also received $1.3 million from licenses involving donated patents covering non-University inventions.

ExhibiT 13

totAL LICenSInG InCoMe BY CAMpUS*Year Ended June 30, 2007

(Thousands)

UCB $7,388

UCD $9,217

UCI $6,716

UCLA $25,294

UCM $59

UCR $1,408

UCSB $4,590

UCSC $440

UCSD $25,696

UCSF $33,226

Other** $2,852

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

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

RoYALtY AnD Fee InCoMeRoyalty and fee income in FY07 was $97.6 million. This

income derived from 1,592 inventions. As compared with FY06, royalties and fees increased by $4.1 million when excluding a $100 million litigation settlement received in FY06.

In FY07, $1,167,318 was realized from the sale of equity previously acquired under 8 license agreements. As a result of these transactions and the execution of 13 licenses in FY07 that included equity as a partial consideration, at the end of the fiscal year the University held equity related to technology transfer activities in 92 companies.

Income from the top five commercialized UC inventions (i.e. inventions that had reached the marketplace and were generating royalty and fee income) contributed $47.7 million in FY07, accounting for 48.9% of total royalty

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and fee income (Exhibit 14). The top twenty-five inventions collectively accounted for $73.9 million or 75.7% of total royalties and fees. Inventions appearing on this list for the first time include Albion Strawberry, Bovine Growth Hormone, Comparative Genomic Hybridization, Efficient GaN-based LEDs, and Genomic Microarrays.

ExhibiT 14

UC top-eARnInG InventIonS*Year Ended June 30, 2007

(Thousands)

invention (campus, Year disclosed)Hepatitis-B Vaccine (SF, 1979 and 1981) $14,656

Treatment of Intracranial Aneurysms (LA, 1989) $11,122

Egf Receptor Antibodies (SD, 1983) $8,700

Interstitial Cystitis Therapy (SD, 1980) $7,160

Bovine Growth Hormone (SF, 1980) $6,083

Subtotal (top Five Inventions) $47,721

Biodegradable Implant Coils (LA, 1998) $4,071

Dynamic Skin Cooling Device (IR, 1993) $3,231

Camarosa Strawberry (DA, 1992) $1,942

Chromosome Painting (LLNL, 1985) $1,715

Nicotine Patch (LA, 1984) $1,653

Energy Transfer Primers (BK, 1994) $1,451

Firefly Luciferase (SD, 1984) $1,413

Genomic Microarrays (SF, 1995) $1,176

Feline AIDS Virus Diagnostic (DA, 1986) $1,174

Comparative Genomic Hybridization (SF, 1992) $1,154

Aids for Learning Disabled (SF, 1994) $1,094

Liposome Storage Method (DA, 1984) $1,077

Ventana Strawberry (DA, 2001) $828

Laser/Water Atomic Microscope (SB, 1989) $752

Fluorescent Dyes-Calcium (BK, 1984) $736

Albion Strawberry (DA, 2004) $708

Cochlear Implants (SF, 1979) $672

Universal Oligonucleotide Spacer (BK, 1996) $544

Magnetic Resonance Imaging (SF, 1976) $403

Efficient GaN-based LEDs (SB, 2004) $400

Total income (Top 25 inventions) $73,915

Total income (all inventions) $97,594

% of Total from Top 5 inventions 48.9%

% of Total from Top 25 inventions 75.7%

*This list is limited to revenue-generating inventions that have been commercialized.

pAYMentS to JoInt HoLDeRSWhen an invention results from collaboration

between UC and non-UC researchers, multiple entities may become joint holders of the invention-related patents. In these instances, UC often negotiates interinstitutional agreements to establish which entity will manage patenting and licensing. In FY07, 272 of 1,411 new disclosures (19.3%) included non-UC inventors and 61 new interinstitutional agreements were signed, a 23.8% decrease over FY06.

In FY07, $4.8 million was redistributed to other entities for inventions covered by interinstitutional and other income-sharing agreements. For financial reporting purposes, these monies are treated as an offset to income. As is seen in Exhibit 15, these redistributions have been declining in recent years when one excludes the $7.9 million payment in FY06 and $0.5 million payment in FY07 for settlement of litigation involving bovine growth hormone.

ExhibiT 15

pAYMentS to JoInt HoLDeRS* (Millions)

$5.6

$4.3

$5.9

$5.0$5.4

0

2

4

6

8

$10


* The payments to joint holders reported in this exhibit for FY06 ($5.6 million) and FY07 ($4.3 million) do not include payments of $7.9 million in FY06 and $0.5 million in FY07 for the settlement of litigation involving bovine growth hormone.

InCoMe ASSoCIAteD wItHpAtent/LeGAL expenSeS

Because inventions are highly technical, the University uses specialized outside attorneys to draft and secure patent protection both in the U.S. and abroad. Obtaining a licensee’s commitment to reimburse these costs is a high priority objective of license negotiations, and reimbursements, therefore, are considered to be part of total licensing revenue. In FY07, the University received $19.3 million in licensing income from patent/legal expense reimbursements.


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TechnologY TransFer exPenses

LeGAL AnD otHeR DIReCt expenSeSLegal and other direct expenses totaled $35.1 million in

FY07 (Exhibit 16). Most technology transfer legal expenses are associated with patent prosecution defined as payments to outside counsel for drafting patent applications as well as other costs for securing and maintaining patent protection for University inventions. The extent of reimbursement of legal and other direct expenses is a negotiated term of a license agreement and not all agreements commit the licensee to reimburse the University for these costs. In FY07, reimbursements of legal expenses totaled $19.3 million, resulting in net legal expenses of $15.8 million (Exhibit 16).

ExhibiT 16

LeGAL expenSeS*(Millions)

Gross legal expensesNet legal expenses

0

10

20

30

$40


$27.9 $28.7

$34.4

$26.9

$35.1

$13.6 $14.8$17.7

$10.4

$15.8

* The gross and net legal expenses reported for FY06 do not include $16.2 million in legal expenses for the settlement of litigation involving bovine growth hormone.

Exhibit 17 provides a breakdown of FY07 net legal expenses (i.e., legal expenses after reimbursements) by category. Patent prosecution activities accounted for $10.6 million of the $15.8 million in net legal expenditures. Interference and infringement activities, which accounted for 55% of net legal expenses in FY06, declined to 29% in FY07. The relatively large interference and infringement percentage in FY06 reflects expenses associated with the settlement of infringement litigation involving bovine growth hormone.

ExhibiT 17

net LeGAL expenSeSYear Ended June 30, 2007

Patent Prosecution68%

Legal Defense1%

Other2%

Interference & Infringement29%

It is anticipated that University licensing personnel will continue to be successful in negotiating reimbursement of a substantial amount of patent costs. Nonetheless, it is expected that there will continue to be significant legal expenses associated with patenting and litigation as the technology transfer program matures, patent activities continue to accelerate, and relationships with inventors, sponsors and licensees become increasingly complex.

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income disTriBUTions

The income derived from royalties and fees, less the sum of payments to joint holders and less net legal and direct expenses, is distributed in various shares as required under University and campus policies. In FY07, income distributions totaled $77.0 million, distributed as shown in Exhibit 18.

ExhibiT 18

InCoMe DIStRIBUtIonS*(Millions)

0

20

40

60

$80


30.0

35.6

1.4**

10.0

11.0

32.4

0.5**

3.6

28.2

25.5

0.4**

31.0

10.1

0.4**

31.3

12.6

33.0

0.7**

Income after mandatory distributions

Inventor shares

**Research allocation share

General fund share

8.2

25.3

$47.5

$59.4

$69.8$77.6 $77.0

* The distributions reported for FY06 do not include a general fund distribution of $10.5 million, inventor share distributions of $29.1 million, nor income after mandatory distributions of $36.2 million related to the settlement of litigation involving bovine growth hormone.

InventoR SHAReSThe University Patent Policy grants inventors the right

to receive a portion of net income accruing to individual inventions. In FY07, 1,638 inventors received a total of $35.6 million. Under current policy, inventors receive 35% of net invention income. Inventor shares are calculated based on invention income and expense activity through the close of the prior fiscal year. Thus, most of the inventor shares distributed in FY07 were calculated based on invention financial activity through June 30, 2006. Trends related to the amount of inventor share payments are reflected in Exhibit 18.

GeneRAL FUnD SHAReThe portion of University technology transfer income

allocated to the UC General Fund totaled $10.0 million in FY07 (Exhibit 18, above). The General Fund share is equal to 25% of the amount remaining after deducting payments to joint holders, net expenses, and inventor share payments from royalty and fee income.

ReSeARCH ALLoCAtIon SHAReThe current Patent Policy requires that 15% of net

royalty and fee income from each invention be designated for research-related purposes on the inventor’s campus or Laboratory. These monies are used in accordance with plans developed at each campus and Laboratory. The research allocation, which is computed based on inventions disclosed on or after October 1, 1997, totaled $1.4 million in FY07 (Exhibit 18).

InCoMe AFteR MAnDAtoRY DIStRIBUtIonSAll income derived from royalties and fees remaining

after deductions for payments to joint holders, net legal and direct expenses, and other distributions, is distributed to the campuses subject to certain other campus-specific debits and credits for patent-related activities (not shown). This category combines expenditures that in prior Annual Reports were reported separately as “Operating Expense” and “Campus Share” distributions. Income after mandatory distributions totaled $30.0 million in FY07 (Exhibit 18).


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ExhibiT 19

SYSteMwIDe teCHnoLoGY tRAnSFeR ACtIvItY FY03 – FY07*Year Ended June 30, 2007

Fiscal Year comparisons FY03 FY04 FY05 FY06 FY07 % change(FY06-FY07)

Invention DisclosureInventions Reported 1,027 1,196 1,304 1,308 1,411 7.9%Total Invention Portfolio 5,948 6,618 7,395 7,513 8,272 10.1%

Patent ProsecutionUS Applications Filed

First Filings 490 515 601 714 644 -9.8%Secondary Filings 384 450 429 470 564 20.0%

Total 874 965 1,030 1,184 1,208 2.0%US Patents Issued 323 270 310 270 331 22.6%Total Active US Patents 2,753 3,024 3,275 3,316 3,425 3.3%

First Foreign Filings 230 243 284 361 315 -12.7% Total Active Foreign Patents 2,364 2,837 3,168 3,692 3,757 1.8%

LicensingAgreements Issued

Options 21 32 22 29 22 -24.1%Utility Licenses 131 145 186 197 209 6.1%Plant Licenses 56 81 57 115 73 -36.5%

Total Active AgreementsOptions 62 53 52 61 69 13.1%Utility Licenses 902 983 1,114 1,200 1,315 9.6%Plant Licenses 454 473 488 550 504 -8.4%

*Activity related to the invention portfolio managed by the nine campus-based licensing offices and OTT on behalf of the ten UC campuses. Activity related to a small number of DOE Laboratory inventions managed at OTT also is reflected in these figures. See pp. 18-19 for activity pertaining to the operation of the DOE Laboratory-based technology transfer offices.

Exhibit 19 only reports activity governed by the UC Patent Policy. It does not include copyright and material transfer agreement activity that also is carried out by campus-based technology transfer offices

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ExhibiT 20

SYSteMwIDe FInAnCIAL ACtIvItY FY03-FY07Year Ended June 30, 2007

(Thousands)

Fiscal Year comparisons FY03 FY04 FY05 FY06 FY07 % change(FY06-FY07)

Income from Royalties and Fees $67,019 $79,265 $92,902 $193,500 $97,594 -50%Less: Payments to Joint Holders (5,854) (4,990) (5,403) (13,464) (4,798) -64%

Adjusted Gross Income (A) 61,165 74,275 87,499 180,036 92,796 -48%

Legal and Other Direct Expenses (27,929) (28,761) (34,393) (43,136) (35,087) -19%Less: Reimbursements 14,300 13,916 16,707 16,545 19,292 17%

Net Legal Expenses (B) (13,629) (14,845) (17,686) (26,591) (15,795) -41%

Income Available for Distribution (A+B) 47,536 59,430 69,813 153,445 77,001 -50%

Income DistributionsInventor Shares (C) 32,357 25,310 28,228 60,471 35,562 -41%Research Allocation Share (D) 534 359 422 722 1,380 91%General Fund Share (E) 3,608 8,214 10,138 23,078 10,045 -56%Income After Mandatory Distributions (F) 11,037 25,547 31,025 69,174 30,014 -57%

Total Income Distributions (C+D+E+F) 47,536 59,430 69,813 153,445 77,001 -50%

Exhibit 20 only reports financial activity governed by the UC Patent Policy. Campus-based technology transfer offices also generate income through copyright licenses, material transfer agreements and through research support committed in conjunction with technology transfer activities. This income is not included in this report.


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ExhibiT 21

FY07 CAMpUS teCHnoLoGY tRAnSFeR ACtIvItYYear Ended June 30, 2007

UcB Ucd Uci Ucla Ucm Ucr UcsB Ucsc Ucsd UcsF

invention disclosureInventions Reported 133 180 191 267 12 31 129 16 333 142Total Invention Portfolio 924 875 708 1,401 13 209 572 120 2,180 1,378

Patent ProsecutionUS Applications Filed

First Filings 60 80 89 129 3 22 81 4 142 43Secondary Filings 62 54 66 164 1 5 75 15 65 68

Total 122 134 155 293 4 27 156 19 207 111US Patents Issued 53 45 30 42 0 10 25 9 64 62Total Active US Patents 562 394 220 498 0 82 302 61 566 755

First Foreign Filings 34 30 24 87 1 6 43 2 60 33Total Active Foreign Patents 401 522 331 529 0 119 83 12 764 1,008

licensingAgreements Issued

Options 3 3 2 3 0 4 6 0 2 0Utility Licenses 44 13 11 40 0 5 12 0 56 35Plant Licenses 0 62 0 0 0 11 0 0 0 0

Total Active AgreementsOptions 17 7 4 11 0 6 12 1 6 8Utility Licenses 257 100 79 189 1 19 43 10 305 356Plant Licenses 1 383 0 0 0 120 0 0 0 0

Note: A number of inventions involve inventors from multiple UC campuses. Activity statistics for these inventions are reported multiple times, once for each campus involved. Thus, for any given measure of activity, the sum of individual campus numbers may be greater than the systemwide totals reported elsewhere in this report.

Exhibit 21 only reports activity governed by the UC Patent Policy. It does not include copyright and material transfer agreement activity which also is carried out by campus-based technology transfer offices.

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ExhibiT 22

FY07 CAMpUS FInAnCIAL ACtIvItY*Year Ended June 30, 2007

(Thousands)

UcB Ucd Uci Ucla Ucm Ucr UcsB Ucsc Ucsd UcsF

Income from Royalties and Fees $5,056 $8,090 $5,191 $20,911 $50 $762 $2,951 $100 $21,423 $30,410

Less: Payments to Joint Holders (23) (9) (110) (15) 0 (12) (4) (1) (119) (4,505)

Adjusted Gross Income (A) 5,033 8,081 5,081 20,896 50 750 2,947 99 21,303 25,905

Legal and Other Direct Expenses (3,528) (3,103) (2,487) (9,847) (33) (804) (2,044) (279) (6,542) (5,552)

Less: Reimbursements 2,332 1,127 1,525 4,383 9 646 1,639 340 4,273 2,816

Net Legal Expenses (B) (1,195) (1,976) (962) (5,464) (24) (159) (405) 61 (2,268) (2,736)

Income Available for Distribution (A+B) 3,838 6,105 4,119 15,432 26 591 2,542 160 19,035 23,169

Income Distributions

Inventor Shares (C) 1,763 3,227 3,432 6,911 0 313 769 18 8,587 9,904

Research Allocation Share (D) 55 87 93 102 0 6 94 6 743 194

General Fund Share (E) 519 720 172 2,127 7 70 443 35 2,612 3,316

Income After Mandatory Distributions (F) 1,501 2,071 422 6,292 19 203 1,236 101 7,093 9,755

Total Income Distributions (C+D+E+F) 3,838 6,105 4,119 15,432 26 591 2,542 160 19,035 23,169

*Exhibit 22 only reports financial activity governed by the UC Patent Policy. Campus-based technology transfer offices also generate income through copyright licenses and material transfer that are not covered by the UC Patent Policy. This income is not included in this report.

TechnologY TransFer acTiviTY and Financial inFormaTionPart 2: The DOE Laboratory-managed Portfolios

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Part 2: The doe laboratory-managed Portfolios

BackgroundSince 1988, technology transfer for the UC-managed

U.S. Department of Energy (DOE) Laboratories has been under the purview of Laboratory-based offices. In this fiscal year, we will be reporting on technology transfer activity at Lawrence Berkeley National Laboratory (LBNL) and Lawrence Livermore National Laboratory (LLNL). The technology transfer program at Los Alamos National Laboratory (LANL) will not be covered this year as LANL is no longer under direct UC management.

The licensing function at the Laboratories is managed within the context of larger departments responsible for fostering a variety of partnerships with industry: LBNL’s Technology Transfer Office and LLNL’s Industrial Partnerships and Commercialization Office. In addition to patent licensing, these offices direct substantial resources toward the licensing of software and the negotiation of Cooperative Research and Development Agreements (CRADAs), technical assistance and other agreements with industry. Although these DOE Laboratory offices manage most Laboratory inventions, OTT oversees a small portfolio of Laboratory inventions. Most of these cases have co-inventors from the UC campuses.

Certain aspects of technology transfer processes differ at the DOE offices as compared with OTT and the campuses. For example, after an invention is disclosed and a determination is made to pursue a license, there are some cases where the laboratory may be able to elect title to an invention on behalf of the University under the federal Bayh-Dole legislation, just as a campus does. In other cases, however, there must be a special request to DOE to enable The Regents to retain or be assigned title to the invention. Requests to assert copyright in software also must be made to DOE. In addition, whereas OTT and campus offices contract with attorneys at outside law firms for all of their patent prosecution activity, the Laboratories manage most US patent filings internally through their own legal departments and contract out only for selected matters, particularly foreign prosecution. In addition, the fiscal year at the Laboratory offices ends September 30th in contrast to the June 30th end date for the fiscal year at OTT and the campus offices.

Information in this section pertains to the activities of the technology transfer offices of the Laboratories unless noted otherwise.

InventIon DISCLoSURe, pAtentInG, AnDLICenSInG ACtIvItY

In FY07, DOE Laboratory researchers disclosed 287 inventions and filed a total of 165 US patent applications. 87 US patents issued on DOE inventions. The Laboratories completed 25 new options and licenses for patentable inventions and tangible research products (TRPs) in FY07, bringing the total number of active license and option agreements to 169 at the close of the fiscal year (Exhibit 23). Licensing of other types of intellectual property (e.g., copyrighted software) also represents a significant additional element of current licensing activity.

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ExhibiT 23

pAtentInG AnD LICenSInG ACtIvItY:Doe LABoRAtoRY oFFICeS

Year Ended Sept. 30, 2007

lBnl llnl Total

Disclosure and Prosecution*Inventions Reported 126 161 287US Applications Filed

First Filings 67 64 131Secondary Filings 7 27 34

Total 74 91 165

US Patents Issued 25 62 87First Foreign Filings 29 28 57

Marketing and LicensingNew Agreements Issued

Secrecy 201 480 681Option 2 5 7License 3 15 18

Total Active AgreementsOption 8 8 16License 61 92 153

FISCAL YeAR CoMpARISonS(excluding LANL)

Disclosure and Prosecution* FY06 FY07 %changeInventions Reported 238 287 21%

US Applications Filed First Filings 113 131 16% Secondary Filings 59 34 -42% Total 172 165 -4%

US Patents Issued 98 87 -11% First Foreign Filings 41 57 39%

Marketing and Licensing New Agreements Issued Secrecy 192 681 255% Option 3 7 133% License 23 18 -22% Total Active Agreements Option 9 16 78% License 152 153 1%

FInAnCIAL ReSULtSThe DOE Laboratory-managed portfolios generated a

total of $7.8 million in income during FY07, an increase of 10.6% over the prior year (excluding LANL). Patent income for the Labs increased 12.1% as compared with FY06, while copyright income increased by 1.1% (Exhibit 24).

Information on DOE Laboratory patenting and licensing expenses is not provided in this report. Patent expenses are allowable costs under the University’s current contract with DOE and are not readily separable from other expenses of the legal departments. Similarly, operating expenses related to the licensing function are not readily separable from other expenses of the technology transfer departments. Finally, income generated by the DOE Laboratories is not subject to the General Fund share assessment.

Inventor share payments of $2.7 million included $275 thousand paid to authors of software. These payments were based on financial activity through September 30, 2007.

ExhibiT 24

FInAnCIAL ACtIvItY: Doe LABoRAtoRY oFFICeS*Year ended September 30, 2007

(Thousands)

lBnl llnl TotalIncome from Royalties and Fees

Patents and TRPs $2,502 $4,358 $6,860Copyrights/Software $716 $231 $947

Total $3,218 $4,589 $7,807

Inventor /Author Shares PaidPatents and TRPs $796 $1,619 $2,415Copyrights/Software $169 $106 $275

Total $965 $1,725 $2,690

FISCAL YeAR CoMpARISonS(excluding LANL)

(Thousands)

FY06 FY07 %changePatents and TRPs $6,121 $6,860 12%Copyrights/Software $936 $947 1%

Total $7,057 $7,807 11%

Inventor/Author Shares Paid $2,152 $2,415 12%Inv./Aut. Shares Paid (copy./soft.) $263 $275 5%

Total $2,415 $2,690 11%

*In addition to income reported in this table, the OTT-managed DOE portfolio collectively generated $2,518,226 in FY07 royalty and fee income, including $404,993 for LBNL and $2,113,233 for LLNL inventions.

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TechnologY TransFer organizaTion aT Uc

The UC Technology Transfer program operates under a model of distributed responsibilities and authorities that balances activities carried out at the central Office of Technology Transfer (OTT) with those at the individual UC campuses and UC-managed DOE Laboratories. Under this approach, campuses and Laboratories develop and shape technology licensing programs to fit their unique needs as put forth in memoranda of understanding negotiated with the UC Office of the President (UCOP). In all instances, OTT retains responsibility for certain functions, such as policy development and guidance, legal oversight, legislative review, information management, and a variety of other services in support of the overall program. Internet links to UC OTT, campus and Laboratory-based technology transfer offices are provided below.

UC technology transfer on the web

UC Office of the President: Office of Technology Transfer (OTT) http://www.ucop.edu/ott

UC Berkeley: Office of Intellectual Property & Industry Research Alliances (IPIRA) http://ipira.berkeley.edu

UC Davis: UC Davis InnovationAccess http://www.innovationaccess.ucdavis.edu

UC Irvine: Office of Technology Alliances (OTA) http://www.ota.uci.edu

UC Los Angeles: Office of Intellectual Property & Industry http://www.research.ucla.edu/oipaSponsored Research (OIP-ISR)

UC Merced: Office of Technology Transfer (OTT) http://research.ucmerced.edu

UC Riverside: Office of Technology Commercialization (OTC) http://www.ora.ucr.edu/ip

UC Santa Barbara: Office of Technology & Industry Alliances (TIA) http://research.ucsb.edu/tech_transfer

UC Santa Cruz: Office for Management of Intellectual Property (OMIP) http://research.ucsc.edu/intel_prop.html

UC San Diego: Technology Transfer & Intellectual Property Services (TechTIPS) http://invent.ucsd.edu

UC San Francisco: Office of Technology Management (OTM) http://www.otm.ucsf.edu

Lawrence Berkeley National Laboratory: Technology Transfer Department (TTD) http://www.lbl.gov/Tech-Transfer

Lawrence Livermore National Laboratory: Industrial Partnerships Office (IPO) https://ipo.llnl.gov/

Industry-University Cooperative Research Program (IUCRP) http://ucdiscoverygrant.org

university of californiaoffice of technolgy transfer

1111 Franklin street, 5th Flooroakland, ca 94607-5200

transfer report 2007 · 2020. 8. 15. · part 1: the campus portfolios 4 technology transfer...

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