Re: Your Brains--Intellectual Property Here at Cal

by Allison Yamanashi

Growing up around my father’s laboratories as an inquisitive young girl, I learned from a early age that invention was something of a family hobby. My dad was quite the innovator, and while I could write a whole article telling you about the devices he developed and techniques he pioneered, I don’t have to do that. Why? Because many of his best innovations, the ones that make everything from MRI scans to brain surgeries that are preformed today faster, better and safer than they were 10 or 20 years ago, can be found in patents and licensed products throughout the world today. By making sure his best ideas left his laboratory, and with the support of both academic and industrial investment, his inventions made their way into the hospitals where they were needed. It was his great gift to science, and one that I hope to be able to replicate through my own endeavors in the future.

With that background, you would think I would know everything there is about the patent process; the ins and outs of getting your idea from inside the ol’ noggin and onto the paper, the testing required in the lab, and finally sending it over to the patent office. But I must admit, probably like many graduate students, I had very little idea of how one turns that great idea into a better reality. The Berkeley Graduate commissioned me to find out some of the juicier details of the process here at Cal, and I hope to pass on some of the more important points to help make sure your innovations and great ideas make it out into the world at large.

Buried deep in its battery of committees, offices and divisions, Cal has set aside a specialized branch that will help you make the transition from mere scientist to accomplished inventor. As the flagship of the University of California system, Berkeley has a great track record of getting our new technologies through the patent office and onto the market, and it’s a point of pride from the small scale applications, such as within the UC system, to even the national level. Along with 4 other California universities, Berkeley is foundational in 2/3 of all biotechnology start-ups in California, and boasts the fastest growth in spin-off companies as of 2001. Along with Caltech, Stanford, MIT and Wisconsin, Inc. Magazine named Cal as one of the “Five Universities you can do business with.” Now, it’s important to put this in to context: there are obviously a number of fantastic research institutions that didn’t make the list – so what sets Cal apart?

Some Quick Facts on Berkeley Start-ups & Intellectual Property Guidelines

History. 25% of all UC-affiliated start-up ventures begin from faculty and graduate students at Cal. Those numbers include not only affiliates of all ten University of California campuses, but also the three national labs under UC direction.

Investments/capital support. Cal reports one of the most impressive lists of venture capital investors of any major university. That consistent and direct financial support means that people with the funds to support the development of your newest technological innovation are already used to working with Cal, and know what to expect from your research. Also, it means that they’re already looking at Cal’s newest scientific advancements, just waiting for the right one to come along. You might have investors already for that new project, and not even know it.

Experience. In 1990, Berkeley opened its Office of Technology Licensing (OTL) to liaise between researchers, the United States Patent Office and the commercial sector. At the start of 2004, this office was incorporated within the broader Intellectual Property and Industry Research Alliances (IPIRA) office, along with the Industry Alliances Office (IAO). Between these two branches, the IPIRA deals with both getting your new developments off the ground and into production as well as guiding industry interest to the ongoing research for their application.

Every new project starts with a proposal. This includes a full disclosure of what you plan to do, as well as any related grants and outside funding the project will receive. These proposals may include transfer of technologies to or from industry sources, as well as special forms to help you manage the specifics of your research. The IPIRA helps you protect your ideas while managing critical documentation, such as forms for a number of UC institutional review organizations. So if you need to test your new analytical technology on human subjects or the like, they can help make sure you have the right forms and right setup to ease the review process. These disclosures may seem like a headache, but taking care of them before you get started means your that much more less likely to have to start over halfway down the road to a big discovery.

Once you’ve run your experiments and you’ve got that amazing new biotech advancement ready to go, the IPIRA will help you analyze your technologies options. By first sending them a written disclosure and then, if appropriate, registering with either patents or copyrights, you can ensure your idea is well vetted before you show it to the community at large. But, who owns it and who gets the benefit of all your hard work?

Unless stipulated in your outside grant or contract work, any new technology you patent that you developed in facilities owned by the University ultimately belongs to the University. However, that shouldn’t dissuade you from continuing in you research because there are a few great benefits that you should know about. First, 35% of all royalties associated with the sale or licensing of your new invention are yours to keep. An additional 15% can be applied back into your future research. All of these distributions are handled through the Office of Technological Licensing, so it saves you the frustration of managing those big piles of money you expect from your patent. Therefore, if your idea takes off, you’re free to worry about which new car you want to buy and you have a healthy sum to throw at your next world-changing project.

And finally, as I mentioned earlier in the chart on the previous page, the Industry Alliances Office within the IPIRA is already looking out for you. By disclosing your newest projects to their office, they will enter into a database appropriate references and keywords for what you’re working on. Then, when investors or other interested parties would like to know more, they contact the IAO, get some basic details, and the match is already made.

It’s hard out there for a graduate student; with the day-to-day grind of research, conferences and journals its hard to keep perspective on what’s going on outside. With the IPIRA’s help, your research can make a difference and not just in your career or your pocketbook. By taking the time to get turn your ideas and research into products and services, you’ll have that much more of an impact on the community at large.