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Monday, October 25, 2021

From the laboratory to the shelf:how inventions at UC Davis are developed

Have you ever wondered how inventions get from the minds of researchers to the shelves of stores or to being incorporated into different products? The process is longer and more complicated than one might think, but UC Davis is actually a stepping stone in the process. InnovationAccess,the technology transfer department of UC Davis, helps to connect campus inventors to the patent office and to companies for further development and eventual commercialization.

First and foremost,inventions are reviewed extensivelyto determine if they are worthwhile to patent,said David McGee,executive director of InnovationAccess.

“We receive every week new invention disclosures from people on campus,asking us to look at their inventions for patentability.We look at two things.We look at patentability,and we lookat commercialization potential, McGee said.The reason we look at that is because if we were to patent something that no one cared to license,then wed be… spending a great deal of university money for really nopurpose.

It must be noted that UC Davis does not actually award patents to inventions,as only the United States Patent and Trademark Officehas the authority to do so.However,the university does determine whether or not to move forward with the patenting process if it has ownership rights to the invention.This is based on whether or not university funds have been used for research and development of the invention,said McGee.

“Any faculty member,or any employee,for that matter,who invents something must disclose it to the university,and we then decide if the university has an ownership position in it, said McGee.If its part of their job and if theyve been using public funds in terms of salary and so forth,then the university is going to own that invention.

After the potential of an invention has been determined and the university decides to move forward,the technologytransfer department contacts an outside patent law firm to draft a patent application that later gets submitted directly to theU.S.patent office.

“The criteria are that the invention must be novel,useful and non-obvious, Bennet said.

The patent application process,from submission to acceptance,is rather lengthy.

“It can take over three years from the time we apply for a patent before it is awarded.The long time is required for the USPTO to carefully review the patent application to make sure that it is eligible to be awarded said Bennet.

During the reviewing period,known as patent prosecution,there are multiple correspondences between thepatent office and the patent attorneys.At the end of the reviewing period,the patent is either denied or allowed,and the university ultimately decides what to do from that point,said McGee.

The cost is more than one might expect,too,which is why the university and itstechnology transfer department takes such care in reviewing inventions that are submitted to them.

“The cost for doing this ranges anywhere from$10,000to$30,000or more to actually get a patent filed and prosecuted to issuance, said McGee.

Furthermore,when the patentability potential of an invention is determined,the university decides how they are going to possibly market theinvention.The first step,saidAndrei Chakhovski,intellectual property officer for UC Davis,is to post a non-confidential description on the UC Davis Innovations website.

“We also look for companies to market it to… who might be interested, said Chakhovski.

To broaden their idea of who may be interested in licensing an invention,the university even reaches out to sister universities and sometimes uses the internet to further the search.

If a company is interested in licensing an invention,then the universitys representative meets with them and they discuss it.If all goes well,then a license agreement is signed.

“The long-term licenses usually run for the life of a patent,which is20years from the filing date of a patent application,and it provides certain rights to use,make and sell the invention, said McGee.

Even though the company with a licensecan take a lot of liberties with the invention,the intellectual property rights are not granted to them.

“We do this because through the route of licensing were able to get our inventions out there for public benefit… so that we can then start enjoying the public benefits of it, said McGee.In exchange for the license,the university will charge a license fee and collect royalties from the company based on their sales of whatever the invention is.

The distribution of the income earned from patented and commercialized products can be quite lucrative to both the university and the inventor.After expenses are taken out,50percent of the revenue goes to the chancellors fund,15percent is put toward a research fund forthe campus,and35percent goes directly to the inventors,McGee said.

“Its a very good way for inventors to not only see their invention reach the public,but also to share in some of the rewards of that, McGee said.

The non-confidential descriptions,as well as the status of many of the inventions and research that are patented or patent-pending are available on the UC Davis InnovationAccess website,atinnovationaccess.ucdavis.edu/home.cfm.

 

JACQUELYN FLATT can be reached atscience@ucdavis.edu.XXX

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