Technology
Transfer
Annual Report
2011
Table of Contents
2011 Technology Transfer Advisory Committee . . . . . . . . . . . . . . . . . . . . . 2
Message from the Executive Director . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Technology Transfer Activity and Financial Information
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
Technology Transfer Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Invention Reporting . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Patent Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Licensing and Related Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Startup Company Formation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
Technology Transfer Income . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Total Income from Licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Royalty and Fee Income . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Payments to Joint Holders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
Income Associated with Patent/Legal Expenses . . . . . . . . . . . . . . . . . . . . . 21
Technology Transfer Expenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
Legal and Other Direct Expenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
Income Distributions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
Inventor Shares . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
General Fund Share . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
Research Allocation Share . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
Income after Mandatory Distributions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
UC Technology Transfer on the Web . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
2011 Technology Transfer Advisory Committee
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 for Academic Affairs, and meets periodically to advise the UC
President on technology transfer policy and guide the direction of the overall program.
Barbara H. Allen-Diaz ����������������������������������������������������������������������������������������������������������Associate Vice President, Agricultural & Natural Resources, UCOP
Kathryn A. Atchison �����������������������������������������������������������������������������������������������������������������Vice Provost, Intellectual Property and Industry Relations,
and Associate Vice Chancellor for Research, UCLA
Steven V.W. Beckwith�����������������������������������������������������������������������������������������������������������Vice President for Research and Graduate Studies, UCOP
Sherylle Mills Englander�����������������������������������������������������������������������������������������������Director, Office of Technology & Industry Alliances, UCSB
Cheryl A. Fragiadakis�������������������������������������������������������������������������������������������������������������Department Head, Technology Transfer and Intellectual Property Management, LBNL
Warren M. Gold�������������������������������������������������������������������������������������������������������������������������������������Professor, Medicine, UCSF
Joel B. Kirschbaum�������������������������������������������������������������������������������������������������������������������������Director, Office of Technology Management, UCSF
Charles F. Louis��������������������������������������������������������������������������������������������������������������������������������������Vice Chancellor for Research, UCR
Bruce H. Margon �������������������������������������������������������������������������������������������������������������������������������Vice Chancellor for Research, UCSC
David McGee �����������������������������������������������������������������������������������������������������������������������������������������������Executive Director, InnovationAccess, UCD
Richard Miller ��������������������������������������������������������������������������������������������������������������������������������������������Associate Vice Chancellor for Research, UCM
Carol Mimura����������������������������������������������������������������������������������������������������������������������������������������������Assistant Vice Chancellor, Intellectual Property & Industry Research Alliances, UCB
Lawrence H. Pitts�����������������������������������������������������������������������������������������������������������������������������Provost and Executive Vice President for Academic Affairs, UCOP
Michael Reese�������������������������������������������������������������������������������������������������������������������������������������������Associate Vice President — Business Operations, UCOP
Hans Schöllhammer �����������������������������������������������������������������������������������������������������������������Professor, Global Economics & Management, UCLA
P. Martin Simpson, Jr.�������������������������������������������������������������������������������������������������������������Managing Counsel, Office of the General Counsel, UCOP
William T. Tucker��������������������������������������������������������������������������������������������������������������������������������Executive Director, Innovation Alliances and Services, UCOP
Mark W. Warner�����������������������������������������������������������������������������������������������������������������������������������Associate Vice Chancellor for Administration, UCI
Fiscal Year 2011
Office of the President
Executive Vice President, Academic Affairs
Innovation Alliances and Services
1111 Franklin Street, 5th Floor, Oakland, CA 94607-5200
2
Message from the Executive Director
The travails of the California state budget and its impact
on the University bring into sharp focus the important role
UC plays in supporting our technology-centric business
environment. From agriculture to aerospace, knowledge
created by UC’s research enterprise helps to ensure that our
state remains a leader in all aspects of its business endeavors.
Technology transfer from around the UC system plays a vital
part in our efforts by making the latest patentable inventions
available to business. This past year, we inaugurated the first
systemwide Proof of Concept Grant program in association
with the Discovery Grant Program to fund key experiments
to demonstrate the commercial viability of inventions in our
portfolio. Based on experience at other universities, we predict
that this funding will lead to business relationships that will
translate these ideas into products and services.
UC’s portfolio of active inventions increased by 4.6% to 10,341,
the number of U.S. patents owned by UC increased by 2.6% to
3,900, and the number of active license agreements increased
6.1% to 2,104. The number of inventions newly covered by a
utility license, option, or letter of intent during the fiscal year
(including new inventions added to existing agreements)
increased by 8.4% over the number covered during the previous
fiscal year. Total income from technology transfer (net of legal
settlements) available for distributions to inventors and the
University reached a record level of $164.6 million this year,
an increase of $71.8 million over the previous year. This record
total included $86.2 million derived from a prepayment of future
royalty income for anti-cancer drugs from UC Berkeley.
This Berkeley-based anti-cancer drug
points out an important reality of
technology transfer: it can take many
years and many twists and turns in the
life of a business for our early stage
inventions to make it to the market.
This potential life-extending product
started with a disclosure in 1996 and
received FDA approval 15 years later
in 2011. Technology transfer’s most important role is to move
as many ideas as possible out of the lab so that business can
invest their capital in search of successful products that can fully
realize the public benefits of UC research.
The Berkeley example also illustrates another important role
that UC plays: helping to launch and foster startup companies
based on UC inventions. The original license to the underlying
Berkeley invention was to a small company which developed the
technology to the point that it was acquired by a more established
company. The established company was subsequently acquired
by a large pharmaceutical company, principally because of the
potential for the final product. In fiscal year 2011, 58 startup
companies were founded on UC technologies, including 44
companies based in California. We can’t predict their fate at
this early stage, but we are confident that many will become
successful, and some may even lay the foundation for new
industries that, as experience in other sectors shows, will
remain close to the site of their origin in California.
Sincerely,
William Tucker
Executive Director,
Innovation Alliances and Services
3
Technology Transfer Activity and Financial Information
4
Innovation Alliances and Services
Technology Transfer Activity and Financial Information
Introduction
This document reports technology transfer activity and associated
financial results arising under the University of California’s Patent
Policy for fiscal year 2011 (FY11).
UC’s technology transfer program, administered by the offices
listed on the right, operates under a model of distributed
responsibilities and authorities that balances activities carried out
by the central UC Office of the President (UCOP) with activities
carried out by offices at the individual UC campuses and at the
Lawrence Berkeley National Laboratory (LBNL), a U.S. Department of Energy (DOE) Laboratory managed by the University.
University of California
Technology Transfer Offices
UC Office of the President (UCOP)
Innovation Alliances and Services (IAS)
.............................................................................................
UC Berkeley (UCB)
Office of Intellectual Property & Industry
Research Alliances (IPIRA)
.............................................................................................
UC Davis (UCD)
UC Davis InnovationAccess
.............................................................................................
Under this distributed approach, the campuses and LBNL develop
and shape technology licensing programs to fit their unique
needs as put forth in memoranda of understanding negotiated
with UCOP. In all instances, UCOP retains responsibility for
certain functions, such as policy development and guidance, legal
oversight, legislative analysis, information management, and a
variety of other services in support of the overall program.
UC Irvine (UCI)
Office of Technology Alliances (OTA)
UCOP’s activities are coordinated by the Innovation Alliances
and Services (IAS) unit within UCOP’s Office of Research and
Graduate Studies. Although LBNL manages most of its own
inventions, IAS oversees a small portfolio of older inventions
from LBNL and another DOE Laboratory historically associated
with UC, the Lawrence Livermore National Laboratory. Most of
these cases have co-inventors from the UC campuses.
UC Riverside (UCR)
Office of Technology Commercialization (OTC)
.............................................................................................
UC Los Angeles (UCLA)
Office of Intellectual Property & Industry
Sponsored Research (OIP-ISR)
.............................................................................................
UC Merced (UCM)
Office of Technology Transfer (OTT)
.............................................................................................
This Annual Report covers two distinct technology portfolios: the
UC campus portfolio and the LBNL portfolio. Information relating
to these two portfolios is reported separately because certain
aspects of technology transfer are different at LBNL as compared
to the rest of the University. These differences include a reporting
period for LBNL that covers a fiscal year ending September 30,
2011, as compared to June 30, 2011, for the rest of the University.
Also, while LBNL manages intellectual property in a way that is
generally consistent with the principles and practices of the rest
of UC, there are some important operational differences, such as
LBNL’s greater use of in-house patent attorneys. A summary of
technology transfer activity and associated financial results for
both portfolios can be found in Exhibits 28 through 33.
Annual Report 2011
.............................................................................................
UC Santa Barbara (UCSB)
Office of Technology & Industry Alliances (TIA)
.............................................................................................
UC Santa Cruz (UCSC)
Office for Management of Intellectual Property (OMIP)
.............................................................................................
UC San Diego (UCSD)
Technology Transfer Office (TTO)
.............................................................................................
UC San Francisco (UCSF)
Office of Technology Management (OTM)
.............................................................................................
Lawrence Berkeley National Laboratory (LBNL)
Technology Transfer and Intellectual
Property Management (TTIPM)
5
Technology Transfer Activity and Financial Information
Technology Transfer Activity
Exhibit 1: Invention Disclosures1
Exhibit 2: Invention Disclosures Per $10 Million
Research Expenditures1
1600
1400
4
1,411
1,497
1,482
1,565
1,581
1200
3
3.42
3.46
FY07
FY08
3.27
3.29
3.19
FY09
FY10
FY11
1000
800
2
600
400
1
200
0
FY07
FY08
FY09
FY10
FY11
1. Invention disclosures managed by IAS and by the campus offices. See Exhibit 32 for
LBNL’s invention disclosures.
Invention Reporting
During the 12-month period ending June 30, 2011, 1,581
inventions were disclosed by faculty and researchers at the 10
UC campuses; an increase of 1.0% over the number of inventions
reported in FY10 (Exhibit 1). As shown in Exhibit 2, the number of
disclosures relative to research expenditures has remained stable
over time, currently at around 3.2 invention disclosures per
$10 million in research expenditures.
6
0
1. The number of inventions managed by IAS and by the campus offices that were
disclosed during the fiscal year, divided by a five-year running average of the research
expenditures data reported annually to the National Science Foundation/Division of
Science Resources Statistics for its Survey of Research and Development Expenditures at
Universities and Colleges. Five-year running averages are calculated as the sum of the
expenditures for the fiscal year and the four preceding fiscal years, divided by five.
UC Irvine increased its new disclosures by 53 inventions (from
125 in FY10 to 178 in FY11). Other campuses with increases
included UC Berkeley, with an increase of 29 inventions (from
142 in FY10 to 171 in FY11); UC Riverside, with an increase of
20 inventions (from 54 to 74); UC Santa Cruz, with an increase of
28 inventions (from 31 to 59); UC San Diego, with an increase of
21 inventions (from 367 to 388); and UC San Francisco, with an
increase of 21 inventions (from 152 to 173). Exhibit 3 shows the
campus distribution of newly reported inventions for FY11.
Innovation Alliances and Services
Exhibit 3: Invention Disclosures by Campus1
Exhibit 4: Total Active Inventions by Campus1
Year Ending June 30, 2011
As of June 30, 2011
UCSF
173
UCB
171
UCD
184
UCSD
388
UCI
178
UCLA
299
UCSC
59
UCSB
64
UCR
74 UCM
16
1. Inventions having inventors from more than one campus are counted multiple times,
once for each campus with an inventor.
UCB
1,277
UCD
1,047
UCI
869
UCLA
1,824
UCM
67
UCR
349
UCSB
590
UCSC
194
UCSD
2,840
UCSF
1,475
1. Inventions associated with inventors from more than one campus are reported
multiple times in this exhibit.
During the 12-month period ending September 30, 2011, 154
inventions were disclosed by inventors at LBNL, an increase of
27 inventions from the 127 disclosed in FY10.
As of June 30, 2011, the systemwide invention portfolio
(excluding LBNL) was comprised of 10,341 active inventions. The
total for each campus invention portfolio is indicated in Exhibit 4.
Annual Report 2011
7
Technology Transfer Activity and Financial Information
Exhibit 5: Patent Activity1
Exhibit 6: U.S. Patents Issued1
Year Ending June 30, 2011
U.S. Applications Filed
First Filings—Provisional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 686
First Filings—Regular . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Secondary Filings—Provisional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 137
Secondary Filings—Regular . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 447
Total . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1,285
Subtotal—First Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 701
Subtotal—Secondary Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 584
Subtotal—Provisional Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 823
Subtotal —Regular Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 462
First Foreign Filings2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 261
U.S. Patents Issued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 343
350
300
343
331
297
250
244
224
200
150
100
50
0
FY07
FY08
FY09
FY10
FY11
Foreign Patents Issued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 364
1. Patent activity related to inventions managed by IAS and by the campus offices.
See Exhibit 32 for LBNL’s patent activity.
2. 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.
Patent Activity
UC has received more U.S. patents than any other university in
the world. A patent is a form of legal protection granted by the
U.S. or a foreign government that gives a patent holder the
right to exclude others from making, using, selling, offering for
sale, or importing the patented invention for a defined period of
time, generally 20 years from the date the patent application
is first filed. Both U.S. and foreign patent rights often must be
pursued for an invention in order to maximize the likelihood of
successful commercialization.
Acquiring adequate patent coverage for all aspects of a new
technology may require more than one patent filing for a given
invention. Often, a first filing in the U.S. takes the form of a
provisional application, a type of filing which preserves U.S.
patent rights and secures the benefits of an early filing date
8
1. U.S. patents issued related to inventions managed by IAS and by the campus offices. See
Exhibit 32 for LBNL’s U.S. patents issued.
for a period of 12 months at a relatively low cost as compared
to the cost of filing a regular application. A provisional filing is
likely to be made during the time period when the invention is
being marketed to potential licensees. Once a license agreement
is in place, the licensee usually bears the cost of seeking and
maintaining patent protection.
Secondary filings frequently lead to the issuance of multiple
patents related to a single invention. In addition to being needed
for converting a provisional filing into a regular filing, secondary
filings are often necessary in order to cover all aspects of the
invention and to secure the broadest possible patent protection
for it, and may include the filing of divisional applications and of
continuation applications where new matter is added. Several
years will elapse between a filing and the issuance of a patent
by the patent office.
Innovation Alliances and Services
Exhibit 7: Total Active Patents1
Exhibit 8: Total Active U.S. Patents by Campus1
As of June 30, 2011
4000
UCB
653
UCD
375
UCI
315
2000
UCLA
631
1500
UCM
2
1000
UCR
98
500
UCSB
367
UCSC
85
UCSD
767
UCSF
678
3,757
3500
3000
3,425
3,546
3,597
3,617
3,696
3,802
3,900
3,659
3,729
2500
0
FY07
U.S.
FY08
FY09
FY10
FY11
Foreign
1. Total active patents at year-end related to inventions managed by IAS and by the
campus offices.
1. Patents associated with inventors from more than one campus are reported multiple
times in this exhibit.
Exhibit 5 presents the patent activity at the 10 UC campuses
for FY11. The number of U.S. first filings increased by 9.0%
compared to 643 in FY10, while the number of secondary filings
increased by 8.1% from 540 in FY10. Foreign patents issued
increased by 10.3% from 330 in FY10.
for LBNL inventions, as compared to 27 U.S. patents issued for
LBNL inventions in FY10.
Exhibit 6 shows the number of U.S. patents issued in the past
five years for campus inventions, with the number of U.S. patents
issued increasing 15.5% (from 297 to 343) in FY11 as compared
to FY10.
At the end of FY11, there were 3,900 active U.S. and 3,729 active
foreign patents in the systemwide portfolio for its campus
inventions (Exhibit 7). The number of U.S. patents in each campus
portfolio is presented in Exhibit 8. UC Merced, which received
its first invention disclosure in FY06, had patents issued for its
inventions for the first time in FY11.
LBNL’s patent activity is shown in Exhibit 32. U.S. patent filings
for the fiscal year ending September 30, 2011, increased by 5.0%
over FY10, from 141 to 148. These included 66 first filings, all
of which were provisional filings; and 82 secondary filings, of
which two were provisional filings. A total of 36 U.S. patents
were issued during the fiscal year ending September 30, 2011
Annual Report 2011
9
Technology Transfer Activity and Financial Information
Exhibit 9: Licensing Activity1
Exhibit 10: Utility Agreements Issued1
Year Ending June 30, 2011
Agreements Issued
Letters of Intent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159
Options . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 217
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37
Total Active Licenses (year-end)
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1,477
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 627
500
414
400
300
200
367
340
339
42%
49%
46%
39%
37%
6%
57%
100
0
357
FY07
9%
13%
8%
12%
45%
43%
42%
FY08
FY09
FY10
52%
FY11
Letters of Intent
Options
Utility Licenses
10-year running average of all Utility Agreements2
1. Licensing activity related to inventions managed by IAS and by the campus offices.
See Exhibit 32 for LBNL’s licensing activity.
1. Utility licenses, options and letters of intent issued during the fiscal year related to
inventions managed by IAS and by the campus offices.
2. Sum of utility licenses, options, and letters of intent issued during the fiscal year and
the nine preceding fiscal years, divided by 10.
Licensing and Related Activity
an early stage invention that is protected by a UC patent or
patent application. In other instances, such licenses grant
property rights to materials developed by UC. In exchange, the
licensee makes a commitment to commercialize the invention
and to pay UC 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 negotiations.
A license agreement grants a licensee access to a University
invention in exchange for the licensee’s commitment to further
develop and commercialize the invention and to assist UC in
gaining patent protection for the invention, often in multiple
countries. The provisions of a license define the rights and
responsibilities of the two parties. In managing these license
agreements, UC must collect monies when due and monitor
progress to ensure that the licensees exercise due diligence in
developing inventions toward commercial application.
Utility licenses generally cover useful processes, machines,
manufactured items, or compositions of matter protected by
utility patents, and are often licensed exclusively. In a typical
utility license agreement, UC grants to a licensee access to
10
In contrast, plant licenses cover sexually and asexually reproduced
plant varieties, and most are licensed non-exclusively to multiple
growers and distributors worldwide. UC works closely with some
of its foreign plant licensees to explore opportunities for gaining
intellectual property protection and commercializing selected
strawberry and other plant cultivars in countries where such
intellectual property rights had not been available previously.
Innovation Alliances and Services
Exhibit 11: Utility Agreements Issued Per $10 Million
Research Expenditures1
1.0
0.8
0.89
0.83
0.82
0.75
0.6
0.71
0.4
0.2
0.0
FY07
FY08
FY09
FY10
FY11
1. The number of utility licenses, options and letters of intent issued during the fiscal
year related to inventions managed by IAS and by the campus offices, divided by
a five-year running average of the research expenditures data reported annually
to the National Science Foundation/Division of Science Resources Statistics for
its Survey of Research and Development Expenditures at Universities and Colleges.
Five-year running averages are calculated as the sum of the expenditures for the
fiscal year and the four preceding fiscal years, divided by five.
For utility inventions, certain other shorter-term agreements are
sometimes made prior to licensing. 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 FY11, UC entered into 598 secrecy agreements
for its campus inventions (LBNL entered into 94 secrecy
agreements during its fiscal year).
Exhibit 9 shows licensing activity for campus inventions in FY11.
With regard to agreements, UC entered into 451 new licenses
and related technology transfer agreements, including 217
utility licenses, 37 plant licenses, 38 options and 159 letters
of intent. During its fiscal year, LBNL entered into five utility
license agreements and 10 option agreements (Exhibit 32).
A letter of intent is a type of agreement generally 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, playing a similar role to letters of
intent, offer a more detailed and formal commitment to protect
a potential licensee’s interest in an invention while the potential
licensee performs in-depth technical or marketing research.
Annual Report 2011
11
Technology Transfer Activity and Financial Information
Exhibit 12: Utility Licenses Issued1
Exhibit 13: Total Active Utility Licenses1
250
217
209
200
100
1400
53%
45%
150
159
148
47%
40%
142
53%
1,315
1,359
1,336
1,371
FY08
FY09
FY10
1,477
800
47%
60%
1200
1000
53%
55%
50
1600
600
400
47%
200
0
FY07
FY08
FY09
FY10
FY11
0
FY07
FY11
Non-exclusive Utility Licenses
Exclusive Utility Licenses
1. Utility licenses issued during the fiscal year related to inventions managed by IAS and
by the campus offices.
1. Total active utility licenses at year-end related to inventions managed by IAS and by
the campus offices.
Overall, the number of utility agreements (utility licenses,
options and letters of intent) issued reached a new all-time
record, increasing from 339 in FY10 to 414 in FY11 (Exhibit 10).
The number of utility agreements issued in recent years has
remained above their 10-year running averages. The proportion
of licenses among these utility agreements increased from 42%
in FY10 to 52% in FY11, while the other categories of utility
agreements declined. As shown in Exhibit 11, the number of
utility agreements relative to research expenditures reversed a
recent declining trend, increasing from 0.71 utility agreements
per $10 million in research expenditures in FY10 to 0.83 in FY11.
Exhibit 12 shows the five-year trend in the number of utility
licenses issued, with the 217 utility licenses issued in FY11
representing a 52.8% increase over FY10. Of these 217 utility
licenses, 102 were exclusive licenses and 115 were nonexclusive. The proportion of exclusive utility licenses among all
utility licenses issued remained unchanged from its FY10 value
of 53% in FY11.
12
As of June 30, 2011, the systemwide portfolio (excluding LBNL)
totaled 2,104 active licenses, an increase of 6.1% over the total
at the close of FY10. The LBNL portfolio totaled 22 licenses as of
September 30, 2011.
Innovation Alliances and Services
Exhibit 14: Total Active Plant Licenses1
Exhibit 15: Total Active Utility Licenses by Campus1
Year Ending June 30, 2011
700
600
596
500
400
612
627
554
504
UCB
298
UCD
125
UCI
98
UCLA
242
300
UCM
2
200
UCR
38
100
UCSB
52
UCSC
13
UCSD
300
UCSF
354
0
FY07
FY08
FY09
FY10
FY11
1. Total plant licenses at year-end related to inventions managed by IAS and by the
campus offices.
1. Licenses associated with inventors from more than one campus are reported multiple
times in this exhibit.
Exhibits 13 and 14 show the five-year trend in the total number
of active utility and plant licenses for campus inventions. The
total number of active utility licenses increased 7.7% to 1,477
at the close of FY11 as compared to the close of FY10. The total
number of active plant licenses continued their upward trend,
increasing 2.5% to 627 at the close of FY11 as compared to the
close of FY10.
Exhibit 15 shows the total number of active utility licenses
associated with each campus. In regard to the distribution of
plant licenses among the campuses, UC Davis had 469 active
plant licenses at the close of FY11 and UC Riverside had 177.
Annual Report 2011
13
Technology Transfer Activity and Financial Information
Exhibit 16: Inventions Newly Covered Under Agreements1
Exhibit 17: Total Inventions Covered Under Utility Agreements1
Year Ending June 30, 2011
Number of Inventions Covered
Letters of Intent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 258
Options . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 385
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
3000
2500
2,431
2000
2,591
2,648
FY09
FY10
2,552
2,234
1500
1000
500
0
FY07
FY08
FY11
1. Inventions managed by IAS and by the campus offices that were newly subject to a
license, option or letter of intent during the fiscal year.
1. Total number of inventions managed by IAS and by the campus offices that are
subject to one or more utility licenses, options or letters of intent as of the close of
the fiscal year. Inventions associated with multiple utility agreements are counted only
once in this exhibit.
Although a new invention is typically the subject of a new
agreement when there is commercial interest in it, various
related inventions can be the subject of one agreement and
new inventions can also be added to existing agreements. In
particular, since UC inventors often make follow-on inventions
that are closely related to their earlier work, it is common for
existing utility licenses and options to be amended in order
to incorporate these follow-on inventions. In FY11, new or
amended utility licenses covered 385 campus inventions, while
new or amended options covered 114 campus inventions
(Exhibit 16).
As shown in Exhibit 17, the total number of campus inventions
covered under utility agreements (including licenses, options
and letters of intent) at the close of the fiscal year was 2,552, a
decrease of 3.6% from the close of FY10. Exhibit 18 shows the
campus distribution of these covered inventions.
14
Innovation Alliances and Services
Exhibit 18: Total Inventions Covered Under
Utility Agreements by Campus1
As of June 30, 2011
UCB
341
UCD
212
UCI
233
UCLA
530
UCM
5
UCR
82
UCSB
241
UCSC
33
UCSD
439
UCSF
473
1. Total number of inventions that are subject to one or more utility licenses, options or
letters of intent as of the close of the fiscal year. Inventions associated with inventors
from more than one campus are reported multiple times in this exhibit. Inventions
associated with multiple utility agreements are counted only once in this exhibit.
Annual Report 2011
15
Technology Transfer Activity and Financial Information
Startup Company Formation
Exhibit 19: Startup Companies Formed1
Exhibit 20: Startup Companies Formed by Campus1
Year Ending June 30, 2011
80
UCB
5
UCD
5
UCI
3
75
60
58
40
48
49
41
20
0
FY07
FY08
FY09
FY10
UCLA
19
UCM
1
UCR
5
UCSB
4
UCSC
1
UCSD
13
UCSF
3
FY11
Startup companies formed
10-year running average of startup companies formed
1. Year of startup company formation based on the execution date of the first license,
option or letter of intent granting rights to a UC invention managed by IAS or by
a campus office. Prior to FY10, some campuses did not report company formation
based on the execution of letters of intent.
1. Year of startup company formation based on the execution date of the first license,
option or letter agreement. Startup companies formed with inventors from more than
one campus are reported multiple times in this exhibit.
A technology transfer agreement such as a license, an option
or a letter of intent can be significant in spurring formation of
new startup companies, with invention rights providing an
asset that is highly attractive to venture capitalists and angel
investors. In the case of startups involving UC technologies,
inventors also frequently play a critical role in founding the
company. Furthermore, several UC campuses have programs
for facilitating new company formation.
continued to increase. Exhibit 20 shows FY11 startup company
formation by campus, with UCLA accounting for nearly one-third
of FY11’s activity.
Since 1976, transfer of UC inventions has played a role in the
founding of nearly 600 startup companies. Exhibit 19 shows
recent startup company formation involving UC inventions,
with 58 UC startup companies formed in FY11. Although this
figure decreased 22.7% from the 75 UC startup companies
formed in FY10, the 58 companies formed in FY11 remained
well above the 10-year running average. Furthermore, the
10-year running average of UC startup companies formed
16
Startups based on UC technologies play an important role in
California’s economy, especially in biotechnology. A 2003 study
of California’s biotech firms found that UC scientists founded
one-third of them and that one-fourth of all biotech firms in the
U.S. are located within 35 miles of a UC campus.* The map on
the next page shows the locations of UC campuses and of the
44 California-based UC startups that were formed in FY11. Of
these 44 startup companies, 43 of them (97.7%) were located
within 35 miles of a UC campus, and 41 of them (93.2%) were
within 20 miles.
*
Yarkin, C., & Murray, A. (2003). Assessing the Role of the University of California in the
State’s Biotechnology Economy: Heightened Impact Over Time. UC Industry-University
Cooperative Research Program Working Paper Series.
Innovation Alliances and Services
UC Startups In California
FY2011
S.F. / Sacramento /
Santa Cruz Regions
Davis
Santa Barbara /
L.A. Basin
San Diego Region
15 19 10
Berkeley
San Francisco
Merced
Santa Cruz
Santa Barbara
Riverside
Los Angeles
Irvine
UC Campus
Startup
San Diego
Technology Transfer Activity and Financial Information
Technology Transfer Income
Exhibit 21: Total Licensing Income1
(Millions)
$200.2
200
87.5
175
150
125
100
75
$116.9
19.3
97.6
$128.4
24.2
104.2
$121.4
22.7
98.7
$125.3
20.8
104.4
20.1
94.5
50
25
0
FY07
FY082
FY093
FY10
FY114
Prepayment of future royalty income4
Patent/legal reimbursements
Royalty and fee income
Total Income from Licensing
Total income from licensing for UC’s campus inventions—the
income the University receives from its technology agreements
with industry—was $202.2 million in FY11 (Exhibit 21). This
FY11 total licensing income represents a 61.4% increase over
FY10 total licensing income; the FY11 total includes an
$87.5 million prepayment of future royalty income for a UC
Berkeley invention, Immune Activator for Treating Cancer.
1. This exhibit shows total licensing income for inventions managed by IAS and by the
campus offices (see Exhibit 33 for LBNL’s royalty and fee income). Total licensing
income consists of two components: royalty and fee income, and patent/legal
reimbursements.
2. The total licensing income reported for FY08 ($128.4 million) does not include up-front
payments and reimbursements of $42.6 million from the settlement of litigation.
3. The total licensing income reported for FY09 ($121.4 million) does not include up-front
payments and reimbursements of $4.6 million from the settlement of litigation.
4. Since the $87.5 million prepayment of future royalty income in FY11 is an extraordinary
event, it is shown apart from other royalty and fee income as a separate component in
this exhibit.
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 UC inventions reach
the marketplace. Because of the extraordinary nature of the
prepayment of future royalty income for the Immune Activator
for Treating Cancer invention in FY11, it is shown separately in
yellow from other royalty and fee income in Exhibit 21. Reimbursements, the second component of total licensing income,
represent the recovery of patent and legal expenses.
18
Innovation Alliances and Services
Exhibit 22: Total Licensing Income by Campus1
Year Ending June 30, 2011
(Thousands)
UCB2
$95,319
UCD
$11,120
UCI
$7,354
UCLA
$21,241
UCM
$53
UCR
$6,149
UCSB
$5,348
UCSC
$125
UCSD
$18,212
UCSF
$32,396
Other3
$4,876
In the case of pharmaceutical and medical device inventions,
successful commercialization requires completion of a lengthy
multi-stage process for securing regulatory approval of a
licensee’s products from the U.S. Food and Drug Administration.
Thus, the introduction of a new FDA-approved product into the
marketplace is a significant event. In March of 2011, the Immune
Activator for Treating Cancer invention achieved this status with
the FDA’s approval of Bristol-Myer Squibb’s YERVOY™ for the
treatment of late-stage metastatic melanoma.* This invention
also ranked among the top earning UC inventions of FY11 as
noted in the next section.
*
1. Total licensing income consists of two components: royalty and fee income, and
patent/legal reimbursements.
2. The total licensing income reported for UC Berkeley includes an $87.5 million
prepayment of future royalty income.
3. 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.
Exhibit 22 shows the amount each campus contributed to
FY11 total licensing income. Because of the large prepayment
of future royalty income, UC Berkeley’s contribution to total
licensing income rose from $6.8 million in FY10 to $95.3 million
in FY11. Other campuses with increases from FY10 to FY11
were UC Davis ($10.4 million to $11.1 million), UC Irvine
($5.3 million to $7.4 million), UC Riverside ($3.6 million to
$6.1 million), UC Santa Barbara ($4.3 million to $5.3 million),
and UC San Francisco ($29.1 million to $32.4 million).
YERVOY™ is a trademark of Bristol-Myers Squibb.
Annual Report 2011
19
Technology Transfer Activity and Financial Information
Royalty and Fee Income
Royalty and fee income for campus inventions in the fiscal year
ending June 30, 2011, was $182.0 million, which was derived
from 1,873 inventions. This income included an $87.5 million
prepayment of future royalty income for the Immune Activator
for Treating Cancer invention. As compared to FY10, royalty and
fee income increased by $77.6 million.
Exhibit 23: UC Top-Earning Inventions1
Year Ending June 30, 2011
(Thousands)
Invention (Campus, Year Disclosed)
Royalty &
Fee Income
Immune Activator for Treating Cancer (BK, 1996) . . . . . . . . . . . . . . . . . . . $87,5162
Hepatitis-B Vaccine (SF, 1979 & 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $13,020
Treatment of Intracranial Aneurysms (LA, 1989) . . . . . . . . . . . . . . . . . . . . . . $10,628
EGF Receptor Antibodies (SD, 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$7,058
In FY11, $18,617 was realized from the sale of equity previously
acquired under nine license agreements. Because of these transactions and the approval of 17 agreements in FY11 that included
equity as partial consideration, at the end of the fiscal year UC held
equity related to technology transfer activities in 122 companies.
Royalty and fee income from the top five commercialized UC
inventions (i.e., inventions that had reached the marketplace)
contributed $123.2 million in FY11, accounting for 67.7% of
total royalty and fee income (Exhibit 23). The top 25 inventions
collectively accounted for $155.4 million or 85.3% of total
royalties and fees. Inventions appearing on this list for the
first time include Immune Activator for Treating Cancer from
UC Berkeley, Barrier Repair Lipids from UC San Francisco,
San Andreas Strawberry from UC Davis, and Diagnostics for
Gastrointestinal Disorders from UCLA.
For the fiscal year ending September 30, 2011, LBNL-managed
inventions generated $2.3 million in royalty and fee income for
licenses that are under the patent policy, an increase of 18.7%
over the prior year. Copyright income for LBNL increased 95.1%
from $689,000 to $1.34 million as compared with FY10 (Exhibit 33).
Bovine Growth Hormone (SF, 1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $5,000
Subtotal (Top 5 Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $123,222
Chromosome Painting (LLNL, 1985, 1989 & 1995) . . . . . . . . . . . . . . . . . . . . . $4,015
Barrier Repair Lipids (SF, 1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$3,695
Firefly Luciferase (SD, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,962
Camarosa Strawberry (DA, 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$2,360
Detection of Mycoplasma (IR, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$2,351
Dynamic Skin Cooling Device (IR, 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,234
Albion Strawberry (DA, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,136
Energy Transfer Primers (BK, 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,073
Tango Mandarin (RV, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,851
Biodegradable Implant Coils (LA, 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$1,632
Optical Network Switch (DA, 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$1,193
Universal Oligonucleotide Spacer (BK, 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $777
San Andreas Strawberry (DA, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $704
Ventana Strawberry (DA, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $676
Vesicle Loading Method (LBNL, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $660
Magnetic Resonance Imaging (SF, 1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $618
Comparative Genomic Hybridization (SF, 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . $564
Genomic Microarrays (SF, 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $564
Diagnostics for Gastrointestinal Disorders (LA, 1997, 99, 00 & 01) . . . $563
Aids for Learning Disabled (SF, 1997 & 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $507
Subtotal (Top 25 Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$155,357
Total (All Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$182,050
% of Total from Top 5 Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 67.7%
% of Total from Top 25 Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 85.3%
1. This list is limited to revenue-generating inventions that have been commercialized.
The royalty and fee income shown here excludes patent/legal reimbursements.
2. This royalty and fee income includes an $87.5 million prepayment of future
royalty income.
20
Innovation Alliances and Services
Exhibit 24: Payments to Joint Holders1
(Millions)
$7.8
$8
$6.1
$6.2
6
$5.6
$4.3
4
2
0
FY072
FY08
FY09
FY10
FY11
Payments to Joint Holders
When 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,
interinstitutional agreements are often negotiated to establish
which entity will manage the patenting and licensing of the
invention and the collection and distribution of invention income;
such collaborations are relatively common. In FY11, 257 of 1,581
new campus disclosures (16.3%) included non-UC inventors and
76 new interinstitutional agreements were signed, an 11.8%
increase over FY10.
In FY11, $7.8 million was redistributed to other entities for campus
inventions covered by interinstitutional and other income-sharing
agreements. For financial reporting purposes, these monies are
Annual Report 2011
1. Payments to joint-holders related to inventions managed by IAS and by the
campus offices.
2. The payments to joint holders reported for FY07 ($4.3 million) do not include
payments of $0.5 million for the settlement of litigation.
treated as an offset to income. As shown in Exhibit 24, these
redistributions increased from FY10 to FY11 by $2.2 million.
Income Associated with Patent/Legal Expenses
Because inventions are highly technical, UC uses specialized
outside attorneys to draft and secure patent protection both in
the U.S. and abroad. Costs to secure, maintain and protect patent
rights associated with an invention are substantial. Obtaining a
licensee’s commitment to reimburse these costs is a high priority
objective of license negotiations, and reimbursements, therefore,
are considered part of total licensing income. In FY11, UC
received $20.1 million in patent/legal expense reimbursements
related to campus inventions. This is a decrease of 3.4% from
reimbursements received for such expenses in FY10.
21
Technology Transfer Activity and Financial Information
Technology Transfer Expenses
Exhibit 25: Legal Expenses1
(Millions)
$40
$35.1
$32.8
$32.4
$26.9
30
$28.5
20
$15.8
$8.7
$9.7
10
0
$8.3
$6.0
FY07
FY082
FY093
FY10
FY114
Gross legal and other direct expenses
Net legal and other direct expenses
Legal and Other Direct Expenses
Gross legal and other direct expenses totaled $28.5 million in
FY11 for campus inventions (Exhibit 25), excluding $1.3 million
in extraordinary expenses associated with the prepayment of
future royalty income for the Immune Activator for Treating
Cancer invention. Most technology transfer legal expenses are
associated with patent prosecution and maintenance, defined
as payments to outside counsel for drafting patent applications
as well as other costs for securing and maintaining patent
protection for UC inventions. Other major categories of legal
expenses include those for patent interference proceedings,
enforcement of patent rights against infringement, and
defense against litigation in civil proceedings.
22
1. Legal and other direct expenses related to inventions managed by IAS and by the
campus offices.
2. The gross and net legal and other direct expenses reported for FY08 do not include
$5.8 million in gross legal expenses and $5.2 million in net legal expenses for the
settlement of litigation.
3. The gross and net legal and other direct expenses reported for FY09 do not include a
credit of $0.9 million against gross legal expenses and do not include $1.2 million in
net legal expenses for the settlement of litigation.
4. The gross and net legal and other direct expenses reported for FY11 do not include
$1.3 million in gross and net legal and other direct expenses associated with an
$87.5 million prepayment of future royalty income.
The extent of reimbursement of legal and other direct
expenses is a negotiated term of a license agreement. In FY11,
reimbursements of legal expenses for campus inventions totaled
$20.1 million, resulting in net legal and other direct expenses of
$8.3 million (Exhibit 25) when excluding extraordinary expenses
for the Immune Activator for Treating Cancer invention. These
reimbursements covered 70.8% of gross legal and other direct
expenses when excluding extraordinary expenses for the
Immune Activator for Treating Cancer invention.
Innovation Alliances and Services
Exhibit 26: Net Legal Expenses by Category1
Year Ending June 30, 2011
Other
5.1%
Interference &
Infringement
1.9%
Legal Defense
2.0%
Expenses for Royalty
Prepayment2
13.8%
Patent
Prosecution &
Maintenance
77.2%
Exhibit 26 provides a breakdown of FY11 net legal and other
direct expenses by different categories of expenditure,
including the extraordinary expense. Patent prosecution and
maintenance accounted for $7.4 million of net legal and other
direct expenditures (77.2%), while the $1.3 million in expenses
associated with the prepayment of future royalties accounted
for a 13.8% share. Legal defense expenditures accounted for
$0.2 million (2.0%), interference and infringement actions
accounted for $0.2 million (1.9%), and other direct expenses
accounted for $0.5 million (5.1%). As was the case in FY10,
patent prosecution activities accounted for a relatively large
percentage of net legal and other direct expenditures in FY11,
reflecting the relatively greater reductions in expenditures that
have occurred in other expenditure categories since FY07.
Annual Report 2011
1. Net legal and other direct expenses related to inventions managed by IAS and by the
campus offices.
2. Net legal and other direct expenses associated with an $87.5 million prepayment of
future royalty income.
It is anticipated that UC’s 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 and other direct 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.
Information on LBNL patenting and licensing expenses is not
provided in this report. In-house patent expenses and operating
expenses related to the licensing function are allowable costs
under UC’s current contract with DOE and are not readily
separable from other LBNL expenses.
23
Technology Transfer Activity and Financial Information
Income Distributions
Exhibit 27: Income Distributions1
(Millions)
180
$164.6
150
78.8
120
90
$77.0
$89.4
38.2
$82.8
30.2
60
30.0
30
35.6
35.2
38.8
0
10.0
13.6
10.7
2.5
1.4
FY07
FY082
3.2
FY093
$92.8
38.8
$78.4
24.8 54.1
38.9
39.9
12.1
3.0
9.2
4.5
FY10
27.2
4.5
FY114
Income after mandatory distributions
Inventor shares
Research allocation share
General fund share
The income derived from royalties and fees, less the sum of
payments to joint holders and less net legal and other direct
expenses, is distributed in various shares as required under UC
and campus policies. In FY11, income distributions related to
campus inventions totaled $164.6 million, distributed as shown
in Exhibit 27. A total of $86.2 million of these income distributions
arose from the prepayment of future royalty income for the
Immune Activator for Treating Cancer invention, with the
balance of $78.4 million in income distributions coming from
all other inventions.
24
1. Income distributions related to inventions managed by IAS and by the campus offices.
2. The distributions reported for FY08 do not include a general fund distribution of
$6.0 million, inventor share distributions of $12.9 million or income after mandatory
distributions of $18.0 million related to the settlement of litigation.
3. The distributions reported for FY09 do not include a general fund distribution of
$0.8 million, inventor share distributions of $2.3 million or income after mandatory
distributions of $2.4 million related to the settlement of litigation.
4. The distributions reported for FY11 are shown without (left half-column) and with (right
half-column) $86.2 million in distributions arising from an $87.5 million prepayment of
future royalty income
Inventor Shares
UC Patent Policy grants inventors the right to receive a portion
of net income accruing to individual inventions. In FY11, 2,153
inventors received a total of $54.1 million for IAS- and campusmanaged inventions, including $14.2 million for the Immune
Activator for Treating Cancer invention and $39.9 million for all
other inventions. 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 FY11 were calculated based on invention financial activity
through June 30, 2010. Trends related to the amount of inventor
share payments are reflected in Exhibit 27.
Innovation Alliances and Services
General Fund Share
The portion of UC’s technology transfer income allocated to
the UC General Fund totaled $27.2 million in FY11 (Exhibit 27),
including an allocation of $18.0 million from the Immune
Activator for Treating Cancer’s income and an allocation of
$9.2 million from all other inventions. 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 Share
The 1997 Patent Policy requires that for inventions disclosed on
or after October 1, 1997 by inventors subject to this policy, 15%
of net royalty and fee income from each invention be designated
for research-related purposes on the campus or Laboratory
where the inventor worked at the time the invention was
disclosed. The research allocation for campus-related inventions
totaled $4.5 million in FY11 (Exhibit 27).
Income after Mandatory Distributions
All income derived from royalties and fees remaining after
deductions for payments to joint holders, net legal and direct
expenses, and other distributions, is available to the campuses
subject to certain other campus-specific debits and credits for
patent-related activities (not shown). This category combines
expenditures that Annual Reports prior to FY07 showed
separately as “Operating Expense” and “Campus Share”
distributions. Income after mandatory distributions totaled
$78.4 million in FY11 (Exhibit 27), including $54.0 million
after mandatory distributions for the Immune Activator for
Treating Cancer invention and $24.8 million after mandatory
distributions for all other inventions.
Annual Report 2011
25
Technology Transfer Activity and Financial Information
Exhibit 28: Systemwide Technology Transfer Activity FY07 – FY111
Fiscal Years Ending June 30
Fiscal Year Comparisons
FY07
FY08
FY09
FY10
FY11
% CHANGE
(FY10-FY11)
1,581
10,341
1.0%
4.6%
Inventions
Inventions Disclosed
Total Active Inventions (year-end)
1,411
8,272
Patent Prosecution
U.S. Applications Filed
First Filings
Secondary Filings
Total
U.S. Patents Issued
Total Active U.S. Patents (year-end)
644
623
651
643
701
564
530
524
540
584
1,2081,153 1,1751,183 1,285
331
224
244
297
343
3,425
3,546
3,617
3,802
3,900
9.0%
8.1%
8.6%
15.5%
2.6%
First Foreign Filings
Total Active Foreign Patents (year-end)
315
3,757
-4.0%
1.9%
1,497
8,953
276
3,597
1,482
9,343
277
3,696
1,565
9,883
272
3,659
261
3,729
Licensing
Agreements Issued
Letters of Intent
136
151
166
156
159
1.9%
Options
22
47
26
41
38
-7.3%
Utility Licenses
209
159
148
142
217
52.8%
Plant Licenses
73
101
63
69
37
-46.4%
Total Active Agreements (year-end)
Options
Utility Licenses
Plant Licenses
109
1,477
627
-3.5%
7.7%
2.5%
Inventions Covered Under Agreements
Inventions Covered Under Letters of Intent
253
223
290
238
258
Inventions Optioned
59
157
80
102
114
Inventions Licensed (utility)
404
369
356
316
385
Inventions Licensed (plant)
37
24
38
20
30
8.4%
11.8%
21.8%
50.0%
Total Inventions Covered Under Agreements (year-end)
Inventions Covered Under Letters of Intent2
Inventions Optioned2
Inventions Licensed (utility)2
Inventions Licensed (plant)
Startup Companies
Startup Companies Formed
69
1,315
504
91
1,359
554
102
1,336
596
113
1,371
612
409
156
1,772
95
418
242
1,910
98
493
265
2,001
105
469
288
2,039
114
463
213
2,024
114
-1.3%
-26.0%
-0.7%
0.0%
41
48
493
75
58
-22.7%
Exhibit 28 reports only technology transfer activity governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. It does
not include copyright and material transfer agreement activity that is also carried out by the campus offices.
1. Technology transfer activity related to a small number of DOE Laboratory inventions managed by IAS is also reflected in these figures. See Exhibit 32 for technology transfer activity
related to inventions managed by LBNL’s technology transfer office.
2. An invention may be covered by more than one type of utility agreement (utility license, option and letter of intent), so the sum of these figures for a fiscal year may exceed the values
reported in Exhibit 17.
3. The number of startup companies formed in FY09 has been adjusted upwards in this exhibit from the 47 companies reported in the FY09 Annual Report to 49 to include two additional
companies that were founded based on UCSF inventions.
26
Innovation Alliances and Services
Exhibit 29: Systemwide Financial Activity FY07 – FY111
Fiscal Years Ending June 30
(Thousands)
Fiscal Year Comparisons
FY07
FY08
FY09
FY10
FY11
% CHANGE
(FY10-FY11)
Income from Royalties and Fees
Less: Payment to Joint Holders
Adjusted Gross Income (A)
$97,594
(4,798)
92,796
$146,314
(6,114)
140,200
$103,105
(6,217)
96,888
$104,435
(5,641)
98,794
$182,050
(7,827)
174,222
74.3%
38.8%
76.3%
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(35,087)
19,292
(15,795)
(38,602)
24,668
(13,934)
(31,486)
22,946
(8,540)
(26,866)
20,825
(6,040)
(29,784)
20,142
(9,642)
10.9%
-3.3%
59.6%
Income Available for Distribution (A+B)
77,001
126,226
88,347
92,753
164,580
77.4%
Income Distributions
Inventor Shares (C)
Research Allocation Share (D)
General Fund Share (E)
Income after Mandatory Distributions (F)
Total Income Distributions (C+D+E+F)
35,562
1,380
10,045
30,014
77,001
48,087
2,475
19,545
56,160
126,226
41,106
3,160
11,4992
32,5832
88,3472
38,876
54,101
39.2%
2,984
4,470
49.8%
12,087
27,159
124.7%
38,806
78,850
103.2%
92,753164,580 77.4%
Exhibit 29 only reports financial activity (not adjusted for legal settlements) governed by the UC Patent Policy for inventions managed by IAS and by
the campus offices. Campus 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.
1. Financial activity related to a small number of DOE Laboratory inventions managed by IAS is also reflected in these figures. See Exhibit 33 for financial activity related to inventions
managed by LBNL’s technology transfer office.
2. These figures have been corrected from those reported in the FY09 Annual Report.
Annual Report 2011
27
Technology Transfer Activity and Financial Information
Exhibit 30: FY11 Campus Technology Transfer Activity1
Year Ending June 30, 2011
Inventions
Inventions Disclosed
Total Active Inventions (year-end)
UCB
171
1,277
UCDuciuclaucMucrucsbucscucsducsf
184
1,047
178
869
299
1,824
16
67
74
349
64
590
59
194
388
2,840
173
1,475
Patent Prosecution
U.S. Applications Filed
First Filings
Secondary Filings
Total
U.S. Patents Issued
Total Active U.S. Patents (year-end)
82
65
70
179
14
81
48
33
166
16
163113 103345 30
44
23
30
56
2
653
375
315
631
2
First Foreign Filings
Total Active Foreign Patents (year-end)
23
498
30
411
4
467
70
628
3
0
11
141
24
75
8
28
58
707
36
807
19
13
32
0
11
1
26
31
20
5
20
0
57
8
38
0
0
0
1
0
0
4
8
9
16
2
12
0
10
0
2
0
18
0
46
0
14
6
34
0
32
298
0
10
125
469
13
98
0
20
242
0
1
2
0
8
38
177
14
52
0
1
13
0
2
300
0
12
354
0
24
18
39
0
13
1
37
25
46
13
40
0
90
23
103
0
0
0
1
0
0
7
19
6
29
48
31
0
9
1
4
0
31
0
69
0
21
5
42
0
89
38
251
0
36
11
174
88
48
16
179
0
112
32
405
0
3
0
2
0
13
15
64
28
52
88
126
0
8
1
26
0
34
2
413
0
74
14
408
0
5
5
3
19
1
5
4
1
13
3
Licensing
Agreements Issued
Letters of Intent
Options
Utility Licenses
Plant Licenses
Total Active Agreements (year-end)
Options
Utility Licenses
Plant Licenses
Inventions Covered Under Agreements
Inventions Covered Under Letters of Intent
Inventions Optioned
Inventions Licensed (utility)
Inventions Licensed (plant)
Total Inventions Covered Under Agreements (year-end)
Inventions Covered Under Letters of Intent2
Inventions Optioned2
Inventions Licensed (utility)2
Inventions Licensed (plant)
Startup Companies
Startup Companies Formed
32
48
28
76
60 124
11
46
98
367
22
155
52
17
84
44
39239 96
7
88
41
85
767
678
Exhibit 30 only reports technology transfer activity governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. It does
not include copyright and material transfer agreement activity that is also carried out by the campus offices.
1. Technology transfer activity related to inventions having one or more inventors at each campus. A number of inventions involve inventors from multiple UC campuses. Technology
transfer 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.
2. An invention may be covered by more than one type of utility agreement (utility license, option and letter of intent), so the sum of these figures for a campus may exceed the values
reported in Exhibit 18.
28
Innovation Alliances and Services
Exhibit 31: FY11 Campus Financial Activity1
Year Ending June 30, 2011
(Thousands)
UCB
UCDuciuclaucMucrucsbucscucsducsf
Income from Royalties and Fees
Less: Payment to Joint Holders
Adjusted Gross Income (A)
$92,823 $10,233 (81)
(2)
92,741 10,231
$6,033 $16,153
(36) (2,556)
5,997 13,597
$26 0
26
$5,441 (4)
5,437
$2,618 (161)
2,457
$82 $14,048 $29,887
(41)
(321) (4,624)
40 13,727 25,263
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(5,010) (2,484) (2,144) (6,298)
(497)
(837) (2,763)
(259) (5,036) (4,196)
2,497
887
1,321
5,088
27
708
2,730
43
4,164
2,509
(2,513)
(1,596)(823)
(1,211)(469)(129) (33)(216)(873)
(1,687)
Income Available for Distribution (A+B)
90,228
8,634
5,174
12,387
(443)
5,308
2,423
(176)
12,854
23,575
Income Distributions
Inventor Shares (C)
Research Allocation Share (D)
General Fund Share (E)
Income after Mandatory Distributions (F)
Total Income Distributions (C+D+E+F)
15,487
115
18,685
55,981
90,228
3,435
340
1,300
3,559
8,634
1,450
80
931
2,713
5,174
10,927
1,348
365
(253)
12,387
10
4
(113)
(345)
(443)
1,803
254
876
2,375
5,308
701
154
431
1,137
2,423
48
18
(56)
(186)
(176)
8,782
1,956
1,018
1,098
12,854
8,682
191
3,723
10,979
23,575
Exhibit 31 only reports financial activity (not adjusted for legal settlements) governed by the UC Patent Policy for inventions managed by IAS and by
the campus offices. Campus 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.
1. Financial activity related to inventions having one or more inventors at each campus. A number of inventions involve inventors from multiple UC campuses. Financial activity
statistics for these inventions are pro-rated among the campuses according to the number of inventors each campus has. Since some financial activity reported here is credited to UC
inventors who are not associated with a campus (including staff at the DOE Laboratories), the sum of individual campus numbers may not equal the systemwide totals reported
elsewhere in this report.
Annual Report 2011
29
Technology Transfer Activity and Financial Information
Exhibit 32: LBNL Technology Transfer Activity FY07 – FY11
Fiscal Years Ending Sept. 30
Fiscal Year Comparisons
FY07
FY08
FY09
FY10
FY11
Inventions and Patent Prosecution
Inventions Disclosed
126
130
109
127
154
% CHANGE
(FY10-FY11)
21.3%
U.S. Applications Filed
First Filings—Provisional
First Filings—Regular
Secondary Filings—Provisional
Secondary Filings—Regular
Total
56
77
58
55
66
20.0%
2
0
3
3
0
-100.0%
0
14
11
17
2
-98.2%
16
44
69
66
80
21.2%
74135 141141 1485.0%
U.S. Patents Issued
25
18
26
27
36
33.3%
First Foreign Filings
29
58
14
47
26
-44.7%
Licensing
Agreements Issued
Secrecy
Option
License
201
2
3
202
9
8
160
7
10
184
4
6
94
10
5
-48.9%
150.0%
-16.7%
8
61
19
61
13
63
5
60
15
22
200.0%
-63.3%
Total Active Agreements (year-end)
Option
License
30
Innovation Alliances and Services
Exhibit 33: LBNL Financial Activity FY07–FY111
Fiscal Years Ending Sept. 30
(Thousands)
Fiscal Year Comparisons
FY07
FY08
FY09
FY10
FY11
Income from Royalties and Fees
Patents and Tangible Research Products
Copyrights/Software
Total
Inventor/Author Shares Paid
Patents and Tangible Research Products
Copyright/Software, Trademark and Other
Total
% CHANGE
(FY10-FY11)
$2,502
$2,702
$2,700
$1,918
$2,277
18.7%
716
512
851
689
1,344
95.1%
3,2183,214 3,5512,607 3,62138.9%
796
169
965
N.A.2
1,021
1,057
N.A.2
93
267
N.A.2 1,115 1,324
608
-42.5%
109
-59.2%
717-45.8%
1. In addition to income reported in this table, the IAS-managed portfolio of DOE Laboratory inventions collectively generated $4,706,186 in FY11 royalty and fee income, including
$691,244 for LBNL inventions.
2. Starting in FY08, payment of Inventor/Author Shares is deferred until the following year to match the campus inventor share payment schedule.
Annual Report 2011
31
UC Technology Transfer on the Web
Available Technologies
University of California Technology Transfer — Available Technologies . . . . . . . . . . . . . . . . . . . . . techtransfer.universityofcalifornia.edu
Technology Transfer Offices
UC Office of the President: Innovation Alliances and Services (IAS) . . . . . . . . . . . . . . . . . . . . . . . . ucop.edu/research/ias
UC Berkeley: Office of Intellectual Property
& Industry Research Alliances (IPIRA)
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ipira.berkeley.edu
UC Davis: UC Davis InnovationAccess . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . research.ucdavis.edu/u/s/ia
UC Irvine: Office of Technology Alliances (OTA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . www.ota.uci.edu
UC Los Angeles: Office of Intellectual Property
& Industry Sponsored Research (OIP-ISR)
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
oip.ucla.edu
UC Merced: Office of Technology Transfer (OTT) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ott.ucmerced.edu
UC Riverside: Office of Technology Commercialization (OTC) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ora.ucr.edu/otc.aspx
UC Santa Barbara: Office of Technology & Industry Alliances (TIA) . . . . . . . . . . . . . . . . . . . . . . . . . tia.ucsb.edu
UC Santa Cruz: Office for Management of Intellectual Property (OMIP) . . . . . . . . . . . . . . . . . . . research.ucsc.edu/intel_prop.shtml
UC San Diego: Technology Transfer Office (TTO) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . invent.ucsd.edu
UC San Francisco: Office of Technology Management (OTM) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . otm.ucsf.edu
Lawrence Berkeley National Laboratory: Technology Transfer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . lbl.gov/Tech-Transfer
and Intellectual Property Management (TTIPM)
32
Berkeley
Davis
Irvine
Los Angeles
Merced
Riverside
San Diego
San Francisco
Santa Barbara
Santa Cruz
Lawrence Berkeley
University of California
Innovation Alliances and Services
1111 Franklin Street, 5th Floor
Oakland, CA 94607-5200