Table of Contents
Technology Transfer Advisory Committee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
Message from the Executive Director . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Technology Transfer Activity and
Financial Information:
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Technology Transfer Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
Invention Reporting . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
Patent Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Licensing and Related Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Startup Company Formation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
Technology Transfer Income . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Total Income From Licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Royalty and Fee Income . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
Payments to Joint Holders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Income Associated With Patent/Legal Expenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Technology Transfer Expenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Legal and Other Direct Expenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Income Distributions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Inventor Shares . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
General Fund Share . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Research Allocation Share . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Income After Mandatory Distributions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
UC Technology Transfer on the Web . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
1
2010 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
Alan B. Bennett Professor, Plant Sciences, UCD
Arthur B. Ellis
Vice Chancellor for Research, UCSD
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
Charles F. Louis Vice Chancellor for Research, UCR
Bruce H. Margon
Vice Chancellor for Research, UCSC
Richard Miller
Associate Vice Chancellor for Research, UCM
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
A. Eugene Washington Executive Vice Chancellor & Provost, UCSF
FISCAL YEAR 2010
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 Obama Administration has made enhancing the commercialization of research from universities and
National Laboratories a cornerstone of its innovation strategy. The Office of the President, through
Innovation Alliances and Services and through Research Policy, Analysis and Coordination, in coordination
with our campus colleagues, has actively participated in this process and UC’s contribution to the national
dialog has been recognized by Administration officials. The value generated by UC’s research enterprise
to the economic future of our regions, State, and nation is undisputed, but we are increasingly being
challenged to both increase and document our impact. This year, UC’s technology transfer program continued
to generate significant public benefits, creating new bridges between the University and private industry
with notable growth of its overall portfolio of inventions, patents, licenses and startups in spite of serious
on-going challenges both in the broader economy and in UC’s budget.
UC’s portfolio of active inventions increased by 5.8% to 9,883, while the number of U.S. patents owned by
UC increased by 5.1% to 3,802. Active license agreements increased 2.6% to 1,983; and inventions covered
by a utility license, option, or letter of intent increased by 2.2% to 2,648. Total income from technology
transfer (net of legal settlements) available for distributions to inventors and the University reached a record
level of $92.8 million this year, an increase of $10.0 million over the previous year. The increases in these
categories points to the continuing strength of our programs.
Technology-centric small businesses are a key to economic growth and are the agents of technological change.
Many of these companies have their origin in technologies created in university research laboratories. They
can create paradigm shifts that transform existing industries, or create entirely new ones. UC is continuing
to do its part in spawning startups and supporting the entrepreneurial aspirations of our researchers. In
fiscal year 2010, 75 startup companies were founded on UC technologies, as compared to 49 companies in
the previous year. Of these 75 companies, 62 are based in California, further emphasizing UC’s contribution
to the State’s economy.
In our ongoing efforts to implement the Technology Transfer Advisory Committee (TTAC) subcommittee
report on metrics for technology transfer operations, this Annual Report includes some additional analyses.
We have begun reporting invention disclosures and utility agreements normalized by research expenditures as
reported to the NSF (Exhibits 2 and 11 respectively). Also, we have provided additional detail on the nature of
agreements with companies seeking to exploit UC-based technologies, in part to reflect the new ways in which
campus licensing offices interact with the business community. We hope that this report better reflects their
efforts to create public benefit from the breakthroughs made by of UC’s world-leading researchers.
Sincerely,
William Tucker
Executive Director,
Innovation Alliances and Services
3
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 2010.
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. Also, IAS manages a portfolio of inventions
for UC Merced.
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 Sept. 30, 2010, as compared
to June 30, 2010, 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 inhouse patent attorneys. A summary of technology transfer activity
and associated financial results for both portfolios can be found in
Exhibits 28 through 33.
4
......................................................................................................
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)
TECHNOLOGY TRANSFER ACTIVITY
Invention Reporting
During the 12-month period ending June 30, 2010, 1,565 inventions
were disclosed by faculty and researchers at the 10 UC campuses;
an increase of 5.6% over the number of inventions reported in FY09
(Exhibit 1). As shown in Exhibit 2, the number of disclosures relative to
research expenditures has remained quite stable over time, currently at
around 3.3 invention disclosures per $10 million in research expenditures.
During the 12-month period ending Sept. 30, 2010, 127 inventions
were disclosed by inventors at LBNL, an increase of 18 inventions
from the 109 disclosed in FY09.
Exhibit 1: Invention Disclosures*
1600
1400
1200
1,411
UC Davis increased its new disclosures by 73 inventions (from 172 in
FY09 to 245 in FY10). Other campuses with increases included UC
Berkeley, with an increase of 11 inventions (from 131 in FY09 to 142 in
FY10); UC Irvine, with an increase of 13 inventions (from 112 to 125);
UC Los Angeles, with an increase of 46 inventions (from 333 to 379);
UC Merced, with an increase of one invention (from 21 to 22); and UC
Santa Cruz, with an increase of four inventions (from 27 to 31). Exhibit 3
shows the campus distribution of newly reported inventions for FY10.
1,497
1,482
1,565
Exhibit 2: Invention Disclosures Per $10 Million
Research Expenditures*
1,308
1000
4
800
600
3
400
3.34
3.42
3.46
FY06
FY07
FY08
3.27
3.29
FY09
FY10
200
0
2
FY06
FY07
FY08
FY09
FY10
1
* Invention disclosures managed by IAS and by the campus offices. See Exhibit 32 for LBNL’s
invention disclosures.
0
* 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.
5
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Patent Activity
Exhibit 3: Invention Disclosures by Campus*
Year Ending June 30, 2010
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.
UCSF 152
UCB 142
UCD 245
UCI 125
Acquiring adequate patent coverage for all aspects of a new technology
UCLA 379
UCM 22
UCR 54
UCSB 71
UCSC 31
UCSD 367
* Inventions having inventors from more than one campus are counted multiple times, once
for each campus with an inventor.
As of June 30, 2010, the systemwide invention portfolio (excluding
LBNL) was comprised of 9,883 active inventions. The total for each
campus invention portfolio is indicated in Exhibit 4.
Exhibit 4: Total Active Inventions by Campus*
As of June 30, 2010
UCB
1,173
UCD
1,017
UCI
6
803
UCLA
1,837
UCM
60
UCR
288
UCSB
631
UCSC
163
UCSD
2,660
UCSF
1,416
* Inventions associated with inventors from more than one campus are reported multiple
times in this exhibit.
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 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.
Exhibit 5 presents the patent activity at the ten UC campuses for FY10.
The number of U.S. first filings decreased by 1.2% compared to 651 in
FY09, while the number of secondary filings increased by 3.1% from 524
in FY09. Foreign patents issued decreased by 34.4% from 503 in FY09.
Exhibit 5: Patent Activity*
Year Ending June 30, 2010
U.S. Applications Filed
First Filings—Provisional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 609
First Filings—Regular . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34
Secondary Filings—Provisional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112
Secondary Filings—Regular . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 428
Total . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1,183
Subtotal—First Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 643
Subtotal—Secondary Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 540
Subtotal—Provisional Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 721
Subtotal —Regular Filings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 462
First Foreign Filings** . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 272
US Patents Issued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 297
Foreign Patents Issued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330
* Patent activity related to inventions managed by IAS and by the campus offices. See
Exhibit 32 for LBNL’s patent activity.
** 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.
LBNL’s patent activity is shown in Exhibit 32. U.S. patent filings for the
fiscal year ending Sept. 30, 2010, increased by 0.7% over FY09, from
141 to 142. These included 106 first filings, of which 56 were provisional
filings; and 36 secondary filings, of which 17 were provisional filings.
A total of 27 U.S. patents were issued during the fiscal year ending
Sept. 30, 2010 for LBNL inventions, as compared to 26 U.S. patents
issued for LBNL inventions in FY09.
At the end of FY10, there were 3,802 active U.S. and 3,659 active foreign
patents in the systemwide portfolio for its campus inventions (Exhibit 7).
For the first time since the end of FY05, the total number of U.S.-issued
patents exceeded the total number of foreign-issued patents. The
number of U.S. patents in each campus portfolio is presented in Exhibit 8.
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 7: Total Active Patents*
4000
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
21.7% (from 244 to 297) in FY10 as compared to FY09.
3500
3000
3,757
3,692
3,316
3,425
3,546
3,597
3,617
3,696
3,802
3,659
2500
Exhibit 6: U.S. Patents Issued*
2000
1500
350
1000
331
300
297
250
500
270
224
200
0
244
FY06
U.S.
150
100
FY07
FY08
FY09
FY10
Foreign
* Total active patents at year end related to inventions managed by IAS and by the
campus offices.
50
0
FY06
FY07
FY08
FY09
FY10
* U.S. patents issued related to inventions managed by IAS and by the campus offices. See
Exhibit 28 for LBNL’s U.S. patents issued.
7
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Licensing and Related Activity
Exhibit 8: Total Active U.S. Patents by Campus*
As of June 30, 2010
UCB
611
UCD
419
UCI
302
UCLA
590
UCM
0
UCR
88
UCSB
361
UCSC
77
UCSD
706
UCSF
711
* Patents associated with inventors from more than one campus are reported multiple
times in this exhibit.
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.
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 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.
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.
For utility inventions, certain other shorter-term agreements sometimes
are 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 FY10, UC entered into
604 secrecy agreements for its campus inventions (LBNL entered into
184 secrecy agreements during its fiscal year). 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.
8
Exhibit 9 shows licensing activity for campus inventions in FY10. With
regard to agreements, UC entered into 408 new licenses and related
technology transfer agreements, including 142 utility licenses, 69 plant
licenses, 41 options, and 156 letters of intent. During its fiscal year,
LBNL entered into 6 utility license agreements and 4 option agreements
(Exhibit 32).
Exhibit 9: Licensing Activity*
Exhibit 10: Utility Agreements Issued*
400
358
367
37%
37%
300
357
42%
55%
Year Ending June 30, 2010
339
49%
46%
8%
12%
43%
42%
FY09
FY10
6%
8%
200
340
57%
13%
45%
100
Agreements Issued
Letters of Intent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156
Options . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 69
0
* Licensing activity related to inventions managed by IAS and by the campus offices. See
Exhibit 32 for LBNL’s licensing activity.
Overall, the number of utility agreements (utility licenses, options
and letters of intent) issued in FY10 was almost the same as in FY09,
decreasing from 340 to 339 (Exhibit 10). The FY10 number remains
above the 10-year running average of 329. Although the total number
of utility agreements issued in FY10 remained essentially unchanged
from that of FY09, the proportion of options among these utility
agreements increased from 8% in FY09 to 12% in FY10, while the
other categories of utility agreements declined. As shown in Exhibit 11,
the number of utility agreements relative to research expenditures has
declined in recent years, currently at around 0.71 utility agreements
per $10 million in research expenditures.
FY07
FY08
Letters of Intent
Total Active Licenses (year end)
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1,371
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 612
FY06
Options
Utility Licenses
10-year running average of all Utility Agreements**
* Utility licenses, options, and letters of intent issued during the fiscal year related to
inventions managed by IAS and by the campus offices.
** Sum of utility licenses, options, and letters of intent issued during the fiscal year and the
nine preceding fiscal years, divided by 10.
Exhibit 11: Utility Agreements Issued Per $10 Million
Research Expenditures*
1.0
0.8
0.91
0.88
0.82
0.75
0.6
0.71
0.4
0.2
0.0
FY06
FY07
FY08
FY09
FY10
* 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.
9
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Exhibit 12 shows the five-year trend in the number of utility licenses
issued, with the 142 utility licenses issued in FY10 representing a 4.1%
decrease from FY09. Of these 142 utility licenses, 67 were exclusive
licenses and 75 were non-exclusive. The proportion of non-exclusive
utility licenses among all utility licenses issued increased from 40% in
FY09 to 53% in FY10.
Exhibits 13 and 14 show the five-year trend in the total number of active
utility and plant licenses for campus inventions. Reversing a previous
trend, the total number of active utility licenses increased 2.6% to 1,371
at the close of FY10 as compared to the close of FY09. The total number
of active plant licenses continued their upward trend, increasing 2.7% to
612 at the close of FY10 as compared to the close of FY09.
Exhibit 12: Utility Licenses Issued*
Exhibit 13: Total Active Utility Licenses*
250
1400
197
200
50%
209
45%
150
100
50%
159
148
47%
40%
53%
FY06
142
FY07
FY08
1,359
1,336
1,371
FY08
FY09
FY10
1,200
800
53%
600
400
60%
47%
FY09
1,315
1000
55%
50
0
1200
200
0
FY10
FY06
FY07
Non-exclusive Utility Licenses
Exclusive Utility Licenses
* Utility licenses issued during the fiscal year related to inventions managed by IAS and by
the campus offices.
As of June 30, 2010, the systemwide portfolio (excluding LBNL) totaled
1,983 active licenses, an increase of 2.6% over the total at the close
of FY09. The LBNL portfolio totaled 60 licenses as of Sept. 30, 2010.
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.
* Total utility licenses at year end related to inventions managed by IAS and by the
campus offices.
Exhibit 14: Total Active Plant Licenses*
600
500
596
612
FY09
FY10
554
550
504
400
300
200
100
0
FY06
10
FY07
FY08
* Total plant licenses at year end related to inventions managed by IAS and by the
campus offices.
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 460 active plant licenses at the close of
FY10 and UC Riverside had 170.
Exhibit 15: Total Active Utility Licenses by Campus*
Year Ending June 30, 2010
UCB
280
UCD
108
UCI
84
UCLA
220
UCM
3
UCR
32
UCSB
47
UCSC
11
UCSD
287
UCSF
347
Although a new invention typically is 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 FY10, new or amended
utility licenses covered 316 campus inventions, while new or amended
options covered 102 campus inventions (Exhibit 16).
Exhibit 16: Inventions Covered Under Agreements*
Year Ending June 30, 2010
Number of Inventions Licensed/Optioned
Letters of Intent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238
Options . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102
Utility Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 316
Plant Licenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
* Inventions managed by IAS and by the campus offices that were licensed or optioned
during the fiscal year.
* Licenses associated with inventors from more than one campus are reported multiple
times in this exhibit.
11
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
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 reached 2,648, an increase of 2.2%
over the close of FY09. Exhibit 18 shows the campus distribution of
these covered inventions.
Exhibit 17: Total Inventions Covered Under Utility Agreements*
2500
2,591
2,648
FY09
FY10
2,431
2000
2,234
2,026
1500
1000
500
0
FY06
FY07
FY08
* 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.
Exhibit 18: Total Inventions Covered Under
Utility Agreements by Campus*
As of June 30, 2010
12
UCB
331
UCD
218
UCI
219
UCLA
522
UCM
20
UCR
72
UCSB
310
UCSC
26
UCSD
483
UCSF
484
* 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.
Startup Company Formation
Exhibit 19: Startup Companies Formed*
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. 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
80
of all biotech firms in the U.S. are located within 35 miles of a UC campus.*
0
Since 1976, transfer of UC inventions has played a role in the founding
of over 500 startup companies. Exhibit 19 shows recent startup company
formation involving UC inventions, with 75 UC startup companies formed
in FY10, an increase of 53.1% over FY09. Exhibit 20 shows FY10 startup
company formation by campus, with UC Los Angeles accounting for
over a third of FY10’s activity.
75
60
40
42
41
FY06
FY07
48
49
FY08
FY09**
20
FY10
* 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.
** 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.
Exhibit 20: Startup Companies Formed by Campus*
Year Ending June 30, 2010
UCB
6
UCD
9
UCI
7
UCLA
27
UCM
0
UCR
2
UCSB
6
UCSC
0
UCSD
13
UCSF
7
* Year of startup company formation based on the execution date of the first license,
option, or letter agreement.
* 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.
13
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
TECHNOLOGY TRANSFER 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 $125.3 million in FY10 (Exhibit 21). This FY10 total licensing
income represents a 3.2% increase over FY09 total licensing income
if one excludes $4.6 million received in FY09 for up-front payments in
settlement of litigation and for settlement-related reimbursements of
legal expenses.
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. Reimbursements, the second
component of total licensing income, represent the recovery of patent
and legal expenses.
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 FDAapproved product into the marketplace is a significant event. In April
of 2010, a UC San Francisco invention achieved this status with a UC
startup company’s introduction of a capsaicin patch for the topical
treatment of neuropathic pain. This invention also ranked among the
top earning UC inventions of FY10 as noted in the next section.
Exhibit 21: Total Licensing Income*
(Millions)
140
$128.4
120
$110.0
100
16.5
80
93.5
$116.9
24.2
19.3
97.6
104.2
$121.4
22.7
98.7
$125.3
20.8
104.4
60
40
20
0
FY06**
FY07
FY08***
FY09****
FY10
Patent/legal reimbursements
Royalty and fee income
* Total licensing income consists of two components: royalty and fee income, and patent/
legal reimbursements. This exhibit shows total licensing income for inventions managed
by IAS and by the campus offices. The totals reported here for each fiscal year have been
rounded. See Exhibit 33 for LBNL’s royalty and fee income.
** The total licensing income reported for FY06 ($110 million) does not include an up-front
payment of $100 million from the settlement of litigation.
*** 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.
**** 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.
14
Exhibit 22 shows the amount each campus contributed to FY10 total
licensing income. While most campuses experienced declines, UC
Los Angeles’s contribution to total licensing income rose 12.0% from
$29.2 million in FY09 to $32.7 million in FY10. Other campuses with
increases from FY09 to FY10 were UC Merced ($63,000 to $132,000)
and UC Riverside ($2.5 million to $3.6 million).
Exhibit 22: Total Licensing Income by Campus*
Year Ending June 30, 2010
(Thousands)
UCB
$6,778
UCD
$10,399
UCI
$5,261
UCLA
$32,689
UCM
$132
UCR
$3,596
UCSB
$4,309
UCSC
$286
UCSD
$25,371
UCSF
$29,134
Other**
$7,304
* Total licensing income consists of two components: royalty and fee income, and patent/
legal reimbursements.
** 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.
15
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Royalty and Fee Income
Royalty and fee income for campus inventions in the fiscal year ending
June 30, 2010, was $104.4 million. This income derived from 1,811
inventions. As compared to FY09, royalty and fee income (excluding
$4.4 million for up-front payments in settlement of litigation that were
received in FY09) increased by $5.7 million.
Exhibit 23: UC Top-Earning Inventions*
Year Ending June 30, 2010
(Thousands)
Invention (Campus, Year Disclosed)
Royalty &
Fee Income
Hepatitis-B Vaccine (SF, 1979 & 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $12,179
Treatment of Intracranial Aneurysms (LA, 1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $10,318
Interstitial Cystitis Therapy (SD, 1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $7,813
In FY10, $1,091,932 was realized from the sale of equity previously
acquired under nine license agreements, an increase of 78.2% over the
equity income realized in FY09. Because of these transactions and
the approval of 14 licenses in FY10 that included equity as partial
consideration, at the end of the fiscal year UC held equity related to
technology transfer activities in 113 companies.
Royalty and fee income from the top five commercialized UC inventions
(i.e., inventions that had reached the marketplace) contributed
$43.2 million in FY10, accounting for 41.4% of total royalty and fee
income (Exhibit 23). The top 25 inventions collectively accounted
for $71.1 million or 68.1% of total royalties and fees. An invention
appearing on this list for the first time is Topical Capsaicin for Pain from
UC San Francisco.
For the fiscal year ending Sept. 30, 2010, LBNL-managed inventions
generated $1.9 million in royalty and fee income for licenses that are
under the patent policy, a decrease of 29.0% over the prior year.
Copyright income for LBNL decreased 19.0% from $851,000 to
$689,000 as compared with FY09 (Exhibit 33).
EGF Receptor Antibodies (SD, 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $6,492
Chromosome Painting (LLNL, 1985, 1989 & 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $6,365
Subtotal (Top 5 Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $43,167
Bovine Growth Hormone (SF, 1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $5,015
Biodegradable Implant Coils (LA, 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $3,035
Firefly Luciferase (SD, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,472
Camarosa Strawberry (DA, 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $2,243
Tango Mandarin (RV, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .$1,846
Albion Strawberry (DA, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,506
Dynamic Skin Cooling Device (IR, 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,453
Energy Transfer Primers (BK, 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,361
Topical Capsaicin for Pain (SF, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,217
Detection of Mycoplasma (IR, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $1,041
Aids for Learning Disabled (SF, 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $861
Ventana Strawberry (DA, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $834
Optical Network Switch (DA, 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $723
Vesicle Loading Method (LBNL, 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $700
Genomic Microarrays (SF, 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $686
Comparative Genomic Hybridization (SF, 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $686
Yeast Expression Vector (SF, 1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $616
Magnetic Resonance Imaging (SF, 1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $598
Feline AIDS Virus Diagnostic (DA, 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $539
Universal Oligonucleotide Spacer (BK, 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $510
Subtotal (Top 25 Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $71,109
Total (All Inventions) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $104,373
% of Total from Top 5 Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.4%
% of Total from Top 25 Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68.1%
16
* This list is limited to revenue-generating inventions that have been commercialized. The total
income from royalties and fees shown here excludes payments from settlement of litigation.
** Because of a tie for 25th place, a total of 26 inventions are listed here. For purposes of
calculating “Top 25” total income, only income from one of the 25th place inventions
is included.
Payments to Joint Holders
Income Associated With Patent/Legal Expenses
When an invention results from collaboration between UC and non-UC
researchers, multiple entities may become joint holders of the inventionrelated 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 FY10, 272 of 1,565
new campus disclosures (17.4%) included non-UC inventors and 68 new
interinstitutional agreements were signed, a 19.0% decrease from FY09.
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 FY10, UC received $20.8 million in patent/legal
expense reimbursements related to campus inventions. This is a decrease
of 8.3% from reimbursements received for such expenses in FY09
(excluding $0.2 million reimbursements related to legal settlements
In FY10, $5.6 million was redistributed to other entities for campus
inventions covered by interinstitutional and other income-sharing
agreements. For financial reporting purposes, these monies are treated
as an offset to income. As shown in Exhibit 24, these redistributions have
decreased from FY09 to FY10.
received in FY09).
Exhibit 24: Payments to Joint Holders*
(Millions)
$8
6
$5.6
$6.1
$6.2
FY08
FY09
$5.6
$4.3
4
2
0
FY06**
FY07***
FY10
* Payments to joint-holders related to inventions managed by IAS and by the campus offices.
** The payments to joint holders reported for FY06 ($5.6 million) do not include payments of
$7.9 million for the settlement of litigation.
*** The payments to joint holders reported for FY07 ($4.3 million) do not include payments of
$0.5 million for the settlement of litigation.
17
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
TECHNOLOGY TRANSFER EXPENSES
Legal and Other Direct Expenses
Gross legal and other direct expenses totaled $26.9 million in FY10 for
campus inventions (Exhibit 25). 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.
The extent of reimbursement of legal and other direct expenses is a
negotiated term of a license agreement. In FY10, reimbursements of
legal expenses for campus inventions totaled $20.8 million, resulting
in net legal and other direct expenses of $6.0 million (Exhibit 25).
Exhibit 25: Legal Expenses*
(Millions)
$40
$35.1
30
$32.8
$32.4
$26.9
$26.9
20
$15.8
$10.4
$8.7
10
$9.7
$6.0
0
FY06**
FY07
FY08***
FY09****
FY10
Gross legal and other direct expenses
Net legal and other direct expenses
* Legal and other direct expenses related to inventions managed by IAS and by the
campus offices.
** The gross and net legal and other direct expenses reported for FY06 do not include
$16.2 million in legal expenses for the settlement of litigation.
*** 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.
**** 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.
18
Exhibit 26 provides a breakdown of FY10 gross legal and other direct
expenses by different categories of expenditure. Patent prosecution
and maintenance accounted for $26.1 million of gross legal and other
direct expenditures (97.1%), while interference and infringement actions
accounted for $0.5 million (1.7%), legal defense and other expenditures
accounted for $0.3 million (1.2%). As was the case in FY09, patent
prosecution activities accounted for a relatively large percentage
of gross legal and other direct expenditures in FY10, reflecting the
relatively greater reductions in expenditures that have occurred in
other expenditure categories since FY07.
Exhibit 26: Gross Legal Expenses by Category*
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.
Year Ending June 30, 2010
Interference &
Infringement
1.7%
Legal Defense
& Other
1.2%
Patent
Prosecution &
Maintenance
97.1%
* Gross legal and other direct expenses related to inventions managed by IAS and by the
campus offices. The “Net Legal Expenses” exhibit appearing in prior annual reports is
not shown this year due to significant net credits against expenses for the “Patent
Prosecution & Maintenance” and “Other” categories, which cannot be displayed on a
pie chart of expenses.
19
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
INCOME DISTRIBUTIONS
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 FY10,
income distributions related to campus inventions totaled $92.8 million,
distributed as shown in Exhibit 27.
Exhibit 27: Income Distributions*
(Millions)
100
80
$89.4
$77.6
33.0
$77.0
38.2
30.0
$92.8
$82.8
38.8
General Fund Share
31.3
35.6
12.6
10.0
35.2
38.8
13.6
10.7
38.9
20
0
1.4
0.7
FY06**
FY07
2.5
FY08***
3.2
FY09****
12.1
3.0
Inventor shares
Research allocation share
General fund share
* Income distributions related to inventions managed by IAS and by the campus offices. The
totals reported here for each fiscal year have been rounded.
** 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.
*** The distributions reported for FY08 do not include a general fund distribution of $6.0 million,
inventor share distributions of $12.9 million, nor income after mandatory distributions of
$18.0 million related to the settlement of litigation.
**** The distributions reported for FY09 do not include a general fund distribution of $0.8 million,
inventor share distributions of $2.3 million, nor income after mandatory distributions of
$2.4 million related to the settlement of litigation.
20
The portion of UC’s technology transfer income allocated to the UC
General Fund totaled $12.1 million in FY10 (Exhibit 27). 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.
FY10
Income after mandatory distributions
UC Patent Policy grants inventors the right to receive a portion of net
income accruing to individual inventions. In FY10, 2,092 inventors
received a total of $38.9 million for IAS- and campus-managed
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 FY10 were calculated based on invention
financial activity through June 30, 2009. Trends related to the amount
of inventor share payments are reflected in Exhibit 27.
30.2
60
40
Inventor Shares
Research Allocation Share
The 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 for campus-related inventions, which is computed
based on inventions disclosed on or after Oct. 1, 1997, totaled $3.0 million
in FY10 (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
$38.8 million in FY10 (Exhibit 27).
21
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Exhibit 28: Systemwide Technology Transfer Activity FY06 – FY10*
Fiscal Years Ending June 30
Fiscal Year Comparisons
FY06
FY07
FY08
FY09
FY10
% CHANGE
(FY09-FY10)
Inventions
Inventions Disclosed
Total Active Inventions (year end)
1,308
7,513
1,411
8,272
1,497
8,953
1,482
9,343
1,565
9,883
5.6%
5.8%
Patent Prosecution
U.S. Applications Filed
First Filings
Secondary Filings
Total
U.S. Patents Issued
Total Active U.S. Patents (year end)
714
470
1,184
270
3,316
644
564
1,208
331
3,425
623
530
1,153
224
3,546
651
524
1,175
244
3,617
643
540
1,183
297
3,802
-1.2%
3.1%
0.7%
21.7%
5.1%
First Foreign Filings
Total Active Foreign Patents (year end)
361
3,692
315
3,757
276
3,597
277
3,696
272
3,659
-1.8%
-1.0%
132
29
197
115
136
22
209
73
151
47
159
101
166
26
148
63
156
41
142
69
-6.0%
57.7%
-4.1%
9.5%
61
1,200
550
69
1,315
504
91
1,359
554
102
1,336
596
113
1,371
612
10.8%
2.6%
2.7%
258
68
329
36
253
59
404
37
223
157
369
24
290
80
356
38
238
102
316
20
-17.9%
27.5%
-11.2%
-47.4%
402
137
1,589
94
409
156
1,772
95
418
242
1,910
98
493
265
2,001
105
469
288
2,039
114
-4.9%
8.7%
1.9%
8.6%
42
41
48
75
53.1%
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 Intent**
Inventions Optioned**
Inventions Licensed (utility)**
Inventions Licensed (plant)
Startup Companies
Startup Companies Formed
49***
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.
* 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.
** 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.
*** The number of start-up 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.
22
Exhibit 29: Systemwide Financial Activity FY06 – FY10*
Fiscal Years Ending June 30
(Thousands)
Fiscal Year Comparisons
FY06
FY07
FY08
FY09
FY10
% CHANGE
(FY09-FY10)
Income from Royalties and Fees
Less: Payment to Joint Holders
Adjusted Gross Income (A)
$193,500
(13,464)
180,036
$97,594
(4,798)
92,796
$146,314
(6,114)
140,200
$103,105
(6,217)
96,888
$104,435
(5,641)
98,794
1.3%
-9.3%
2.0%
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(43,136)
16,545
(26,951)
(35,087)
19,292
(15,795)
(38,602)
24,668
(13,934)
(31,486)
22,946
(8,540)
(26,866)
20,825
(6,040)
-14.7%
-9.2%
-29.3%
Income Available for Distribution (A+B)
153,445
77,001
126,226
88,347
92,753
5.0%
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)
60,471
722
23,078
69,174
153,445
35,562
1,380
10,045
30,014
77,001
48,087
2,475
19,545
56,160
126,226
41,106
3,160
11,499**
32,583**
88,347**
38,876
2,984
12,087
38,806
92,753
-5.4%
-5.6%
5.1%
19.1%
5.0%
Exhibit 29 reports only 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.
* 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. The totals reported here for each fiscal year have been rounded.
** These figures have been corrected from those reported in the FY09 Annual Report.
23
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Exhibit 30: FY10 Campus Technology Transfer Activity*
Year Ending June 30, 2010
UCB
UCD
UCI
UCLA
UCM
UCR
UCSB
UCSC
UCSD
UCSF
142
1,173
245
1,017
125
803
379
1,837
22
60
54
288
71
631
31
163
367
2,660
152
1,416
Patent Prosecution
U.S. Applications Filed
First Filings
Secondary Filings
Total
U.S. Patents Issued
Total Active U.S. Patents (year end)
64
65
129
37
611
59
42
101
29
419
44
41
85
32
302
153
164
317
47
590
22
18
40
0
0
29
36
65
4
88
54
54
108
39
361
19
12
31
6
77
162
138
300
73
706
48
34
82
36
711
First Foreign Filings
Total Active Foreign Patents (year end)
24
476
22
403
14
360
78
604
9
0
17
139
26
61
7
21
46
808
34
835
15
6
11
0
18
7
18
42
10
6
12
0
50
17
35
0
0
0
0
0
1
2
4
27
21
2
3
0
1
0
0
0
20
0
36
0
24
2
27
0
21
280
1
17
108
460
15
84
0
23
220
1
1
3
0
9
32
170
18
47
0
1
11
0
3
287
0
9
347
0
27
6
16
0
19
6
64
13
16
15
19
0
86
36
80
0
0
0
6
0
1
2
3
7
40
34
3
0
1
0
0
0
31
0
89
0
23
3
43
0
88
27
238
0
41
17
166
88
43
19
160
0
91
57
385
0
0
0
20
0
17
19
46
29
95
134
139
0
2
2
24
0
29
2
462
0
66
14
426
0
6
9
7
27
0
2
6
0
13
7
Inventions
Inventions Disclosed
Total Active Inventions (year end)
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 Intent**
Inventions Optioned**
Inventions Licensed (utility)**
Inventions Licensed (plant)
Startup Companies
Startup Companies Formed
Exhibit 30 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.
24
* 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.
** 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.
Exhibit 31: FY10 Campus Financial Activity*
Year Ending June 30, 2010
(Thousands)
UCB
UCD
UCI
UCLA
UCM
UCR
UCSB
UCSC
UCSD
UCSF
Income from Royalties and Fees
Less: Payment to Joint Holders
Adjusted Gross Income (A)
$4,344
(63)
4,281
$9,048
(23)
9,025
$3,998
(51)
3,948
$27,485
(83)
27,402
$33
0
33
$3,160
(8)
3,152
$2,221
(666)
1,555
$153
0
153
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(3,065)
2,434
(631)
(2,136)
1,351
(784)
(1,985)
1,262
(723)
(6,428)
5,204
(1,224)
(365)
99
(266)
(1,204)
436
(769)
(2,485)
2,088
(397)
(238)
134
(104)
(4,833)
4,403
(429)
(3,501)
3,179
(323)
Income Available for Distribution (A+B)
3,649
8,241
3,225
26,178
(233)
2,384
1,158
49
20,080
21,344
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)
1,482
85
542
1,541
3,649
3,628
247
1,153
3,212
8,241
1,818
125
352
931
3,225
9,909
167
4,067
12,035
26,178
11
5
(61)
(188)
(233)
774
14
402
1,194
2,384
972
227
46
(87)
1,158
22
4
7
16
49
9,104
1,934
2,744
6,298
20,080
9,943
177
2,850
8,374
21,344
$20,968 $25,955
(458) (4,289)
20,510 21,666
Exhibit 31 reports only 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.
* 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. The totals reported here for
each campus have been rounded.
25
TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION
Exhibit 32: LBNL Technology Transfer Activity FY06 – FY10
Fiscal Years Ending Sept. 30
Fiscal Year Comparisons
Inventions and Patent Prosecution
Inventions Disclosed
FY06
FY07
FY08
FY09
FY10
% CHANGE
(FY09-FY10)
80
126
130
109
127
16.5%
56
2
0
16
74
77
0
14
44
135
58
3
11
69
141
55
3
17
66
141
-5.2%
0%
54.5%
-4.3%
0%
U.S. Applications Filed
First Filings—Provisional
First Filings—Regular
Secondary Filings—Provisional
Secondary Filings—Regular
Total
U.S. Patents Issued
35
25
18
26
27
3.8%
First Foreign Filings
21
29
58
14
47
235.7%
Licensing
Agreements Issued
Secrecy
Option
License
192
2
8
201
2
3
202
9
8
160
7
10
184
4
6
15.0%
-42.9%
-40%
5
58
8
61
19
61
13
63
5
60
-61.5%
-4.8%
Total Active Agreements (year end)
Option
License
26
Exhibit 33: LBNL Financial Activity FY06–FY10*
Fiscal Years Ending Sept. 30
(Thousands)
Fiscal Year Comparisons
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
FY06
FY07
FY08
FY09
FY10
% CHANGE
(FY09-FY10)
$2,267
635
2,902
$2,502
716
3,218
$2,702
512
3,214
$2,700
851
3,551
$1,918
689
2,607
-29.0%
-19.0%
-26.6%
848
139
987
796
169
965
1,021
93
1,115
1,057
267
1,324
3.5%
187.1%
18.7
N.A.**
N.A.**
N.A.**
* In addition to income reported in this table, the IAS-managed portfolio of DOE Laboratory inventions collectively generated $7,065,179 in FY10 royalty and fee income, including $699,929 for
LBNL inventions. The totals reported here for each fiscal year have been rounded.
** Starting in FY08, payment of Inventor/Author Shares is deferred until the following year to match the campus inventor share payment schedule.
27
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)
www.ucop.edu/research/ias/
UC Berkeley: Office of Intellectual Property
& Industry Research Alliances (IPIRA)
ipira.berkeley.edu
UC Davis: UC Davis InnovationAccess
innovationaccess.ucdavis.edu
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)
research.ucmerced.edu
UC Riverside: Office of Technology Commercialization (OTC)
ora.ucr.edu/ip/
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
and Intellectual Property Management (TTIPM)
www.lbl.gov/Tech-Transfer/
28
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