UC»T e c h n o l o g y»Transf er
Annual report 2008
B e rkeley
D av is
I r v in e
L o s An gele s
Me rc ed
R i v erside
S a n D iego
S a n Fra ncisco
S a nta B a rbara
S a nta Cruz
L awrenc e Berkeley
Table of Contents
Technology Transfer Advisory Committee
Message from the Director
2
3
Technology Transfer Activity and Financial Information
Introduction
Part 1: The Campus Portfolios
Technology Transfer Activity
Invention Reporting
Patent Activity
Licensing and Related Activity
Technology Transfer Income
Total Income from Licensing
Royalty and Fee Income
Payments to Joint Holders
Income Associated with Patent/Legal Expenses
Technology Transfer Direct Expenses
Legal and Other Direct Expenses
Income Distributions
Inventor Shares
General Fund Share
Research Allocation Share
Income After Mandatory Distributions
4
4
4
4
6
8
10
10
10
11
11
12
12
13
13
13
13
13
Part 2: The DOE Laboratory-Managed Portfolios
Invention Disclosure, Patenting, and Licensing Activity
Financial Results
18
18
19
Technology Transfer Organization at UC
UC Technology Transfer on the Web
20
20
1
2008 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, Academic and Health Affairs, and meets periodically to advise the UC
President on technology transfer policy and guide the direction of the overall program.
Kathryn A. Atchison
Vice Provost of Intellectual Property & Industrial Relations, UCLA
Steven V.W. Beckwith
Vice President for Research and Graduate Studies, UCOP
Alan B. Bennett
Associate Vice Chancellor for Research, UCD
Carol Berman
Contracts & Grants Director, DANR, UCOP
Lynn M. Boland
Deputy to the Executive Vice President, Business Operations, UCOP
Beth Burnside
Vice Chancellor for Research, UCB
Arthur B. Ellis
Vice Chancellor for Research, UCSD
Sherylle Mills Englander
Director, Office of Technology & Industrial Alliances, UCSB
Cheryl A. Fragiadakis
Department Head, Technology Transfer, LBNL
Warren M. Gold
Professor, Medicine, UCSF
Theodore Groves
Professor, Economics, UCSD
W. Rory Hume
Provost & Executive Vice President, Academic & Health Affairs, UCOP
Katherine N. Lapp
Executive Vice President, Business Operations, UCOP
Charles F. Louis
Vice Chancellor for Research, UCR
Bruce H. Margon
Vice Chancellor of Research, UCSC
Richard Miller
Associate Vice Chancellor for Research, UCM
Norman J. Oppenheimer
Professor, Pharmaceutical Chemistry, UCSF
David G. Schetter
Assistant Vice Chancellor, Research & Technology Alliances, UCI
Hans Schöllhammer
Professor, Global Economics & Management, UCLA
P. Martin Simpson
University Counsel, UCOP
Julie M. Stein
Acting Executive Director, Industry-University Cooperative Research Program, UCOP
William T. Tucker
Executive Director, Research Administration & Technology Transfer, UCOP
A. Eugene Washington
Executive Vice Chancellor & Provost, UCSF
Fiscal Year 2008
Office of the President
Executive Vice President, Academic and Health Affairs
Office of Technology Transfer
1111 Franklin Street, 5th Floor
Oakland, CA 94607-5200
2
Message from the Director
The past fiscal year saw the start of a major transformation in the relationship
of the Office of Technology Transfer (OTT) to other units within the UC
Office of the President (UCOP). The integration of OTT into the newly created
Office of Research and Graduate Studies (ORGS) under Vice President Steven
Beckwith brought OTT together with other groups at UCOP that support
the University’s research enterprise. ORGS is in the process of evaluating all
these functions to understand and make recommendations on how to create
a highly functioning organization that provides the best possible structure to
support campus research programs. The overarching goal of this effort in the
area of technology transfer is to create effective university-industry interfaces
with appropriate accountability measures and to better inform the public
about the impact of UC’s research programs on society and on the local, state and national economy. We
believe we can achieve this goal by more closely integrating the technology transfer function (with its core
licensing and patenting functions at campus-based offices, supported by OTT), with industry-sponsored
research, graduate education, and collaborative research programs and institutes.
Making connections to industry and the venture capital/angel investor community is essential to
effective technology transfer. Throughout the past year OTT and the campus offices have continued
their successful efforts to network with industry and the venture capital/angel investor community. OTT
hosted a systemwide technology transfer forum featuring clean technology in San Francisco highlighting
the Canada-California Strategic Innovation Partnership (CCSIP) with participation by the Canadian
government and Canadian institutions. The technology transfer program also had a system-wide presence
at the 2008 BIO International Convention in San Diego.
The systemwide technology transfer program continued to perform well in FY08, with our portfolios of
inventions, issued U.S. patents, license agreements, and licensing income increasing. By the end of FY08,
UC’s portfolio of active inventions increased by 8.2% to 8,953 with the portfolio of US patents owned by
UC increasing by 3.5% to 3,546. The total number of utility license agreements increased 3.3% to 1,359
and the total number of plant license agreements increased 9.9% to 554. Total licensing income (which
excludes income from settling disputes) increased 9.8% to $128.4 million in FY08, continuing a steady
trend of increases since FY03.
This past year saw legislation in Congress directed at patent reform. UC was an active participant in
discussions with the House and Senate members and staff. The potential for changes in the US patent
system, together with the difficult global economic environment will undoubtedly impact UC’s technology
transfer program, so we must remain alert to these impacts and adjust, where necessary, to continue to
fulfill our mission to create pubic benefit from the University’s research endeavors.
Sincerely,
William Tucker
Executive Director,
Research Administration and Technology Transfer
3
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
Introduction
Activity and financial information in this Annual
Report is divided into two parts. The UC Campus Portfolio
section (pp. 4-17) presents results related to the patenting
and licensing of inventions for the ten-campus system
for the fiscal year ending June 30, 2008. This portfolio
of inventions was managed by the Office of Technology
Transfer (OTT) within the Office of the President (UCOP)
and by nine campus-based licensing offices. These include
the Office of Technology Licensing at UC Berkeley,
InnovationAccess at UC Davis, the Office of Technology
Alliances at UC Irvine, the Office of Intellectual Property
and Industry Sponsored Research at UC Los Angeles, the
Office of Technology Commercialization at UC Riverside,
Technology Transfer Office at UC San Diego, the Office of
Technology Management at UC San Francisco, the Office
of Technology and Industry Alliances at UC Santa Barbara,
and the Office for Management of Intellectual Properties at
UC Santa Cruz.
The DOE Laboratory-managed Portfolio section (pp.
18-19) provides activity and financial information related
to technology transfer at the Lawrence Berkeley National
Laboratory (LBNL), a US Department of Energy (DOE)
Laboratory that is managed by the University. Information
on LBNL is reported separately because certain aspects
of technology transfer are different at LBNL as compared
with the rest of the University. Among these differences is
the reporting period which covers the fiscal year ending
September 30, 2008.
4
Part 1: The Campus Portfolios
TECHNOLOGY TRANSFER ACTIVITY
Invention ReportinG
During the twelve-month period ending June 30, 2008,
1,497 inventions were disclosed by faculty and researchers
at the ten UC campuses; an increase of 6.1% over the
number of inventions reported in FY07 (Exhibit 1).
Exhibit 1
INVENTIONS REPORTED
1500
1,497
1400
1,411
1300
1200
1100
1,304
1,308
FY05
FY06
1,196
1000
900
800
FY04
FY07
FY08
Much of this increase is accounted for by UC San
Francisco, where newly reported inventions increased
by 58 from 142 in FY07 to 200 in FY08; and by UC Los
Angeles, with an increase of 47 inventions (from 267 to
314). Other campuses with large gains over this period
include UC Berkeley, with an increase of 22 inventions
(from 133 to 155), and UC Riverside, also with an increase
of 22 inventions (from 31 to 53). The campus distribution of
newly reported inventions for FY08 is shown in Exhibit 2.
Exhibit 2
INVENTION DISCLOSURES BY CAMPUS*
Year Ended June 30, 2008
UCSF 200
UCB 155
As of June 30, 2008, the systemwide invention portfolio
was comprised of 8,953 active inventions. The size of each
campus invention portfolio is indicated in the exhibit
below.
Exhibit 3
CAMPUS INVENTION PORTFOLIOS*
UCD 181
UCI 159
UCLA 314
UCM 12
UCR 53
UCSB 103
UCSC 24
UCSD 330
*Inventions having inventors from more than one campus are counted multiple
times, once for each campus with an inventor.
Year Ended June 30, 2008
UCB
1,107
UCD
918
UCI
753
UCLA
1,560
UCM
25
UCR
245
UCSB
611
UCSC
140
UCSD
2,355
UCSF
1,422
*Inventions associated with inventors from more than one campus are reported
multiple times in this exhibit.
5
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
Patent Activity
The University of California has received more US
patents than any other university in the world. A patent
is a form of intellectual property protection granted by
the US or a foreign government that gives the patent
holder the right to exclude others from making, using, or
selling the patented invention for a defined period of time,
generally twenty years from the date the patent application
is first filed. Both US and foreign patent rights often must
be pursued for an invention in order to maximize the
likelihood of successful commercialization.
Exhibit 4
PATENT ACTIVITY*
filings are necessary in order to cover all aspects of the
invention and may include the following types of filings:
divisional applications and continuation applications where
new matter is added. Often several years will elapse between
a filing and the issuance of a patent by the patent office.
Systemwide patent activity for FY08 is presented
in Exhibit 4. The number of first filings declined 3.3%
compared to 644 in FY07, while the number of secondary
filings declined 6.0% from 564 in FY07. Foreign patents
issued declined by 7.3% from 381 in FY07.
Exhibit 5 shows the number of US patents issued to
the University in the past five years, with the number of US
patents issued declining 32.3% (from 331 to 224) in FY08 as
compared to FY07.
Year Ended June 30, 2008
Exhibit 5
U.S. Applications Filed
First Filings – Provisional
First Filings – Regular
Secondary Filings – Provisional
Secondary Filings – Regular
Total
Subtotal – First Filings
Subtotal – Secondary Filings
Subtotal – Provisional Filings
Subtotal – Regular Filings
US PATENTS ISSUED TO UC
576
47
64
466
1,153
623
530
640
513
First Foreign Filings*
276
US Patents Issued
224
Foreign Patents Issued
353
*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.
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 US takes
the form of a provisional application, a type of filing which
preserves US 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. Secondary
6
350
300
250
331
310
270
270
224
200
150
100
50
0
FY04
FY05
FY06
FY07
FY08
At the end of FY08, the systemwide portfolio contained
3,546 US and 3,597 foreign patents (Exhibit 6). The total
number of foreign-filed patents continues to exceed the
total number of US-filed patents, having first overtaken the
total number of US-filed patents in FY06. The number of
US patents in each campus portfolio is presented in Exhibit
7. Because of the substantial lag time between invention
disclosure/filing and patent issuance, UC Merced, which
received its first invention disclosure in FY06, has not yet
had a patent issued for its inventions.
Exhibit 6
TOTAL UC PATENT PORTFOLIO
4000
3500
3000
2500
3,757
3,692
3,275
3,024
3,168
3,316
3,425
3,546 3,597
Exhibit 7
CAMPUS US PATENT PORTFOLIOS*
Year Ended June 30, 2008
UCB
562
UCD
409
UCI
250
UCLA
536
UCM
0
UCR
79
UCSB
316
UCSC
66
UCSD
573
UCSF
770
2,837
2000
* Patents associated with inventors from more than one campus are reported
multiple times in this exhibit.
1500
1000
500
0
FY04
U.S.
FY05
FY06
FY07
FY08
Foreign
7
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
Licensing and Related Activity
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. Utility licenses generally cover useful processes,
machines, manufactured items, or compositions of matter
protected by utility patents and are likely to be licensed
exclusively. In contrast, plant licenses cover sexually and
asexually reproduced plant varieties and most are licensed
non-exclusively to multiple growers and distributors
worldwide.
The provisions of the license define the rights and
responsibilities of the two parties. In the typical utility
license agreement, the licensee is granted access to an
early stage invention that is protected by a University
patent. In exchange, the licensee makes a commitment
to commercialize the invention and to pay the University
agreed-upon fees, including reimbursement of patent
expenses and royalty payments when products reach
the marketplace. The specific terms of the agreement are
determined through a complex negotiation process. Prior to
the execution of a license, certain shorter-term agreements
are sometimes executed. A secrecy agreement is used in
conjunction with marketing and affords a potential licensee
access to confidential information that assists the company
in determining if it has an interest in pursuing a license for
a given technology. In FY08, the University entered into 685
secrecy agreements. A letter agreement generally is used to
confirm a company’s intent to negotiate a license and often
commits a company to pay certain fees or patent costs while
negotiations are underway. Option agreements are similar
in scope to license agreements and protect a licensee’s
interest in an invention while more in-depth technical or
marketing research is performed.
In FY08, UC entered into 458 licenses and related
technology transfer agreements. As indicated in Exhibit
8, these included 159 utility license agreements, 101 plant
license agreements, 47 option agreements, and 151 letter
agreements.
8
Exhibit 8
LICENSING ACTIVITY
Year Ended June 30, 2008
Agreements Executed
Letters
Options
Utility Licenses
Plant Licenses
Total Active Licenses
Utility Licenses
Plant Licenses
151
47
159
101
1,359
554
At the close of the fiscal year, the systemwide portfolio
totaled 1,913 licenses, an increase of 5.2% over the total
at the close of FY07. In managing these agreements, the
University must collect monies when due and monitor
progress to ensure that the licensees exercise due diligence
in developing inventions toward commercial application.
Exhibit 9
TOTAL UTILITY LICENSES
1400
1,315
1200
1000
800
1,114
1,359
1,200
983
600
400
UC continues to work with its licensees around
the world to explore opportunities for gaining intellectual
property protection and commercializing selected
strawberry and other plant cultivars in countries where
such intellectual property rights have not previously been
available. In regard to the distribution of plant licenses
among the campuses, UC Davis has 433 plant licenses in
its portfolio, UC Riverside has 130. Exhibit 11 shows the
number of utility license agreements associated with each
campus.
Exhibit 11
200
TOTAL UTILITY LICENSES BY CAMPUS*
Year Ended June 30, 2008
0
FY04
FY05
FY06
FY07
FY08
Exhibit 10
TOTAL PLANT LICENSES
600
550
400
473
554
504
488
200
0
FY04
FY05
FY06
FY07
FY08
UCB
273
UCD
90
UCI
80
UCLA
204
UCM
2
UCR
25
UCSB
46
UCSC
10
UCSD
292
UCSF
379
*Licenses associated with inventions that have inventors from more than one
campus are reported multiple times in this exhibit.
Exhibits 9 and 10 show the five year trend in the size
of the portfolio of UC utility and plant licenses. Each year
some agreements expire or are terminated. In general, the
total number of active utility agreements has continued
to rise due to increasing licensing activity throughout the
system. In the plant area, a wide variety of fruits, vegetables
and grasses were the subject of 554 agreements.
9
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
TECHNOLOGY TRANSFER INCOME
Total Income from Licensing
Total income from licensing—the income the
University receives from its technology agreements with
industry—was $128.4 million in FY08 (Exhibit 12) if one
excludes $42.6 million received in FY08 for litigation
settlements. This FY08 total licensing income represents a
9.8% increase from FY07. Total licensing income has two
components, royalty and fee income and reimbursements.
The royalty and fee income component includes: agreement
issue fees, maintenance fees, and other “milestone”
payments received on specific dates or at specific points
in the product development process. These payments
encourage companies to diligently pursue product
commercialization. Generally, earned royalties account
for the largest portion of royalty and fee income and are
received once products and processes using University
inventions reach the marketplace. Reimbursements, the
second component of total licensing income, represent the
recovery of patent and legal expenses.
Exhibit 13 shows the amount each campus contributed
to FY08 total licensing income. UC San Francisco had
the largest increase with its contribution to total income
doubling from $33.2 million in FY07 to $66.4 million in
FY08.
Exhibit 13
TOTAL LICENSING INCOME BY CAMPUS*
Year Ended June 30, 2008
(Thousands)
Exhibit 12
TOTAL LICENSING INCOME*
$140
100
80
$93.2
13.9
$109.6
16.7
$110.0
16.5
92.9
93.5
$7,659
UCD
$9,133
UCI
$6,418
UCLA
$37,716
UCM
$312
UCR
$2,237
UCSB
$5,987
UCSC
$117
UCSD
$29,978
UCSF
$66,379
Other**
(Millions)
120
UCB
$116.9
$128.4
24.2
19.3
97.6
104.2
$5,047
* Total licensing income consists of two components: royalty and fee income and
patent/legal reimbursements.
** Revenues primarily from a portfolio of OTT-managed DOE Laboratory
inventions, most disclosed prior to the establishment of the Laboratory-based
licensing offices.
79.3
60
Royalty and Fee Income
40
Royalty and fee income in FY08 was $104.2 million
when excluding $42.1 million received in FY08 in litigation
settlements. This income derived from 1,866 inventions.
As compared with FY07, royalty and fee income (excluding
settlements) increased by $6.6 million.
20
0
FY04
FY05
FY06
FY07
FY08
Patent/legal reimbursement revenue
Royalty & fee income
* The total licensing income reported for FY06 ($110 million) does not include an
upfront payment of $100 million from the settlement of litigation, and the total
licensing income reported for FY08 ($128.4 million) does not include upfront
payments and reimbursements of $42.6 million from the settlement of litigation.
In FY08, $2,964,830 was realized from the sale of
equity previously acquired under 12 license agreements.
As a result of these transactions and the execution of 10
licenses, 2 options, and 2 interinstitutional agreements in
FY08 that included equity as a partial consideration, at the
end of the fiscal year the University held equity related to
technology transfer activities in 102 companies.
Income from the top five commercialized UC
inventions (i.e. inventions that had reached the marketplace
and were generating royalty and fee income) contributed
10
$49.9 million in FY08, accounting for 47.9% of total royalty
and fee income (Exhibit 14). The top twenty-five inventions
collectively accounted for $78.8 million or 75.6% of total
royalties and fees. Inventions appearing on this list for the
first time include Optical Network Switch and Connective
Tissue Stem Cell.
Exhibit 14
UC TOP-EARNING INVENTIONS*
Year Ended June 30, 2008
(Thousands)
Invention (Campus, Year Disclosed)
Hepatitis-B Vaccine (SF, 1979 & 1981)
$16,287
Treatment of Intracranial Aneurysms (LA, 1989)
$11,736
Interstitial Cystitis Therapy (SD, 1980)
$8,670
Egf Receptor Antibodies (SD, 1983)
$7,143
Bovine Growth Hormone (SF, 1980)
$6,086
Subtotal (Top Five Inventions)
$49,922
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 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 FY08, 295 of 1,497 new
disclosures (19.7%) included non-UC inventors and 72
new interinstitutional agreements were signed, an 18.0%
increase over FY07.
In FY08, $6.1 million was redistributed to other
entities for inventions covered by interinstitutional and
other income-sharing agreements. For financial reporting
purposes, these monies are treated as an offset to income.
As is seen in Exhibit 15, these redistributions have increased
from FY07 to FY08, excluding payments for settlement of
litigation.
Chromosome Painting (LLNL, 1985, 1989 & 1995)
$4,397
Biodegradable Implant Coils (LA, 1998)
$3,373
Exhibit 15
Dynamic Skin Cooling Device (IR, 1993)
$2,845
PAYMENTS TO JOINT HOLDERS*
Camarosa Strawberry (DA, 1992)
$2,360
Firefly Luciferase (SD, 1984)
$1,866
Nicotine Patch (LA, 1984)
$1,634
Energy Transfer Primers (BK, 1994)
$1,538
Feline AIDS Virus Diagnostic (DA, 1986)
$1,227
Laser/Water Atomic Microscope (SB, 1989)
$1,173
Aids for Learning Disabled (SF, 1994)
$1,130
Albion Strawberry (DA, 2004)
$862
Optical Network Switch (DA, 1997)
$853
Comparative Genomic Hybridization (SF, 1992)
$816
Genomic Microarrays (SF, 1995)
$794
Detection of Mycoplasma (IR, 1984)
$757
Fluorescent Dyes-Calcium (BK, 1984)
$734
Ventana Strawberry (DA, 2001)
$700
Connective Tissue Stem Cell (LA, 2000)
$635
Universal Oligonucleotide Spacer (BK, 1996)
$574
Yeast Expression Vector (SF, 1982)
$565
Total Income (Top 25 Inventions)
$78,754
Total Income (All Inventions)
$104,158
% of Total from Top 5 Inventions
47.9%
% of Total from Top 25 Inventions
75.6%
*This list is limited to revenue-generating inventions that have been
commercialized. Total income excludes payments from settlement of litigation.
(Millions)
$10
8
6
$5.0
$5.4
$6.1
$5.6
$4.3
4
2
0
FY04
FY05
FY06
FY07
FY08
* The payments to joint holders reported for FY06 ($5.6 million) and FY07 ($4.3
million) do not include payments of $7.9 million in FY06 and $0.5 million in FY07
for the settlement of litigation.
Income Associated with
Patent/Legal Expenses
Because inventions are highly technical, the University
uses specialized outside attorneys to draft and secure
patent protection both in the US 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
11
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
objective of license negotiations, and reimbursements,
therefore, are considered to be part of total licensing revenue.
In FY08, the University received $24.2 million in patent/
legal expense reimbursements, excluding reimbursements
associated with litigation settlements.
technology transfer expenses
Legal and Other Direct Expenses
Legal and other direct expenses totaled $32.8 million in
FY08 (Exhibit 16), excluding $5.8 million in expenses due to
litigation settlements. Most technology transfer legal expenses
are associated with patent prosecution defined as payments
to outside counsel for drafting patent applications as well as
other costs for securing and maintaining patent protection for
University inventions. The extent of reimbursement of legal
and other direct expenses is a negotiated term of a license
agreement and not all agreements commit the licensee to
reimburse the University for these costs. Often, patent costs
are incurred in advance of executing a licence, which accounts
for a portion of unreimbursed expenses in any given fiscal
year. In FY08, reimbursements of legal expenses (excluding
litigation settlements) totaled $24.2 million, resulting in net
legal expenses of $8.7 million (Exhibit 16).
Exhibit 17 provides a breakdown of FY08 net legal
expenses (i.e., legal expenses after reimbursements) by
category. Patent prosecution activities accounted for $6.7
million of the $13.9 million in net legal expenditures.
Interference and infringement activities, which accounted
for 29% of net legal expenses in FY07, increased to 41% in
FY08. The relatively large interference and infringement
percentage in FY08 reflects expenses associated with
litigation settlements.
Exhibit 17
NET LEGAL EXPENSES
Year Ended June 30, 2008
Legal Defense
8%
Interference &
Infringement
41%
Exhibit 16
Other
3%
Patent
Prosecution
48%
LEGAL EXPENSES*
(Millions)
$40
$35.1
$34.4
30
$28.7
$32.8
$26.9
20
10
0
$14.8
$17.7
$15.8
$10.4
FY04
FY05
FY06
$8.7
FY07
FY08
Gross legal expenses
Net legal expenses
* The gross and net legal expenses reported for FY06 do not include $16.2 million
in legal expenses for the settlement of litigation. The gross and net legal 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.
12
It is anticipated that University licensing personnel will
continue to be successful in negotiating reimbursement
of a substantial amount of patent costs. Nonetheless, it is
expected that there will continue to be significant legal
expenses associated with patenting and litigation as the
technology transfer program matures, patent activities
continue to accelerate, and relationships with inventors,
sponsors and licensees become increasingly complex.
INCOME DISTRIBUTIONS
Inventor Shares
The income derived from royalties and fees, less the
sum of payments to joint holders and less net legal and
direct expenses, is distributed in various shares as required
under University and campus policies. In FY08, income
distributions (excluding income and expenses associated
with the settlement of litigation) totaled $89.4 million,
distributed as shown in Exhibit 18.
Exhibit 18
INCOME DISTRIBUTIONS*
(Millions)
$100
$89.4
80
60
$59.4
$69.8
$77.6
$77.0
33.0
30.0
31.3
35.6
12.6
10.0
38.2
31.0
25.5
40
25.3
28.2
35.2
20
0
10.1
8.2
0.4**
FY04
0.4**
FY05
0.7**
FY06
The University Patent Policy grants inventors the right
to receive a portion of net income accruing to individual
inventions. In FY08, 1,818 inventors received a total of
$35.2 million (excluding litigation settlements). 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
FY08 were calculated based on invention financial activity
through June 30, 2007. Trends related to the amount of
inventor share payments are reflected in Exhibit 18.
General Fund Share
The portion of University technology transfer income
allocated to the UC General Fund totaled $13.6 million
in FY08 (Exhibit 18; excluding litigation settlements).
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.
13.6
1.4**
FY07
2.5**
FY08
Income after mandatory distributions
Inventor shares
**Research allocation share
General fund share
* 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.
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, which is computed based on inventions
disclosed on or after October 1, 1997, totaled $2.5 million in
FY08 (Exhibit 18).
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 distributed
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 $38.2 million in FY08
(Exhibit 18; excluding litigation settlements).
13
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
Exhibit 19
SYSTEMWIDE TECHNOLOGY TRANSFER ACTIVITY FY04 – FY08*
Year Ended June 30, 2008
Fiscal Year Comparisons
FY04
FY05
FY06
FY07
FY08
% CHANGE
(FY07-FY08)
Invention Disclosures
Inventions Reported
Total Invention Portfolio
1,196
6,618
1,304
7,395
1,308
7,513
1,411
8,272
1,497
8,953
6.1%
8.2%
Patent Prosecution
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
Total Active US Patents
515
450
965
270
3,024
601
429
1,030
310
3,275
714
470
1,184
270
3,316
644
564
1,208
331
3,425
623
530
1,153
224
3,546
-3.3%
-6.0%
-4.6%
-32.3%
3.5%
243
2,837
284
3,168
361
3,692
315
3,757
276
3,597
-12.4%
-4.3%
32
145
81
22
186
57
29
197
115
22
209
73
47
159
101
113.6%
-23.9%
38.4%
53
983
473
52
1,114
488
61
1,200
550
69
1,315
504
91
1,359
554
31.9%
3.3%
9.9%
First Foreign Filings
Total Active Foreign Patents
Licensing
Agreements Issued
Options
Utility Licenses
Plant Licenses
Total Active Agreements
Options
Utility Licenses
Plant Licenses
Exhibit 19 only reports activity governed by the UC Patent Policy. It does not include copyright
and material transfer agreement activity that also is carried out by campus-based technology
transfer offices.
*Activity related to the invention portfolio managed by the nine campus-based licensing offices and OTT on behalf of the ten UC campuses. Activity related to a small
number of DOE Laboratory inventions managed at OTT also is reflected in these figures. See pp. 18-19 for activity pertaining to the operation of the DOE Laboratorybased technology transfer offices.
14
Exhibit 20
SYSTEMWIDE FINANCIAL ACTIVITY FY04-FY08
Year Ended June 30, 2008
(Thousands)
Fiscal Year Comparisons
FY04
FY05
FY06
FY07
FY08
% CHANGE
(FY07-FY08)
Income from Royalties and Fees
Less: Payments to Joint Holders
Adjusted Gross Income (A)
$79,265
(4,990)
74,275
$92,902
(5,403)
87,499
$193,500
(13,464)
180,036
$97,594
(4,798)
92,796
$146,314
(6,114)
140,200
50%
27%
51%
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(28,761)
13,916
(14,845)
(34,393)
16,707
(17,686)
(43,136)
16,545
(26,591)
(35,087)
19,292
(15,795)
(38,602)
24,668
(13,934)
10%
28%
-12%
Income Available for Distribution (A+B)
59,430
69,813
153,445
77,001
126,266
64%
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)
25,310
359
8,214
25,547
59,430
28,228
422
10,138
31,025
69,813
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
126,266
35%
79%
95%
87%
64%
Exhibit 20 only reports financial activity governed by the UC Patent Policy. Campus-based
technology transfer offices also generate income through copyright licenses, material transfer
agreements and through research support committed in conjunction with technology transfer
activities. This income is not included in this report.
15
Technology Transfer Activity and Financial Information
Part 1: The Systemwide/Campus Portfolios
Exhibit 21
FY07 CAMPUS TECHNOLOGY TRANSFER ACTIVITY
Year Ended June 30, 2008
Invention Disclosure
Inventions Reported
Total Invention Portfolio
Patent Prosecution
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
Total Active US Patents
First Foreign Filings
Total Active Foreign Patents
Licensing
Agreements Issued
Options
Utility Licenses
Plant Licenses
Total Active Agreements
Options
Utility Licenses
Plant Licenses
UCB
UCD
uci
uclaucM
ucr
ucsb
155
1,017
181
918
159
753
314
1,560
53
245
103
611
69
68
137
36
562
65
47
112
21
409
62
60
122
28
250
148
112
260
42
536
14
29
6
10
20
39
0
3
0
79
74
75
149
13
316
33
394
28
436
24
382
73
537
3
20
0
9
15
99
2
7
0
16
273
1
11
90
433
4
80
0
12
25
1
0
ucsc
ucsd
ucsf
24
140
330
2,355
200
1,422
12
127
4
85
16
212
5
45
66
573
52
70
122
35
770
1
16
53
812
24
881
8
126
42
62
12
26
0
1
3
1
6
0
11
12
5
0
2
2
0
41
0
0
5
44
0
13
204
0
1
7
2
25
0
130
22
46
0
3
7
10
292
0
0
11
379
0
Exhibit 21 only reports activity governed by the UC Patent Policy. It does not include copyright
and material transfer agreement activity which also is carried out by campus-based technology
transfer offices.
Note: A number of inventions involve inventors from multiple UC campuses. Activity statistics for these inventions are reported multiple times, once for each campus
involved. Thus, for any given measure of activity, the sum of individual campus numbers may be greater than the systemwide totals reported elsewhere in this report.
16
Exhibit 22
FY07 CAMPUS FINANCIAL ACTIVITY*
Year Ended June 30, 2008
(Thousands)
Income from Royalties and Fees
Less: Payments to Joint Holders
Adjusted Gross Income (A)
Legal and Other Direct Expenses
Less: Reimbursements
UCB
UCD
uci
uclaucM
ucr
ucsb
ucsc
$5,195
$8,011
$4,694
$32,837
(47)
(32)
(173)
(34)
5,148
7,979
4,521
(3,546)
(2,962)
(2,713)
ucsd
ucsf
$250
$1,588
$3,880
$33
0
(3)
(10)
0
(380)
(5,436)
32,803
250
1,585
3,871
33
22,313
56,961
(12,822)
(253)
(653)
(2,552)
(166)
(7,144)
(5,278)
$22,694 $62,397
2,464
1,122
1,724
4,879
62
650
2,107
85
7,284
3,983
(1,082)
(1,841)
(989)
(7,943)
(191)
(3)
(446)
(81)
141
(1,295)
4,067
6,139
3,532
24,860
59
1,582
3,425
(48)
22,454
55,666
1,542
3,468
1,983
6,842
17
298
996
41
8,573
23,501
Research Allocation Share (D)
103
157
127
138
7
9
162
17
1,624
130
General Fund Share (E)
631
668
387
4,505
10
321
607
(22)
3,470
8,041
Income After Mandatory Distributions (F) 1,790
1,846
1,034
13,376
24
954
1,659
(84)
8,787
23,993
Total Income Distributions (C+D+E+F) 4,067
6,139
3,532
24,860
59
1,582
3,425
(48)
22,454
55,666
Net Legal Expenses (B)
Income Available for Distribution (A+B)
Income Distributions
Inventor Shares (C)
*Exhibit 22 only reports financial activity governed by the UC Patent Policy. Campus-based
technology transfer offices also generate income through copyright licenses and material
transfer agreements that are not covered by the UC Patent Policy. This income is not included in
this report.
17
Technology Transfer Activity and Financial Information
Part 2: The DOE Laboratory-managed Portfolios
Part 2: The DOE Laboratory-Managed
Portfolios
Background
Since 1988, technology transfer for the UC-managed
US Department of Energy (DOE) Laboratories has been
under the purview of Laboratory-based offices. In this
fiscal year, we will be reporting on technology transfer
activity at Lawrence Berkeley National Laboratory (LBNL).
The technology transfer programs at Los Alamos National
Laboratory (LANL) and Lawrence Livermore National
Laboratory (LLNL) will not be covered this year as LANL
and LLNL are no longer under direct UC management.
The licensing function at LBNL is managed within the
context of a larger department responsible for fostering a
variety of partnerships with industry. In addition to patent
licensing, LBNL’s Department of Technology Transfer
and Intellectual Property Management (TTIPM) directs
substantial resources toward the licensing of software
and the negotiation of material transfer agreements, nondisclosure agreements, interinstitutional agreements, and
other agreements with industry and universities. TTIPM
also manages the marketing and outreach efforts for LBNL
inventions and includes an in-house patent staff.
Although TTIPM manages most LBNL inventions, the
Office of Technology Transfer (OTT) within the Office of
the President oversees a small portfolio of older inventions
from the DOE Laboratories, including some inventions
from LBNL. Most of these cases have co-inventors from the
UC campuses.
LBNL manages intellectual property in a way that is
generally consistent with the principles and practices of
the rest of UC. The primary differences are operational.
For example, whereas OTT and campus offices contract
with attorneys at outside law firms for all of their patent
prosecution activity, LBNL files and prosecutes many of
its US patents internally using in-house patent attorneys
and agents, and contracts out only for selected matters,
primarily for licensed cases and for foreign prosecution.
In addition, LBNL operates on a federal fiscal year which
ends September 30th in contrast to the June 30th end date
for the fiscal year at OTT and the campus offices. Finally,
as LBNL is not supported by the State of California, income
generated by LBNL is not subject to the General Fund Share
assessment.
Information in this section pertains to the activities of
the LBNL TTIPM unless noted otherwise.
18
Invention Disclosure, Patenting, and
Licensing Activity
In FY08, LBNL researchers disclosed 130 inventions
and filed a total of 135 US patent applications. 18 US
patents issued on LBNL inventions. LBNL completed 17
new options and licenses for patentable inventions and
tangible research products (TRPs) in FY08, bringing the
total number of active license and option agreements to 80
at the close of the fiscal year (Exhibit 23). Licensing of other
types of intellectual property (e.g., copyrighted software)
also represents a significant additional element of current
licensing activity.
Financial Results
Exhibit 23
PATENTING AND LICENSING ACTIVITY:
LBNL TTIPM
Year Ended Sept. 30, 2008
Disclosure and Prosecution
Inventions Reported
US Applications Filed
First Filings–Provisional
First Filings–Regular
Secondary Filings–Provisional
Secondary Filings–Regular
Total
US Patents Issued
First Foreign Filings
Marketing and Licensing
New Agreements Issued
Secrecy
Option
License
Total Active Agreements
Option
License
FY07
FY08
%Change
126
130
3.2%
56
2
0
16
74
77
0
14
44
135
37.5%
-100.0%
N.A.
175.0%
82.4%
25
29
18
58
-28.0%
100.0%
The portfolio managed at LBNL generated a total of
$3.2 million in income during FY08, a decline of 0.1% over
the prior year. Patent income for LBNL increased 8.0% as
compared with FY07, while copyright income decreased
by 28.5% (Exhibit 24). This does not include direct
reimbursement of legal costs as described in the previous
section regarding campus activities.
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 the University’s current contract with
DOE and are not readily separable from other expenses of
the TTIPM.
Exhibit 24
FINANCIAL ACTIVITY: LBNL TTIPM*
201
2
3
202
9
8
0.5%
350.0%
166.7%
8
61
19
61
137.5%
0.0%
Year ended September 30, 2008
(Thousands)
FY07
Income from Royalties and Fees
Patents and TRPs
Copyrights/Software
Total
FY08 % Change
$2,502
$716
$3,218
$2,702
$512
$3,214
Inventor /Author Shares Paid
Patents & TRPs
$796
Copyright/Software, Trademark, & Other $169
Total
$965
N.A.**
N.A.**
N.A.**
8.0%
-28.5%
-0.1%
*In addition to income reported in this table, the OTT-managed DOE portfolio
collectively generated $4,621,227 in FY08 royalty and fee income, including
$222,774 for LBNL inventions.
**Starting FY08, payment of Inventor/Author Shares is deferred until the following
year to match campus inventor share payment schedule.
19
Technology Transfer Organization at UC
The UC Technology Transfer program operates under a model of distributed responsibilities and authorities that balances
activities carried out at the central Office of Technology Transfer with those at the individual UC campuses and at the
Lawrence Berkeley National Laboratory (LBNL). Under this 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
the UC Office of the President (UCOP). In all instances, OTT retains responsibility for certain functions, such as policy
development and guidance, legal oversight, legislative analysis, information management, and a variety of other services
in support of the overall program. Internet links to UC OTT, campus and Laboratory-based technology transfer offices are
provided below.
UC Technology Transfer on the Web
UC Office of the President: Office of Technology Transfer (OTT)
http://www.ucop.edu/ott
UC Berkeley: Office of Intellectual Property & Industry Research Alliances (IPIRA)
http://ipira.berkeley.edu
UC Davis: UC Davis InnovationAccess
http://www.innovationaccess.ucdavis.edu
UC Irvine: Office of Technology Alliances (OTA)
http://www.ota.uci.edu
UC Los Angeles: Office of Intellectual Property & Industry
Sponsored Research (OIP-ISR)
http://www.research.ucla.edu/oipa
UC Merced: Office of Technology Transfer (OTT)
http://research.ucmerced.edu
UC Riverside: Office of Technology Commercialization (OTC)
http://www.ora.ucr.edu/ip
UC Santa Barbara: Office of Technology & Industry Alliances (TIA)
http://research.ucsb.edu/tech_transfer
UC Santa Cruz: Office for Management of Intellectual Property (OMIP)
http://research.ucsc.edu/intel_prop.html
UC San Diego: Technology Transfer Office (TTO)
http://invent.ucsd.edu
UC San Francisco: Office of Technology Management (OTM)
http://www.otm.ucsf.edu
Lawrence Berkeley National Laboratory: Technology Transfer & Intellectual
Property Management (TTIPM)
http://www.lbl.gov/Tech-Transfer
Industry-University Cooperative Research Program (IUCRP)
http://ucdiscoverygrant.org
20
University of California
Office of Technolgy Transfer
1111 Franklin Street, 5th Floor
Oakland, CA 94607-5200