Berkeley
Dav i s
i rv i n e
los angeles
MerceD
riversiDe
s a n ta B a r B a r a
s a n ta c r u z
san Diego
san Francisco
l aw r e n c e B e r k e l e y
l aw r e n c e l i v e r M o r e
ucTechnologytransFer
A n n u A l r e p o rt
2007
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
2007 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.
Keith Alley
Executive Vice Chancellor & Provost, UCM
Kathryn Atchison
Vice Provost of Intellectual Property & Industrial Relations, UCLA
Alan B. Bennett
Associate Vice Chancellor for Research, UCD
Carol Berman
Contracts & Grants Director, DANR, UCOP
Beth Burnside
Vice Chancellor for Research, UCB
Lawrence B. Coleman
Vice Provost for Research, UCOP
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
W. Rory Hume
Provost & Executive Vice President, Academic & Health Affairs, UCOP
Susanne L. Huttner
Associate Vice Provost, Research and Director, Industry-University Cooperative
Research Program, UCOP
Charles F. Louis
Vice Chancellor for Research, UCR
Duncan McBranch
Division Leader, Technology Transfer, LANL
Karena McKinley
Director, Industrial Partnerships & Commercialization, LLNL
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
William T. Tucker
Executive Director, Research Administration & Technology Transfer, UCOP
A. Eugene Washington
Executive Vice Chancellor & Provost, UCSF
Fiscal Year 2007
Office of the President
Executive Vice President, Academic and Health Affairs
Office of Technology Transfer
1111 Franklin Street, 5th Floor
Oakland, CA 94607-5200
Message from the Director
The University of California’s technology transfer program plays a vital
role in supporting UC’s world-class research enterprise and in translating
promising discoveries into new products and businesses to bolster California’s
economy. To realize the potential of UC’s inventions, the technology transfer
program engages in numerous activities ranging from patenting and licensing
to building relationships with industry and providing leadership on behalf
of academic technology transfer at the state and national levels. Key to
UC’s ability to successfully undertake such a broad range of activities is the
division of labor between the UCOP Office of Technology Transfer (OTT)
that coordinates technology transfer activities across the system, and campusbased technology transfer offices that are now almost entirely responsible for
the program’s core patenting and licensing activities.
OTT reaches out to industry and the investment community to foster collaborations and to increase
awareness of opportunities to commercialize UC inventions. In FY07, OTT hosted its most successful
systemwide technology transfer forum to date, which focused on nanotechnology. We also advanced
UC’s research enterprise through collaborations with local and state organizations, supporting
entrepreneurship and technology transfer education across the system and promoting business start-ups
based on UC inventions. On the national level, UC has played a vital role in the ongoing discussions on
patent reform and the impact of the Bayh-Dole Act on innovation and economic development. OTT and
campus officials testified before Congress and participated in committee discussions to draft legislative
language that addresses major issues of importance to the non-profit community to best serve our
university mission.
The technology transfer program performed well in FY07, again showing increased activity over the
prior year. New inventions disclosures increased by 7.9%, resulting in UC’s portfolio of active inventions
increasing by 10.1% to 8,272. UC added 331 new US patents to our portfolio, a 22.6% increase over the
number of US patents added in FY06. At year end, UC owned 3,425 US patents and 3,757 foreign patents.
Systemwide, we entered into 209 new utility license agreements, an increase of 6.1% over the number
of such licenses in FY06. Total licensing income (which excludes any dispute resolutions settlements)
increased 6.3% to $116.9 million in FY07 continuing a steady trend of increases since FY03.
Overall, the technology transfer program this year expanded its contribution to UC’s mission of
education, research, and public service, not only in terms of increased innovation and realization of public
benefits from UC research, but also in undertaking initiatives to increase awareness of the contribution of
UC’s research to the prosperity of the California economy.
Sincerely,
William Tucker
Executive Director,
Research Administration and Technology Transfer
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, 2007. 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 Administration at UC Los Angeles, the Office
of Technology Commercialization at UC Riverside,
Technology Transfer and Intellectual Property Services
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 two Department of
Energy (DOE) Laboratories managed by the University.
Information on the Laboratories is reported separately
because certain aspects of technology transfer are different
at the Laboratories as compared with the rest of the
University. Among these differences is the reporting period
which covers the fiscal year ending September 30, 2007.
Part 1: The campus Portfolios
TechnologY TransFer acTiviTY
InventIon RepoRtInG
During the twelve-month period ending June 30, 2007,
a total of 1,411 inventions were disclosed by faculty and
researchers at the ten UC campuses; an increase of 7.9%
over the number of inventions reported in FY06 (Exhibit 1).
ExhibiT 1
InventIonS RepoRteD
1500
1400
1,411
1300
1200
1,308
FY05
FY06
1,196
1100
1000
1,304
1,027
900
800
FY03
FY04
FY07
Half of this increase is accounted for by UC Irvine,
where newly reported inventions increased by 50 from 141
in FY06 to 191 in FY07. Other campuses with large gains
over this period include UC Santa Barbara (from 94 to 129),
UC San Diego (from 310 to 333), and UC Davis (from 158 to
180). The campus distribution of newly reported inventions
for FY07 is shown in Exhibit 2.
ExhibiT 2
InventIon DISCLoSUReS BY CAMpUS*
Year Ended June 30, 2007
UCSF 142
UCB 133
As of June 30, 2007, the systemwide invention portfolio
was comprised of 8,272 active inventions. The size of each
campus invention portfolio is indicated in the exhibit
below.
ExhibiT 3
CAMpUS InventIon poRtFoLIoS*
UCD 180
UCI 191
UCLA 267
UCM 12
UCR 31
UCSB 129
UCSC 16
UCSD 333
*Inventions having inventors from more than one campus are counted multiple
times, once for each campus with an inventor.
Year Ended June 30, 2007
UCB
924
UCD
875
UCI
708
UCLA
1,401
UCM
13
UCR
209
UCSB
572
UCSC
120
UCSD
2,180
UCSF
1,378
*Inventions associated with inventors from more than one campus are reported
multiple times in this exhibit.
TechnologY TransFer acTiviTY and Financial inFormaTion
Part 1: The Systemwide/Campus Portfolios
pAtent ACtIvItY
The University of California has received more 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.
Systemwide patent activity for FY07 is presented
in Exhibit 4. Acquiring adequate patent coverage for all
aspects of a new technology may require more than one
patent filing for a given invention. Such secondary filings
frequently lead to the issuance of multiple patents related
to a single initial invention. Often, several years will elapse
between a filing and patent issuance. The number of first
filings declined 9.8% compared to 714 in FY06, while the
number of secondary filings increased 20.0% from 470 in
FY06. Foreign patents issued declined by 35.0% from 586 in
FY06. Exhibit 5 shows the number of US patents issued to
the University in the past five years.
ExhibiT 4
ExhibiT 5
pAtent ACtIvItY*
US pAtentS ISSUeD to UC
Year Ended June 30, 2007
U.S. Applications Filed
First Filings
Secondary Filings
Total
350
644
564
1,208
300
First Foreign Filings*
315
200
US Patents Issued
331
150
Foreign Patents Issued
381
100
*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.
323
270
250
331
310
270
50
0
FY03
FY04
FY05
FY06
FY07
At the end of FY07, there were 3,425 US and 3,757
foreign patents in the systemwide portfolio (Exhibit 6). The
total number of foreign-filed patents continues to increase
relative to total number of US-filed patents, having first
overtaken the total number of US-filed patents in FY06.
This trend may be an indication of the increasingly global
nature of technology licensing. 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.
2000
Year Ended June 30, 2007
562
UCD
394
UCI
220
UCLA
498
UCM
0
UCR
82
ExhibiT 6
UCSB
302
totAL UC pAtent poRtFoLIo
UCSC
61
UCSD
566
UCSF
755
3500
2500
CAMpUS US pAtent poRtFoLIoS*
UCB
4000
3,757
3,692
3,275
3000
ExhibiT 7
3,024
2,753
3,168
3,316
3,425
* Patents associated with inventors from more than one campus are reported
multiple times in this exhibit.
2,837
2,364
1500
1000
500
0
FY03
U.S.
FY04
FY05
FY06
FY07
Foreign
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 FY07, the University entered into 768
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 FY07, UC entered into 440 licenses and related
technology transfer agreements. As indicated in Exhibit
8, these included 209 utility license agreements, 73 plant
license agreements, 22 option agreements, and 136 letter
agreements.
ExhibiT 8
LICenSInG ACtIvItY
Year Ended June 30, 2007
Agreements Executed
Letters
Options
Utility Licenses
Plant Licenses
136
22
209
73
Total Active Licenses
Utility Licenses
Plant Licenses
1,315
504
At the close of the fiscal year, the systemwide portfolio
totaled 1,819 licenses, an increase of 3.9% over the total
at the close of FY06. 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
1,114
1000
800
902
1,200
983
600
400
ExhibiT 11
200
totAL UtILItY LICenSeS BY CAMpUS*
Year Ended June 30, 2007
0
FY03
FY04
FY05
FY06
FY07
ExhibiT 10
totAL pLAnt LICenSeS
600
550
400
454
473
504
488
200
0
UC continues to work with our 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, the Davis campus has 383 plant licenses in its
portfolio, Riverside has 120, and Berkeley has 1. Exhibit 11
shows the number of utility license agreements associated
with each campus.
FY03
FY04
FY05
FY06
FY07
UCB
257
UCD
100
UCI
79
UCLA
189
UCM
1
UCR
19
UCSB
43
UCSC
10
UCSD
305
UCSF
356
*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 504 agreements.
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 $116.9 million in FY07 (Exhibit 12). This
FY07 total licensing income represents a 6.3% increase from
FY06 if one excludes the $100 million received in FY06 for
settlement of the bovine growth hormone litigation. 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 University inventions reach the
marketplace. Reimbursements, the second component of
total licensing income, represent the recovery of patent and
legal expenses.
increased its contribution by $1.2 million (37.3%). While
the contributions shown in Exhibit 13 only involve income
arising from University inventions, in FY07 UC Santa
Barbara also received $1.3 million from licenses involving
donated patents covering non-University inventions.
ExhibiT 13
totAL LICenSInG InCoMe BY CAMpUS*
Year Ended June 30, 2007
(Thousands)
ExhibiT 12
totAL LICenSInG InCoMe*
$109.6
$93.2
16.7
16.5
$81.3
13.9
92.9
93.5
14.3
79.3
100
80
60
$110.0
$116.9
19.3
97.6
67.0
20
FY03
FY04
FY05
FY06
FY07
Patent/legal reimbursement revenue
Royalty & fee income
* The total licensing income reported for FY06 ($110 million) does not include
the upfront payment of $100 million from the settlement of litigation involving
bovine growth hormone.
Exhibit 13 shows the amount each campus contributed
to FY07 total licensing income. For the first time our
newest campus, UC Merced, contributed to this income.
UC Los Angeles increased its contribution by $3.2 million
(14.4%) over its FY06 contribution, while UC Santa Barbara
0
UCD
$9,217
UCI
$6,716
UCLA
$25,294
UCM
$59
UCR
$1,408
UCSB
$4,590
UCSC
$440
UCSD
$25,696
UCSF
$33,226
$2,852
* 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.
RoYALtY AnD Fee InCoMe
40
0
$7,388
Other**
(Millions)
$120
UCB
Royalty and fee income in FY07 was $97.6 million. This
income derived from 1,592 inventions. As compared with
FY06, royalties and fees increased by $4.1 million when
excluding a $100 million litigation settlement received in
FY06.
In FY07, $1,167,318 was realized from the sale of equity
previously acquired under 8 license agreements. As a result
of these transactions and the execution of 13 licenses in
FY07 that included equity as a partial consideration, at the
end of the fiscal year the University held equity related to
technology transfer activities in 92 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
$47.7 million in FY07, accounting for 48.9% of total royalty
and fee income (Exhibit 14). The top twenty-five inventions
collectively accounted for $73.9 million or 75.7% of total
royalties and fees. Inventions appearing on this list for
the first time include Albion Strawberry, Bovine Growth
Hormone, Comparative Genomic Hybridization, Efficient
GaN-based LEDs, and Genomic Microarrays.
ExhibiT 14
UC top-eARnInG InventIonS*
Year Ended June 30, 2007
(Thousands)
invention (campus, Year disclosed)
Hepatitis-B Vaccine (SF, 1979 and 1981)
$14,656
Treatment of Intracranial Aneurysms (LA, 1989)
$11,122
Egf Receptor Antibodies (SD, 1983)
$8,700
Interstitial Cystitis Therapy (SD, 1980)
$7,160
Bovine Growth Hormone (SF, 1980)
$6,083
Subtotal (top Five Inventions)
$47,721
Biodegradable Implant Coils (LA, 1998)
$4,071
Dynamic Skin Cooling Device (IR, 1993)
$3,231
Camarosa Strawberry (DA, 1992)
$1,942
Chromosome Painting (LLNL, 1985)
$1,715
Nicotine Patch (LA, 1984)
$1,653
Energy Transfer Primers (BK, 1994)
$1,451
Firefly Luciferase (SD, 1984)
$1,413
Genomic Microarrays (SF, 1995)
$1,176
Feline AIDS Virus Diagnostic (DA, 1986)
$1,174
Comparative Genomic Hybridization (SF, 1992)
$1,154
Aids for Learning Disabled (SF, 1994)
$1,094
Liposome Storage Method (DA, 1984)
$1,077
Ventana Strawberry (DA, 2001)
$828
Laser/Water Atomic Microscope (SB, 1989)
$752
Fluorescent Dyes-Calcium (BK, 1984)
$736
Albion Strawberry (DA, 2004)
$708
Cochlear Implants (SF, 1979)
$672
Universal Oligonucleotide Spacer (BK, 1996)
$544
Magnetic Resonance Imaging (SF, 1976)
$403
Efficient GaN-based LEDs (SB, 2004)
$400
Total income (Top 25 inventions)
$73,915
Total income (all inventions)
$97,594
% of Total from Top 5 inventions
48.9%
% of Total from Top 25 inventions
75.7%
*This list is limited to revenue-generating inventions that have been
commercialized.
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, UC often negotiates interinstitutional
agreements to establish which entity will manage patenting
and licensing. In FY07, 272 of 1,411 new disclosures (19.3%)
included non-UC inventors and 61 new interinstitutional
agreements were signed, a 23.8% decrease over FY06.
In FY07, $4.8 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 been
declining in recent years when one excludes the $7.9 million
payment in FY06 and $0.5 million payment in FY07 for
settlement of litigation involving bovine growth hormone.
ExhibiT 15
pAYMentS to JoInt HoLDeRS*
(Millions)
$10
8
6
$5.9
$5.0
$5.4
$5.6
$4.3
4
2
0
FY03
FY04
FY05
FY06
FY07
* The payments to joint holders reported in this exhibit 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 involving bovine growth hormone.
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 U.S. and abroad. Obtaining a licensee’s
commitment to reimburse these costs is a high priority
objective of license negotiations, and reimbursements,
therefore, are considered to be part of total licensing revenue.
In FY07, the University received $19.3 million in licensing
income from patent/legal expense reimbursements.
TechnologY TransFer acTiviTY and Financial inFormaTion
Part 1: The Systemwide/Campus Portfolios
TechnologY TransFer exPenses
LeGAL AnD otHeR DIReCt expenSeS
Legal and other direct expenses totaled $35.1 million in
FY07 (Exhibit 16). 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.
In FY07, reimbursements of legal expenses totaled $19.3
million, resulting in net legal expenses of $15.8 million
(Exhibit 16).
Exhibit 17 provides a breakdown of FY07 net legal
expenses (i.e., legal expenses after reimbursements) by
category. Patent prosecution activities accounted for $10.6
million of the $15.8 million in net legal expenditures.
Interference and infringement activities, which accounted
for 55% of net legal expenses in FY06, declined to 29% in
FY07. The relatively large interference and infringement
percentage in FY06 reflects expenses associated with the
settlement of infringement litigation involving bovine
growth hormone.
ExhibiT 17
net LeGAL expenSeS
Year Ended June 30, 2007
Legal Defense
1%
Other
2%
ExhibiT 16
Interference &
Infringement
29%
LeGAL expenSeS*
(Millions)
$40
$35.1
$34.4
30
$27.9
$28.7
Patent
Prosecution
68%
$26.9
20
10
$13.6
$14.8
$17.7
$15.8
$10.4
0
FY03
FY04
FY05
FY06
FY07
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 involving bovine growth
hormone.
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 FY07, income
distributions totaled $77.0 million, distributed as shown in
Exhibit 18.
ExhibiT 18
InCoMe DIStRIBUtIonS*
(Millions)
$80
60
40
$69.8
$59.4
$47.5
$77.6
$77.0
33.0
30.0
31.0
25.5
11.0
32.4
25.3
3.6
8.2
28.2
31.3
35.6
20
0
0.5**
FY03
10.1
0.4**
FY04
0.4**
FY05
12.6
0.7**
FY06
10.0
1.4**
FY07
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
involving bovine growth hormone.
The University Patent Policy grants inventors the right
to receive a portion of net income accruing to individual
inventions. In FY07, 1,638 inventors received a total of $35.6
million. 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 FY07 were calculated based on invention
financial activity through June 30, 2006. 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 $10.0 million in
FY07 (Exhibit 18, above). The General Fund share is equal
to 25% of the amount remaining after deducting payments
to joint holders, net expenses, and inventor share payments
from royalty and fee income.
ReSeARCH ALLoCAtIon SHARe
The 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 $1.4 million in
FY07 (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 in prior
Annual Reports were reported separately as “Operating
Expense” and “Campus Share” distributions. Income after
mandatory distributions totaled $30.0 million in FY07
(Exhibit 18).
TechnologY TransFer acTiviTY and Financial inFormaTion
Part 1: The Systemwide/Campus Portfolios
ExhibiT 19
SYSteMwIDe teCHnoLoGY tRAnSFeR ACtIvItY FY03 – FY07*
Year Ended June 30, 2007
Fiscal Year comparisons
FY03
FY04
FY05
FY06
FY07
% change
(FY06-FY07)
Invention Disclosure
Inventions Reported
Total Invention Portfolio
1,027
5,948
1,196
6,618
1,304
7,395
1,308
7,513
1,411
8,272
7.9%
10.1%
Patent Prosecution
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
Total Active US Patents
490
384
874
323
2,753
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
-9.8%
20.0%
2.0%
22.6%
3.3%
230
2,364
243
2,837
284
3,168
361
3,692
315
3,757
-12.7%
1.8%
21
131
56
32
145
81
22
186
57
29
197
115
22
209
73
-24.1%
6.1%
-36.5%
62
902
454
53
983
473
52
1,114
488
61
1,200
550
69
1,315
504
13.1%
9.6%
-8.4%
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.
ExhibiT 20
SYSteMwIDe FInAnCIAL ACtIvItY FY03-FY07
Year Ended June 30, 2007
(Thousands)
Fiscal Year comparisons
FY03
FY04
FY05
FY06
FY07
% change
(FY06-FY07)
Income from Royalties and Fees
Less: Payments to Joint Holders
Adjusted Gross Income (A)
$67,019
(5,854)
61,165
$79,265
(4,990)
74,275
$92,902
(5,403)
87,499
$193,500
(13,464)
180,036
$97,594
(4,798)
92,796
-50%
-64%
-48%
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
(27,929)
14,300
(13,629)
(28,761)
13,916
(14,845)
(34,393)
16,707
(17,686)
(43,136)
16,545
(26,591)
(35,087)
19,292
(15,795)
-19%
17%
-41%
Income Available for Distribution (A+B)
47,536
59,430
69,813
153,445
77,001
-50%
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)
32,357
534
3,608
11,037
47,536
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
-41%
91%
-56%
-57%
-50%
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.
TechnologY TransFer acTiviTY and Financial inFormaTion
Part 1: The Systemwide/Campus Portfolios
ExhibiT 21
FY07 CAMpUS teCHnoLoGY tRAnSFeR ACtIvItY
Year Ended June 30, 2007
UcB
Ucd
Uci
Ucla
Ucm
Ucr
UcsB
invention disclosure
Inventions Reported
Total Invention Portfolio
133
924
180
875
191
708
267
1,401
12
13
31
209
Patent Prosecution
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
Total Active US Patents
60
62
122
53
562
80
54
134
45
394
89
66
155
30
220
129
164
293
42
498
3
1
4
0
0
34
401
30
522
24
331
87
529
3
44
0
3
13
62
2
11
0
17
257
1
7
100
383
4
79
0
First Foreign Filings
Total Active Foreign Patents
licensing
Agreements Issued
Options
Utility Licenses
Plant Licenses
Total Active Agreements
Options
Utility Licenses
Plant Licenses
Ucsc
Ucsd
UcsF
129
572
16
120
333
2,180
142
1,378
22
5
27
10
82
81
75
156
25
302
4
15
19
9
61
142
65
207
64
566
43
68
111
62
755
1
0
6
119
43
83
2
12
60
764
33
1,008
3
40
0
0
0
0
4
5
11
6
12
0
0
0
0
2
56
0
0
35
0
11
189
0
0
1
0
6
19
120
12
43
0
1
10
0
6
305
0
8
356
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.
ExhibiT 22
FY07 CAMpUS FInAnCIAL ACtIvItY*
Year Ended June 30, 2007
(Thousands)
Income from Royalties and Fees
Less: Payments to Joint Holders
Adjusted Gross Income (A)
Legal and Other Direct Expenses
Less: Reimbursements
Net Legal Expenses (B)
Income Available for Distribution (A+B)
UcB
Ucd
Uci
Ucla
Ucm
Ucr
UcsB
Ucsc
$5,056
$8,090
$5,191
(23)
(9)
(110)
5,033
8,081
(3,528)
(3,103)
Ucsd
UcsF
$20,911
$50
$762
$2,951
$100
(15)
0
(12)
(4)
(1)
(119)
(4,505)
5,081
20,896
50
750
2,947
99
21,303
25,905
(2,487)
(9,847)
(33)
(804)
(2,044)
(279)
(6,542)
(5,552)
$21,423 $30,410
2,332
1,127
1,525
4,383
9
646
1,639
340
4,273
2,816
(1,195)
(1,976)
(962)
(5,464)
(24)
(159)
(405)
61
(2,268)
(2,736)
3,838
6,105
4,119
15,432
26
591
2,542
160
19,035
23,169
1,763
3,227
3,432
6,911
0
313
769
18
8,587
9,904
Income Distributions
Inventor Shares (C)
Research Allocation Share (D)
55
87
93
102
0
6
94
6
743
194
519
720
172
2,127
7
70
443
35
2,612
3,316
Income After Mandatory Distributions (F) 1,501
2,071
422
6,292
19
203
1,236
101
7,093
9,755
Total Income Distributions (C+D+E+F)
6,105
4,119
15,432
26
591
2,542
160
19,035
23,169
General Fund Share (E)
3,838
*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 that are not covered by the UC Patent Policy. This income is not included in this report.
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
U.S. 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)
and Lawrence Livermore National Laboratory (LLNL).
The technology transfer program at Los Alamos National
Laboratory (LANL) will not be covered this year as LANL is
no longer under direct UC management.
The licensing function at the Laboratories is managed
within the context of larger departments responsible
for fostering a variety of partnerships with industry:
LBNL’s Technology Transfer Office and LLNL’s Industrial
Partnerships and Commercialization Office. In addition to
patent licensing, these offices direct substantial resources
toward the licensing of software and the negotiation of
Cooperative Research and Development Agreements
(CRADAs), technical assistance and other agreements with
industry. Although these DOE Laboratory offices manage
most Laboratory inventions, OTT oversees a small portfolio
of Laboratory inventions. Most of these cases have coinventors from the UC campuses.
Certain aspects of technology transfer processes
differ at the DOE offices as compared with OTT and the
campuses. For example, after an invention is disclosed and
a determination is made to pursue a license, there are some
cases where the laboratory may be able to elect title to an
invention on behalf of the University under the federal
Bayh-Dole legislation, just as a campus does. In other cases,
however, there must be a special request to DOE to enable
The Regents to retain or be assigned title to the invention.
Requests to assert copyright in software also must be made to
DOE. In addition, whereas OTT and campus offices contract
with attorneys at outside law firms for all of their patent
prosecution activity, the Laboratories manage most US patent
filings internally through their own legal departments and
contract out only for selected matters, particularly foreign
prosecution. In addition, the fiscal year at the Laboratory
offices ends September 30th in contrast to the June 30th end
date for the fiscal year at OTT and the campus offices.
Information in this section pertains to the activities of
the technology transfer offices of the Laboratories unless
noted otherwise.
InventIon DISCLoSURe, pAtentInG, AnD
LICenSInG ACtIvItY
In FY07, DOE Laboratory researchers disclosed 287
inventions and filed a total of 165 US patent applications.
87 US patents issued on DOE inventions. The Laboratories
completed 25 new options and licenses for patentable
inventions and tangible research products (TRPs) in FY07,
bringing the total number of active license and option
agreements to 169 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:
Doe LABoRAtoRY oFFICeS
Year Ended Sept. 30, 2007
lBnl
llnl
Total
126
161
287
67
7
74
64
27
91
131
34
165
25
29
62
28
87
57
201
2
3
480
5
15
681
7
18
8
61
8
92
16
153
Disclosure and Prosecution*
Inventions Reported
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
First Foreign Filings
Marketing and Licensing
New Agreements Issued
Secrecy
Option
License
Total Active Agreements
Option
License
The DOE Laboratory-managed portfolios generated a
total of $7.8 million in income during FY07, an increase of
10.6% over the prior year (excluding LANL). Patent income
for the Labs increased 12.1% as compared with FY06, while
copyright income increased by 1.1% (Exhibit 24).
Information on DOE Laboratory patenting and
licensing expenses is not provided in this report. Patent
expenses are allowable costs under the University’s
current contract with DOE and are not readily separable
from other expenses of the legal departments. Similarly,
operating expenses related to the licensing function are not
readily separable from other expenses of the technology
transfer departments. Finally, income generated by the
DOE Laboratories is not subject to the General Fund share
assessment.
Inventor share payments of $2.7 million included $275
thousand paid to authors of software. These payments were
based on financial activity through September 30, 2007.
ExhibiT 24
FInAnCIAL ACtIvItY: Doe LABoRAtoRY oFFICeS*
Year ended September 30, 2007
(Thousands)
FISCAL YeAR CoMpARISonS
(excluding LANL)
Disclosure and Prosecution*
Inventions Reported
US Applications Filed
First Filings
Secondary Filings
Total
US Patents Issued
First Foreign Filings
Marketing and Licensing
New Agreements Issued
Secrecy
Option
License
Total Active Agreements
Option
License
FY06
FY07
%change
238
287
21%
113
59
172
131
34
165
16%
-42%
-4%
98
41
87
57
-11%
39%
192
3
23
681
7
18
255%
133%
-22%
9
152
16
153
78%
1%
Income from Royalties and Fees
Patents and TRPs
Copyrights/Software
Total
lBnl
llnl
Total
$2,502
$716
$3,218
$4,358
$231
$4,589
$6,860
$947
$7,807
$796
$169
$965
$1,619
$106
$1,725
$2,415
$275
$2,690
Inventor /Author Shares Paid
Patents and TRPs
Copyrights/Software
Total
FISCAL YeAR CoMpARISonS
(excluding LANL)
(Thousands)
Patents and TRPs
Copyrights/Software
Total
Inventor/Author Shares Paid
Inv./Aut. Shares Paid (copy./soft.)
Total
FY06
FY07
%change
$6,121
$936
$7,057
$6,860
$947
$7,807
12%
1%
11%
$2,152
$263
$2,415
$2,415
$275
$2,690
12%
5%
11%
*In addition to income reported in this table, the OTT-managed DOE portfolio
collectively generated $2,518,226 in FY07 royalty and fee income, including
$404,993 for LBNL and $2,113,233 for LLNL inventions.
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 (OTT) with those at the individual UC campuses and
UC-managed DOE Laboratories. Under this approach, campuses and Laboratories 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 review, 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 & Intellectual Property Services (TechTIPS)
http://invent.ucsd.edu
UC San Francisco: Office of Technology Management (OTM)
http://www.otm.ucsf.edu
Lawrence Berkeley National Laboratory: Technology Transfer Department (TTD)
http://www.lbl.gov/Tech-Transfer
Lawrence Livermore National Laboratory: Industrial Partnerships Office (IPO)
https://ipo.llnl.gov/
Industry-University Cooperative Research Program (IUCRP)
http://ucdiscoverygrant.org
0
university of california
office of technolgy transfer
1111 Franklin street, 5th Floor
oakland, ca 94607-5200