There are restrictions on patenting that require researchers to submit a Record of Invention (ROI). Whenever researchers feel that they discovered something unique and novel with possible commercial value and application, they should submit an ROI to their campus tech transfer/licensing office. Ideally, the ROI should be submitted to the tech transfer office before it is disclosed to any non-UC personnel or the general public.
A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. It includes Public disclosure includes publications, journal articles, including online publications prior to the journal’s hardcopy release, posters, slideshows, thesis publications, websites, e-mails, verbal presentations, and even funded grant applications (the NIH posts the title and abstract online and makes the application available in response to a Freedom of Information request). Work with the tech transfer/licensing office to determine what aspects of the presentation or publication could be considered a public disclosure.
If a patent application is not filed on an invention before a public disclosure, patent rights might be forfeited by law. The optimal time to disclose is after the invention has been conceived and initial data are available, but before it has been publicly divulged. In most foreign countries, such a disclosure prior to filing a patent application will forfeit the ability of the university to obtain patent rights and, therefore, foreign patent applications will not be filed. The U.S. allows a one-year grace period from the date of public disclosure to apply for a U.S. patent.
For more information, visit the campus Technology Transfer Offices:
- Berkeley Intellectual Property & Industry Research Alliances
- Davis InnovationAccess
- Irvine Invention Transfer Group
- Los Angeles Office of Intellectual Property & Industry Sponsored Projects
- Merced Office of Business Development
- Riverside Technology Commercialization
- San Diego Innovation and Commercialization
- San Francisco Innovation, Technology & Alliances
- Santa Barbara Technology & Industry Alliances
- Santa Cruz Office for Management of Intellectual Property
- Lawrence Berkeley National Laboratory Innovation and Partnerships