Presentation to UC Berkeley\'s Science, Technology and Engineering Policy Group (STEP) on how to anticipate intellectual property matters in research planning.

1. Think Ahead About IP
March 16, 2011
Eric Giegerich
Office of Intellectual Property
& Industry Research Alliances (IPIRA)
Science, Technology & Engineering Policy Group
UC Berkeley

2. Think Ahead -- Overview
“I think we have something here! Now what?”
Questions about inventions,
commercial interest, and
intellectual property ("IP")
strategy are often
contemplated late in a
research project when an
exciting new discovery
emerges.

3. Think Ahead – Overview 2
Some questions can be asked
early, even in planning a new
research project.
In this seminar, we’ll explore a few questions
to help guide your research planning.

4. Snags to Avoid
Things We Sometimes See…
• Did you publish before protecting IP? Bar to patentability.
• Does your discovery rely on encumbered background
technology?
• Did that software or data license have strings attached?
• Did your free 3rd party software have reach-through
obligations? (Like GPL)
• Did those incoming materials have strings attached?
• Did you promise the same results to multiple parties?
• Did you want to license the invention and collect
royalties?
• Do you want to start a company?

5. Think Ahead…Some Questions
Problems Now Reframed as Questions…
• How do you envision commercializing or disseminating the technology?
– Protect IP and license (exclusively, non-exclusively)
– Open dissemination, defensive publication
• Who are the researchers are on your project?
– Who might your co-inventors / co-creators be?
– What is the culture of your college / department / PI?
– Any university background IP
• Use it or design around it?
• How is your research funded?
– Sponsored research agreement (contract, grant)
– Gift
• What implications?
– Any third party rights from research agreement, MTA, software license,
incorporating free code with reach through…?
– Any confidentiality agreements restricting sharing of certain information?
• What is the commercial landscape?
– What industry requirements exist for innovation uptake?
– What do VCs require to make an investment?

6. Think Ahead
1. IP Frameworks to Consider
• Articulate your IP strategy early
• Consider a full menu of IP Frameworks
– Exclusive IPR
– Non-exclusive IPR
– Open Source
– Public Domain / Defensive Publication
• Manage project toward your IP strategy

7. Think Ahead
2. Research Agreements
• If you seek a company to fund your proposal, IAO
negotiates and signs a Research Agreement.
• Common Issues:
– Intellectual Property Rights
– Materials, Data, Software
– Freedom to publish
– Confidentiality
– Control of research, academic integrity
• UC typically offers a first right to negotiate a
license to resulting Inventions and Works

8. Think Ahead
3. Other agreements…and implications
• Confidentiality Agreements
• Material or Data Transfer Agreements
• Software Licenses (incoming)
• Industry Affiliate Programs
• Fellowship Agreements
• Visiting Industrial Fellow Agreements
• Federal or state grants
• Subwards

9. Think Ahead
4. Starting up a company
• If you plan to launch a company using your university
invention, make sure…
– Manage toward the IP rights Start-up / VC needs
– IP rights don’t get encumbered by other agreements
(MTA, software licenses…)
• Doesn’t mean don’t use them; just be aware of terms
– Disclose your invention to the university
– Talk early with the Office of Technology Licensing
– Seek patent / copyright protection before publishing

10. Think Ahead about IP
Some questions
can be asked early,
even in planning a
new research
project.

11. Contact
Eric Giegerich
Industry Alliances Office
University of California, Berkeley
510-642-5850
egiegerich@berkeley.edu