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Magnify Company Orientation Guide

UCLA Technology Development Group

Guide to Intellectual Property Ownership

 

Below is a quick guide to how ownership of intellectual property conceived or reduced to practice at UCLA’s on-campus incubator is handled. There are three core scenarios as defined below. Questions about this or other IP matters related may be addressed to the UCLA Technology Development Group.

Scenario #1

OVERVIEW: Employees of the company make an invention and this invention does not have any UC co-inventors (as determined under U.S. patent law) and was not conceived or reduced to practice using any UC funds, facilities or resources other than the company’s leased incubator space and the “shared facilities” (as defined in the Facility Use Agreement).

IP OWNERSHIP: This IP is solely owned by the company.

Scenario #2

OVERVIEW: UC employees (such as faculty, postdocs, graduate students, staff) are co-inventors or the sole inventors, as determined under U.S. patent law of an invention conceived or reduced to practice at the company’s leased incubator space or “shared facilities” (as defined in the Facility Use Agreement). See EXHIBIT A3, Incubator Informed Participation Letter, in Facilities Use Agreement (for UCLA academic staff consulting with company).

IP OWNERSHIP: UC may have an ownership interest in this invention as it has a UC inventor on it.

PROCEDURE: The invention should be reported to UCLA TDG using the invention report form available at: http://tdg.ucla.edu/submit-invention-report

NOTES: (1) If the invention was made under permissible consulting, no UC resources were used to create the invention, and it is clear that the invention does not fall within the UC employee’s scope of research or other university activities, the university may offer the UC employee a non-assert letter for the invention which may then be assigned by the UC employee to the company. (2) UC would be glad to discuss the possibility of licensing its ownership interest in this intellectual property (if any) to the company. See Faculty Consulting Guide at: http://tdg.ucla.edu/sites/default/files/consulting-agrt-9-01-09-final.pdf

Scenario #3

OVERVIEW: During the conception or reduction to practice of an invention, the company or its employees utilize UC funds, facilities or resources other than or in addition to the company’s leased incubator space and the “shared facilities” (as defined in the Facility Use agreement).

IP OWNERSHIP: UC may have an ownership interest in such invention through the use of UC’s resources.

PROCEDURE: The invention should be reported to UCLA’s Office of Intellectual Property using the invention report form available at: http://tdg.ucla.edu/submit-invention-report

NOTES: UC would be glad to discuss the possibility of licensing its interest in this IP to the company.

Intellectual Property Policies and Forms

 

Additional information regarding faculty consulting, UC patent policy, conflicts of interest, and UC licensing guidelines can be found here: http://tdg.ucla.edu/policies-forms

UCLA Startup in a Box

 

Startup in a Box was created to lower barriers for UCLA entrepreneurs, providing warm introductions to pre-vetted partners across a multitude of service areas. Info: http://tdg.ucla.edu/ucla-startup-box