The Research Translation Group (RTG) is a unit of UCI Applied Innovation that fosters alliances between UCI and industry, protects UCI’s intellectual property (IP), including patentable inventions and copyrightable software, and commercializes UCI’s IP for public benefit by licensing UCI’s IP to startup and existing companies.
Intellectual property (IP) refers to a category of intangible property rights comprising primarily patents, trademarks, copyrights, and trade secrets. The table below summarizes ownership of the various types of intellectual property at the University of California.
Patents
University employees, as a condition of employment, must disclose and assign patent rights to UC. Patent application process is administered by the Research Translation Group and the UC Office of Technology Transfer. If UC decides not to patent an invention or if the invention came from unrelated outside work, the invention may be released to the inventor. Once released to the inventor, no further work on that technology can take place in the University.
Copyrights
Ownership of the copyright in the work depends on the conditions and funding of the particular work. If classified as a “Work for Hire” or part of a sponsored research, the copyright belongs to UC. If the work results from other intellectual activity ,the copyright will generally belong to the individual. Administration of UC-owned copyrights is carried out by the UCI’s Research Translation Group.
Trade Secrets
UCI generally does not assert rights to the “know-how” or a trade secret held by the faculty. UCI occasionally may maintain, transfer and/or receive confidential information under secrecy agreements. UCI, however, does not generally license know-how or trade secrets.
Trademarks
Some trademark matters, such as trademark registration, are administered by UCI’s Research Translation Group.
UCI welcomes industry research collaborations and has developed a “win-win-win” strategy for developing and maintaining these partnerships. Many of these collaborations are established to further develop technology that has been licensed or optioned by the company. It is the job of the research translation group (RTG) to nurture these relationships and to serve as a point of contact and coordination throughout the entire process.
UC Principles for Partnering with Industry
RTG uses the following Principles for Industry Partnering that have been established for the entire UC system, to guide its negotiations. In essence, the campus has the authority to negotiate terms that it feels are fair, meet industry standards and that do not violate any of these principles:
Open Dissemination of Research Results and Information
Researchers will have freedom to publish and disseminate research results.
An open academic environment that fosters intellectual creativity will be maintained.
Accessibility for University Purposes
Agreements will allow University researchers to utilize the results of their research for education and future research.
Public Benefit
Agreements support the ability of the University to bring innovations and works of authorship to practical application for the public benefit in a diligent and timely manner.
Informed Participation
University researchers shall be aware of their intellectual property (IP) rights and obligations in any arrangement.
IP rights and obligations of particular agreements will not impose on any other type of arrangement without the knowledge of the individuals involved.
Legal & Ethical Integrity
Agreements shall be consistent with all applicable laws and regulations.
Agreements must ensure that all contractual obligations to Federal, state, commercial, non-profit, and other partners are satisfied.
Collaboration shall take place in an ethical environment.
Fair Economic Value
Agreements will achieve economic value for society
Full Direct and indirect costs of sponsored research will be recovered.
Commercial rights will be transferred at fair market value.
Objective Decision-Making
Decisions will be based on academic and business considerations and not upon the personal financial gain of any University employee.
Impact on Students
Students should be involved in university research to the extent practical.
Agreements should in no way hinder a student’s academic progress.
UCI Research Programs
Organized research programs provide a mechanism and organizational structure within which interdisciplinary research activities can take place that span the traditional boundaries of schools and academic departments.
These research units offer industry unusual opportunities for collaborative research and access to cutting-edge technologies that integrate the advances occurring in medicine, engineering, biology, computer sciences, chemistry and more. RTG will be pleased to assist interested companies access these unique resources and develop collaborations.
A current and complete list of Research Units at UCI is also available.
The University of California encourages faculty to participate in outside professional activities that contribute to their profession and to the broader community and contribute to the University’s public service mission. Engagement with the outside community is also an important component of the academic enterprise and one way in which faculty and other researchers maintain contact with research directions and priorities that exist in the private sector. This knowledge also guides faculty in preparing students for careers in the private sector.
Consulting Activities Are Regulated
A series of University policies based upon State statutes and Academic Senate consultation have been developed over the years to guide faculty in consulting and other outside professional activities.
See FAQ’s for Industry for common questions industry has about consulting with faculty.
Important Issues Arising from Consulting Activity:
Intellectual Property
All UCI employees have pre-existing obligations to disclose ALL patentable inventions to UC regardless of origin. Whether the invention falls outside the consultant’s “scope of UCI employment” is to be distinguished from the question of whether the invention falls within the broad area of an employee’s expertise, which it normally would. University ownership interest in an invention is a University-based decision supported by the facts and equities of the situation.
Faculty members are strongly encouraged to include a provision in their consulting agreements to the effect that the outside entity acknowledges that the consultant is a UCI employee with preexisting obligations to disclose ALL inventions to UCI and to assign to the University any intellectual property resulting from activities that involve the use of University time or research funds/facilities, University commitments to others, or that fall within the employee’s scope of employment. Ideally, the faculty member’s Patent Acknowledgement will be appended to and made a part of the consulting agreement. Consulting agreements that inappropriately assign intellectual property to an outside entity may be legally challengeable and/or unenforceable.
Future Research Funding
Future research funding should not be compromised by the consulting agreement. Companies employing consultants typically seek rights to inventions made during the consulting activity. They may also desire rights to future inventions made at UCI which have a relation to the consulting activity (neither faculty nor the University can grant such rights.) Any “agreement” to provide rights to future inventions may preclude UCI from providing comparable rights to future sponsors and from meeting its obligations to the federal government.
Acceptance of Confidential Information
It is not uncommon for a company to disclose proprietary information to a consultant and want assurances that this information will be kept confidential. Any disclosure of proprietary information by the recipient, either intentionally or unintentionally, may be actionable under both criminal and civil law. Therefore, it is essential to limit the amount of confidential information received when consulting, to agree in advance to receive it only in written form, and to have the company agree to identify clearly such proprietary information by marking it as “confidential.” It is recommended that consulting agreements include a “no-fault/no liability” statement regarding unintentional disclosure.
Liability
Consultants are normally asked to provide advice to the company, which may or may not be accepted. Usually the consultant has no control over how the results are used in practice. Therefore, agreements should limit the consultant’s liability to negligent acts on his or her part only. A consulting agreement should not include general liability or liability for any product produced based on the consulting activity. A consultant may want to seek personal insurance for the liability exposure incurred by the consulting activity.
California State Law Provision
Most consulting agreements will indicate that the laws of a particular state or country will be used in a dispute, usually those of the state where the third party is located or where the consulting is taking place. The litigation of any dispute may take place in that state or country. Thus, it is important to include a statement in a consulting agreement that California laws will apply in the event of a dispute. If choice of venue cannot be negotiated in that way, then it would be best to have the agreement remain silent on that issue.
Amount of Compensation
The University does not set a cap on compensation from outside personal consulting arrangements, except as agreed upon under an applicable health sciences compensation plan.
Conflicts of Interest
A faculty member serving as a Principal Investigator must disclose whether or not there has been any consulting activity with a company when accepting research funding or gifts at the University from that company. The format for disclosure is the Principal Investigator’s Statement of Economic Interests. Some funding agencies such as the National Science Foundation and the Public Health Service also have disclosure requirements for all investigators on a project with financial interests in companies that may reasonably appear to affect the work performed under the NSF or PHS project or that may be affected by the research. UCI considers any consulting to be related to an investigator’s university obligations and, therefore, disclosable.
Thus, under both State law and NSF/PHS regulations, an existing or prior consulting arrangement might require that a proposed University contract or grant be reviewed and approved by the campus Conflict of Interest Oversight Committee (COIOC) as to conflicts of interest concerns. Please contact UCI’s COI Administrator at (949) 824-4530 for more information.