CIRM Patent Prosecution Assistance Fund for Stem Cell Technologies – UCD

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Grant Award Details

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Grant Application Details

Application Title:

CIRM Patent Prosecution Assistance Fund for Stem Cell Technologies

Public Abstract:
The technology transfer office (TTO) has the primary responsibility of managing intellectual property for the institution. The TTO is well positioned for its mission through an effective functional internal structure to process invention disclosures, evaluate patentability and marketability, to patent inventions, seek out the right licensees and manage post licensing activities. In addition, the TTO leverages the use of professional extramural centralized resources to manage other ancillary functions. The technology transfer team is composed of experienced intellectual property professionals consisting of intellectual property officers (IPOs), who receive paralegal support from knowledgeable intellectual property analysts .The IPOs have expert knowledge in the biological, chemical, physical sciences and engineering, with many years of experience working in industry and/or law firms. The team evaluates the commercial potential of inventions and markets the inventions to companies. Commercial potential assessment factors in the developmental risks, market forces and regulatory requirements. Technologies are marketed using a combination of indirect (e.g. website postings) and direct (e.g. contacting companies in the technology space) approaches. The TTO adopts strategic licensing practices that balance the institution’s core mission of developing technologies for public benefit with the needs of the commercial partner to bring a successful product to the market.
Statement of Benefit to California:
The CIRM Patent Assistance Funding Program would be extremely helpful to the institution facing the challenges of managing the costs of patent prosecution while preserving the ability to make inventions attractive to commercialization partners. Stem cell technologies supported by the program are anticipated to result in (i) research tools that will assist other research and development efforts, catalyze new discoveries and (ii) clinical products that will contribute to improved healthcare. Support through the patent assistance fund will be critical in maintaining the patent application beyond the preliminary filings by mitigating the long term overhead patent costs for the future licensee and by providing the much needed time for validation studies to be completed for many early stage innovations. The ability to preserve patent rights nationally and internationally will be crucial to help such technologies become alluring candidates for licensing to either to established companies or to niche startup companies, thus increasing the probability of these technologies reaching the marketplace. It is anticipated that the sustenance of the commercial appeal of technologies through the Patent Assistance Funding Program will result in bringing life-altering technologies into the healthcare market that will benefit not only the citizens of California and but will also have a wider reach to the global community.