Patent Assistance Fund Application – UCSD

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Patent Assistance Fund Application

Public Abstract:
The technology transfer office is responsible for protecting, managing and licensing intellectual property (IP), including inventions and research materials in life and physical sciences. These assets are supported by the coordinated efforts of a knowledgeable staff with substantial career experience on a variety of technical fronts (from biology to bioengineering and from physics to devices) and years of specific training (PhDs, MBAs, PE, CPA, patent agents) on the research, commercial, business and IP fronts. Innovations are marketed to potential licensees through both broad-reach (e.g. internet postings and monthly newsletters) and targeted approaches (e.g. to specific companies and through personal contacts). By soliciting such external input, the office supplements its own evaluation of the commercial potential of IP with feedback from those commercial entities who would be likely to license the IP for development. Because patent protection is necessary in the biomedical field to encourage a company to invest in product development, initial university support of patent applications is critical. Once an invention is licensed, the office works with its commercial partner to craft strong patent claims designed to protect the products under development. The combination of evaluation by an experienced internal team with assessment by potential licensees provides the broadest means by which to gauge and monitor the commercial potential of CIRM-sponsored IP.
Statement of Benefit to California:
CIRM-funded innovations have the potential to create a robust pipeline of life-enhancing therapies and diagnostics. However, many ideas that come from research are deemed too early and too risky for commercial investment and these early innovations need more time to mature. Also, strong patent protection is necessary in the biomedical field to encourage companies to invest in product development. Because the broadest IP rights are available pre-publication, initial university support of patent applications is critical. Follow-up IP protection, though costly, retains the foreign patent rights necessary for a technology to remain attractive to industry as a licensing opportunity. The fund will allow patent support of a greater number of inventions pre-licensing, giving new technologies the time they need to accrue validation and proof-of-concept, both of which are critical factors in overcoming the risk barrier for investors. This will increase the number of development opportunities and, therefore, the potential for downstream for beneficial products. Judicious use of the patent fund will, therefore, benefit the state of California and its citizens by facilitating the creation of new jobs through the formation of start-up companies, the growth of strong existing companies and the generation of new therapies and diagnostics.