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Technology Transfer Annual Report 2011

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Page 1: UC Technology Transfer Annual Report--FY11 Annual Re… · 2011 Technology Transfer Advisory Committee 2 ... (including new inventions added to existing agreements) increased by 8.4%

Technology Transfer Annual Report

2011

Page 2: UC Technology Transfer Annual Report--FY11 Annual Re… · 2011 Technology Transfer Advisory Committee 2 ... (including new inventions added to existing agreements) increased by 8.4%
Page 3: UC Technology Transfer Annual Report--FY11 Annual Re… · 2011 Technology Transfer Advisory Committee 2 ... (including new inventions added to existing agreements) increased by 8.4%

2011 Technology Transfer Advisory Committee 2

Message from the Executive Director 3

Technology Transfer Activity and Financial Information

Introduction 5

Technology Transfer Activity 6Invention Reporting 6Patent Activity 8Licensing and Related Activity 10

Startup Company Formation 16

Technology Transfer Income 18Total Income from Licensing 18Royalty and Fee Income 20Payments to Joint Holders 21Income Associated with Patent/Legal Expenses 21

Technology Transfer Expenses 22Legal and Other Direct Expenses 22

Income Distributions 24Inventor Shares 24General Fund Share 25Research Allocation Share 25Income after Mandatory Distributions 25

UC Technology Transfer on the Web 32

Table of Contents

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2

General oversight of the UC Technology Transfer Program is under the purview of the Technology Transfer Advisory Committee (TTAC)

This standing committee is chaired by the Executive Vice President for Academic Affairs, and meets periodically to advise the UC

President on technology transfer policy and guide the direction of the overall program

Barbara H. Allen-Diaz Associate Vice President, Agricultural & Natural Resources, UCOP

Kathryn A. Atchison Vice Provost, Intellectual Property and Industry Relations, and Associate Vice Chancellor for Research, UCLA

Steven V.W. Beckwith Vice President for Research and Graduate Studies, UCOP

Sherylle Mills Englander Director, Office of Technology & Industry Alliances, UCSB

Cheryl A. Fragiadakis Department Head, Technology Transfer and Intellectual Property Management, LBNL

Warren M. Gold Professor, Medicine, UCSF

Joel B. Kirschbaum Director, Office of Technology Management, UCSF

Charles F. Louis Vice Chancellor for Research, UCR

Bruce H. Margon Vice Chancellor for Research, UCSC

David McGee Executive Director, InnovationAccess, UCD

Richard Miller Associate Vice Chancellor for Research, UCM

Carol Mimura Assistant Vice Chancellor, Intellectual Property & Industry Research Alliances, UCB

Lawrence H. Pitts Provost and Executive Vice President for Academic Affairs, UCOP

Michael Reese Associate Vice President — Business Operations, UCOP

Hans Schöllhammer Professor, Global Economics & Management, UCLA

P. Martin Simpson, Jr. Managing Counsel, Office of the General Counsel, UCOP

William T. Tucker Executive Director, Innovation Alliances and Services, UCOP

Mark W. Warner Associate Vice Chancellor for Administration, UCI

2011 Technology Transfer Advisory Committee

FISCAL YEAR 2011

Office of the PresidentExecutive Vice President, Academic AffairsInnovation Alliances and Services1111 Franklin Street, 5th Floor, Oakland, CA 94607-5200

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3

The travails of the California state budget and its impact

on the University bring into sharp focus the important role

UC plays in supporting our technology-centric business

environment. From agriculture to aerospace, knowledge

created by UC’s research enterprise helps to ensure that our

state remains a leader in all aspects of its business endeavors

Technology transfer from around the UC system plays a vital

part in our efforts by making the latest patentable inventions

available to business. This past year, we inaugurated the first

systemwide Proof of Concept Grant program in association

with the Discovery Grant Program to fund key experiments

to demonstrate the commercial viability of inventions in our

portfolio. Based on experience at other universities, we predict

that this funding will lead to business relationships that will

translate these ideas into products and services

UC’s portfolio of active inventions increased by 4.6% to 10,341,

the number of U.S. patents owned by UC increased by 2.6% to

3,900, and the number of active license agreements increased

6.1% to 2,104. The number of inventions newly covered by a

utility license, option, or letter of intent during the fiscal year

(including new inventions added to existing agreements)

increased by 8.4% over the number covered during the previous

fiscal year. Total income from technology transfer (net of legal

settlements) available for distributions to inventors and the

University reached a record level of $164.6 million this year,

an increase of $71.8 million over the previous year. This record

total included $86.2 million derived from a prepayment of future

royalty income for anti-cancer drugs from UC Berkeley.

This Berkeley-based anti-cancer drug

points out an important reality of

technology transfer: it can take many

years and many twists and turns in the

life of a business for our early stage

inventions to make it to the market.

This potential life-extending product

started with a disclosure in 1996 and

received FDA approval 15 years later

in 2011. Technology transfer’s most important role is to move

as many ideas as possible out of the lab so that business can

invest their capital in search of successful products that can fully

realize the public benefits of UC research.

The Berkeley example also illustrates another important role

that UC plays: helping to launch and foster startup companies

based on UC inventions The original license to the underlying

Berkeley invention was to a small company which developed the

technology to the point that it was acquired by a more established

company The established company was subsequently acquired

by a large pharmaceutical company, principally because of the

potential for the final product. In fiscal year 2011, 58 startup

companies were founded on UC technologies, including 44

companies based in California We can’t predict their fate at

this early stage, but we are confident that many will become

successful, and some may even lay the foundation for new

industries that, as experience in other sectors shows, will

remain close to the site of their origin in California

Sincerely,

William Tucker Executive Director, Innovation Alliances and Services

Message from the Executive Director

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services4

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AnnuAl RepoRt 2011 5

Introduction

This document reports technology transfer activity and associated

financial results arising under the University of California’s Patent

Policy for fiscal year 2011 (FY11).

UC’s technology transfer program, administered by the offices

listed on the right, operates under a model of distributed

responsibilities and authorities that balances activities carried out

by the central UC Office of the President (UCOP) with activities

carried out by offices at the individual UC campuses and at the

Lawrence Berkeley National Laboratory (LBNL), a U.S. Depart-

ment of Energy (DOE) Laboratory managed by the University.

Under this distributed approach, the campuses and LBNL develop

and shape technology licensing programs to fit their unique

needs as put forth in memoranda of understanding negotiated

with UCOP. In all instances, UCOP retains responsibility for

certain functions, such as policy development and guidance, legal

oversight, legislative analysis, information management, and a

variety of other services in support of the overall program

UCOP’s activities are coordinated by the Innovation Alliances

and Services (IAS) unit within UCOP’s Office of Research and

Graduate Studies. Although LBNL manages most of its own

inventions, IAS oversees a small portfolio of older inventions

from LBNL and another DOE Laboratory historically associated

with UC, the Lawrence Livermore National Laboratory. Most of

these cases have co-inventors from the UC campuses.

This Annual Report covers two distinct technology portfolios: the

UC campus portfolio and the LBNL portfolio. Information relating

to these two portfolios is reported separately because certain

aspects of technology transfer are different at LBNL as compared

to the rest of the University. These differences include a reporting

period for LBNL that covers a fiscal year ending September 30,

2011, as compared to June 30, 2011, for the rest of the University.

Also, while LBNL manages intellectual property in a way that is

generally consistent with the principles and practices of the rest

of UC, there are some important operational differences, such as

LBNL’s greater use of in-house patent attorneys. A summary of

technology transfer activity and associated financial results for

both portfolios can be found in Exhibits 28 through 33.

University of California Technology Transfer Offices

UC Office of the President (UCOP) Innovation Alliances and Services (IAS)

UC Berkeley (UCB) Office of Intellectual Property & Industry Research Alliances (IPIRA)

UC Davis (UCD) UC Davis InnovationAccess

UC Irvine (UCI) Office of Technology Alliances (OTA)

UC Los Angeles (UCLA) Office of Intellectual Property & Industry Sponsored Research (OIP-ISR)

UC Merced (UCM) Office of Technology Transfer (OTT)

UC Riverside (UCR) Office of Technology Commercialization (OTC)

UC Santa Barbara (UCSB) Office of Technology & Industry Alliances (TIA)

UC Santa Cruz (UCSC) Office for Management of Intellectual Property (OMIP)

UC San Diego (UCSD) Technology Transfer Office (TTO)

UC San Francisco (UCSF) Office of Technology Management (OTM)

Lawrence Berkeley National Laboratory (LBNL) Technology Transfer and Intellectual Property Management (TTIPM)

TECHNOLOGY TRANSFER ACTIVITY AND FINANCIAL INFORMATION

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services6

Exhibit 1: Invention Disclosures1 Exhibit 2: Invention Disclosures Per $10 Million Research Expenditures1

Technology Transfer Activity

Invention Reporting

During the 12-month period ending June 30, 2011, 1,581

inventions were disclosed by faculty and researchers at the 10

UC campuses; an increase of 1.0% over the number of inventions

reported in FY10 (Exhibit 1). As shown in Exhibit 2, the number of

disclosures relative to research expenditures has remained stable

over time, currently at around 3.2 invention disclosures per

$10 million in research expenditures.

UC Irvine increased its new disclosures by 53 inventions (from

125 in FY10 to 178 in FY11). Other campuses with increases

included UC Berkeley, with an increase of 29 inventions (from

142 in FY10 to 171 in FY11); UC Riverside, with an increase of

20 inventions (from 54 to 74); UC Santa Cruz, with an increase of

28 inventions (from 31 to 59); UC San Diego, with an increase of

21 inventions (from 367 to 388); and UC San Francisco, with an

increase of 21 inventions (from 152 to 173). Exhibit 3 shows the

campus distribution of newly reported inventions for FY11.

0

200

400

600

800

1000

1200

1400

1600

FY11FY10FY09FY08FY07

1,565

1,4111,4821,497

1,581

0

1

2

3

4

FY11FY10FY09FY08FY07

3.193.42 3.46

3.27 3.29

1. Invention disclosures managed by IAS and by the campus offices. See Exhibit 32 for LBNL’s invention disclosures.

1. The number of inventions managed by IAS and by the campus offices that were disclosed during the fiscal year, divided by a five-year running average of the research expenditures data reported annually to the National Science Foundation/Division of Science Resources Statistics for its Survey of Research and Development Expenditures at Universities and Colleges. Five-year running averages are calculated as the sum of the expenditures for the fiscal year and the four preceding fiscal years, divided by five.

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AnnuAl RepoRt 2011 7

Exhibit 3: Invention Disclosures by Campus1

Year Ending June 30, 2011Exhibit 4: Total Active Inventions by Campus1

As of June 30, 2011

UCSF 173

UCB 171

UCD 184

UCI 178

UCLA 299

UCM 16

UCR 74

UCSB 64

UCSC 59

UCSD 388

UCB 1,277

UCD 1,047

UCI 869

UCLA 1,824

UCM 67

UCR 349

UCSB 590

UCSC 194

UCSD 2,840

UCSF 1,475

1. Inventions having inventors from more than one campus are counted multiple times, once for each campus with an inventor

During the 12-month period ending September 30, 2011, 154

inventions were disclosed by inventors at LBNL, an increase of

27 inventions from the 127 disclosed in FY10.

As of June 30, 2011, the systemwide invention portfolio

(excluding LBNL) was comprised of 10,341 active inventions. The

total for each campus invention portfolio is indicated in Exhibit 4.

1. Inventions associated with inventors from more than one campus are reported multiple times in this exhibit

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services8

Patent Activity

UC has received more U.S. patents than any other university in

the world A patent is a form of legal protection granted by the

U.S. or a foreign government that gives a patent holder the

right to exclude others from making, using, selling, offering for

sale, or importing the patented invention for a defined period of

time, generally 20 years from the date the patent application

is first filed. Both U.S. and foreign patent rights often must be

pursued for an invention in order to maximize the likelihood of

successful commercialization

Acquiring adequate patent coverage for all aspects of a new

technology may require more than one patent filing for a given

invention. Often, a first filing in the U.S. takes the form of a

provisional application, a type of filing which preserves U.S.

patent rights and secures the benefits of an early filing date

for a period of 12 months at a relatively low cost as compared

to the cost of filing a regular application. A provisional filing is

likely to be made during the time period when the invention is

being marketed to potential licensees. Once a license agreement

is in place, the licensee usually bears the cost of seeking and

maintaining patent protection

Secondary filings frequently lead to the issuance of multiple

patents related to a single invention. In addition to being needed

for converting a provisional filing into a regular filing, secondary

filings are often necessary in order to cover all aspects of the

invention and to secure the broadest possible patent protection

for it, and may include the filing of divisional applications and of

continuation applications where new matter is added. Several

years will elapse between a filing and the issuance of a patent

by the patent office.

U.S. Applications FiledFirst Filings—Provisional 686First Filings—Regular 15Secondary Filings—Provisional 137Secondary Filings—Regular 447Total 1,285

Subtotal—First Filings 701Subtotal—Secondary Filings 584Subtotal—Provisional Filings 823Subtotal —Regular Filings 462

First Foreign Filings2 261

U.S. Patents Issued 343

Foreign Patents Issued 364

1. Patent activity related to inventions managed by IAS and by the campus offices. See Exhibit 32 for LBNL’s patent activity.

2. An invention is counted only one time in the “First Foreign Filings” category regardless of the number of countries in which foreign patent protection is sought

Exhibit 5: Patent Activity1

Year Ending June 30, 2011

1. U.S. patents issued related to inventions managed by IAS and by the campus offices. See Exhibit 32 for LBNL’s U.S. patents issued.

Exhibit 6: U.S. Patents Issued1

0

50

100

150

200

250

300

350

FY11FY10FY09FY08FY07

224244

297

331343

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AnnuAl RepoRt 2011 9

Exhibit 5 presents the patent activity at the 10 UC campuses

for FY11. The number of U.S. first filings increased by 9.0%

compared to 643 in FY10, while the number of secondary filings

increased by 8.1% from 540 in FY10. Foreign patents issued

increased by 10.3% from 330 in FY10.

Exhibit 6 shows the number of U.S. patents issued in the past

five years for campus inventions, with the number of U.S. patents

issued increasing 15.5% (from 297 to 343) in FY11 as compared

to FY10.

LBNL’s patent activity is shown in Exhibit 32. U.S. patent filings

for the fiscal year ending September 30, 2011, increased by 5.0%

over FY10, from 141 to 148. These included 66 first filings, all

of which were provisional filings; and 82 secondary filings, of

which two were provisional filings. A total of 36 U.S. patents

were issued during the fiscal year ending September 30, 2011

for LBNL inventions, as compared to 27 U.S. patents issued for

LBNL inventions in FY10.

At the end of FY11, there were 3,900 active U.S. and 3,729 active

foreign patents in the systemwide portfolio for its campus

inventions (Exhibit 7). The number of U.S. patents in each campus

portfolio is presented in Exhibit 8. UC Merced, which received

its first invention disclosure in FY06, had patents issued for its

inventions for the first time in FY11.

1. Total active patents at year-end related to inventions managed by IAS and by the campus offices.

Exhibit 7: Total Active Patents1

0

500

1000

1500

2000

2500

3000

3500

4000

FY11FY10FY09FY08FY07

3,546 3,597 3,696 3,6593,6173,8023,757

3,4253,729

3,900

U.S. Foreign

Exhibit 8: Total Active U.S. Patents by Campus1

As of June 30, 2011

1 Patents associated with inventors from more than one campus are reported multiple times in this exhibit

UCB 653

UCD 375

UCI 315

UCLA 631

UCM 2

UCR 98

UCSB 367

UCSC 85

UCSD 767

UCSF 678

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services10

Licensing and Related Activity

A license agreement grants a licensee access to a University

invention in exchange for the licensee’s commitment to further

develop and commercialize the invention and to assist UC in

gaining patent protection for the invention, often in multiple

countries. The provisions of a license define the rights and

responsibilities of the two parties. In managing these license

agreements, UC must collect monies when due and monitor

progress to ensure that the licensees exercise due diligence in

developing inventions toward commercial application

Utility licenses generally cover useful processes, machines,

manufactured items, or compositions of matter protected by

utility patents, and are often licensed exclusively. In a typical

utility license agreement, UC grants to a licensee access to

an early stage invention that is protected by a UC patent or

patent application. In other instances, such licenses grant

property rights to materials developed by UC. In exchange, the

licensee makes a commitment to commercialize the invention

and to pay UC agreed-upon fees, including reimbursement of

patent expenses and royalty payments when products reach

the marketplace. The specific terms of the agreement are

determined through negotiations

In contrast, plant licenses cover sexually and asexually reproduced

plant varieties, and most are licensed non-exclusively to multiple

growers and distributors worldwide. UC works closely with some

of its foreign plant licensees to explore opportunities for gaining

intellectual property protection and commercializing selected

strawberry and other plant cultivars in countries where such

intellectual property rights had not been available previously

Agreements IssuedLetters of Intent 159Options 38Utility Licenses 217Plant Licenses 37

Total Active Licenses (year-end)Utility Licenses 1,477Plant Licenses 627

Exhibit 9: Licensing Activity1

Year Ending June 30, 2011

1. Licensing activity related to inventions managed by IAS and by the campus offices. See Exhibit 32 for LBNL’s licensing activity.

0

100

200

300

400

500

FY11FY10FY09FY08FY07

37%

6%57%

42%

13%

45%12%

49% 46%

42%

9%

52%

39%

Letters of Intent

Options

Utility Licenses

43%

8%

414

367357 340 339

10-year running average of all Utility Agreements2

Exhibit 10: Utility Agreements Issued1

1. Utility licenses, options and letters of intent issued during the fiscal year related to inventions managed by IAS and by the campus offices.

2. Sum of utility licenses, options, and letters of intent issued during the fiscal year and the nine preceding fiscal years, divided by 10.

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AnnuAl RepoRt 2011 11

For utility inventions, certain other shorter-term agreements are

sometimes made prior to licensing A secrecy agreement is used

in conjunction with marketing and affords a potential licensee

access to confidential information that assists the company in

determining if it has an interest in pursuing a license for a given

technology. In FY11, UC entered into 598 secrecy agreements

for its campus inventions (LBNL entered into 94 secrecy

agreements during its fiscal year).

A letter of intent is a type of agreement generally used to confirm

a company’s intent to negotiate a license and often commits a

company to pay certain fees or patent costs while negotiations are

underway. Option agreements, playing a similar role to letters of

intent, offer a more detailed and formal commitment to protect

a potential licensee’s interest in an invention while the potential

licensee performs in-depth technical or marketing research.

Exhibit 9 shows licensing activity for campus inventions in FY11.

With regard to agreements, UC entered into 451 new licenses

and related technology transfer agreements, including 217

utility licenses, 37 plant licenses, 38 options and 159 letters

of intent. During its fiscal year, LBNL entered into five utility

license agreements and 10 option agreements (Exhibit 32).

1. The number of utility licenses, options and letters of intent issued during the fiscal year related to inventions managed by IAS and by the campus offices, divided by a five-year running average of the research expenditures data reported annually to the National Science Foundation/Division of Science Resources Statistics for its Survey of Research and Development Expenditures at Universities and Colleges Five-year running averages are calculated as the sum of the expenditures for the fiscal year and the four preceding fiscal years, divided by five.

Exhibit 11: Utility Agreements Issued Per $10 Million Research Expenditures1

0.0

0.2

0.4

0.6

0.8

1.0

FY11FY10FY09FY08FY07

0.830.89

0.820.75

0.71

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services12

Overall, the number of utility agreements (utility licenses,

options and letters of intent) issued reached a new all-time

record, increasing from 339 in FY10 to 414 in FY11 (Exhibit 10).

The number of utility agreements issued in recent years has

remained above their 10-year running averages. The proportion

of licenses among these utility agreements increased from 42%

in FY10 to 52% in FY11, while the other categories of utility

agreements declined. As shown in Exhibit 11, the number of

utility agreements relative to research expenditures reversed a

recent declining trend, increasing from 0.71 utility agreements

per $10 million in research expenditures in FY10 to 0.83 in FY11.

Exhibit 12 shows the five-year trend in the number of utility

licenses issued, with the 217 utility licenses issued in FY11

representing a 52.8% increase over FY10. Of these 217 utility

licenses, 102 were exclusive licenses and 115 were non-

exclusive The proportion of exclusive utility licenses among all

utility licenses issued remained unchanged from its FY10 value

of 53% in FY11.

As of June 30, 2011, the systemwide portfolio (excluding LBNL)

totaled 2,104 active licenses, an increase of 6.1% over the total

at the close of FY10. The LBNL portfolio totaled 22 licenses as of

September 30, 2011.

Exhibit 12: Utility Licenses Issued1

1. Utility licenses issued during the fiscal year related to inventions managed by IAS and by the campus offices.

0

50

100

150

200

250

FY11FY10FY09FY08FY07

Non-exclusive Utility Licenses

Exclusive Utility Licenses

47%

53% 60%

47%

40%53%

47%

53%

159 148 142

217

55%

45%

209

Exhibit 13: Total Active Utility Licenses1

1. Total active utility licenses at year-end related to inventions managed by IAS and by the campus offices.

0

200

400

600

800

1000

1200

1400

1600

FY11FY10FY09FY08FY07

1,3361,359 1,3711,315

1,477

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AnnuAl RepoRt 2011 13

Exhibits 13 and 14 show the five-year trend in the total number

of active utility and plant licenses for campus inventions The

total number of active utility licenses increased 7.7% to 1,477

at the close of FY11 as compared to the close of FY10. The total

number of active plant licenses continued their upward trend,

increasing 2.5% to 627 at the close of FY11 as compared to the

close of FY10.

Exhibit 15 shows the total number of active utility licenses

associated with each campus. In regard to the distribution of

plant licenses among the campuses, UC Davis had 469 active

plant licenses at the close of FY11 and UC Riverside had 177.

Exhibit 14: Total Active Plant Licenses1 Exhibit 15: Total Active Utility Licenses by Campus1

Year Ending June 30, 2011

0

100

200

300

400

500

600

700

FY11FY10FY09FY08FY07

596554

612

504

627

1. Total plant licenses at year-end related to inventions managed by IAS and by the campus offices.

UCB 298

UCD 125

UCI 98

UCLA 242

UCM 2

UCR 38

UCSB 52

UCSC 13

UCSD 300

UCSF 354

1. Licenses associated with inventors from more than one campus are reported multiple times in this exhibit

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services14

Although a new invention is typically the subject of a new

agreement when there is commercial interest in it, various

related inventions can be the subject of one agreement and

new inventions can also be added to existing agreements. In

particular, since UC inventors often make follow-on inventions

that are closely related to their earlier work, it is common for

existing utility licenses and options to be amended in order

to incorporate these follow-on inventions. In FY11, new or

amended utility licenses covered 385 campus inventions, while

new or amended options covered 114 campus inventions

(Exhibit 16).

As shown in Exhibit 17, the total number of campus inventions

covered under utility agreements (including licenses, options

and letters of intent) at the close of the fiscal year was 2,552, a

decrease of 3.6% from the close of FY10. Exhibit 18 shows the

campus distribution of these covered inventions

Number of Inventions CoveredLetters of Intent 258Options 114Utility Licenses 385Plant Licenses 30

Exhibit 16: Inventions Newly Covered Under Agreements1

Year Ending June 30, 2011

1. Inventions managed by IAS and by the campus offices that were newly subject to a license, option or letter of intent during the fiscal year.

Exhibit 17: Total Inventions Covered Under Utility Agreements1

1. Total number of inventions managed by IAS and by the campus offices that are subject to one or more utility licenses, options or letters of intent as of the close of the fiscal year. Inventions associated with multiple utility agreements are counted only once in this exhibit

0

500

1000

1500

2000

2500

3000

FY11FY10FY09FY08FY07

2,591 2,5522,431

2,234

2,648

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AnnuAl RepoRt 2011 15

Exhibit 18: Total Inventions Covered Under Utility Agreements by Campus1

As of June 30, 2011

1. Total number of inventions that are subject to one or more utility licenses, options or letters of intent as of the close of the fiscal year. Inventions associated with inventors from more than one campus are reported multiple times in this exhibit. Inventions associated with multiple utility agreements are counted only once in this exhibit

UCB 341

UCD 212

UCI 233

UCLA 530

UCM 5

UCR 82

UCSB 241

UCSC 33

UCSD 439

UCSF 473

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services16

A technology transfer agreement such as a license, an option

or a letter of intent can be significant in spurring formation of

new startup companies, with invention rights providing an

asset that is highly attractive to venture capitalists and angel

investors. In the case of startups involving UC technologies,

inventors also frequently play a critical role in founding the

company. Furthermore, several UC campuses have programs

for facilitating new company formation

Since 1976, transfer of UC inventions has played a role in the

founding of nearly 600 startup companies. Exhibit 19 shows

recent startup company formation involving UC inventions,

with 58 UC startup companies formed in FY11. Although this

figure decreased 22.7% from the 75 UC startup companies

formed in FY10, the 58 companies formed in FY11 remained

well above the 10-year running average. Furthermore, the

10-year running average of UC startup companies formed

continued to increase. Exhibit 20 shows FY11 startup company

formation by campus, with UCLA accounting for nearly one-third

of FY11’s activity.

Startups based on UC technologies play an important role in

California’s economy, especially in biotechnology. A 2003 study

of California’s biotech firms found that UC scientists founded

one-third of them and that one-fourth of all biotech firms in the

U.S. are located within 35 miles of a UC campus.* The map on

the next page shows the locations of UC campuses and of the

44 California-based UC startups that were formed in FY11. Of

these 44 startup companies, 43 of them (97.7%) were located

within 35 miles of a UC campus, and 41 of them (93.2%) were

within 20 miles.

Startup Company Formation

Exhibit 20: Startup Companies Formed by Campus1

Year Ending June 30, 2011Exhibit 19: Startup Companies Formed1

* Yarkin, C., & Murray, A. (2003). Assessing the Role of the University of California in the State’s Biotechnology Economy: Heightened Impact Over Time. UC Industry-University Cooperative Research Program Working Paper Series.

1. Year of startup company formation based on the execution date of the first license, option or letter of intent granting rights to a UC invention managed by IAS or by a campus office. Prior to FY10, some campuses did not report company formation based on the execution of letters of intent

1. Year of startup company formation based on the execution date of the first license, option or letter agreement. Startup companies formed with inventors from more than one campus are reported multiple times in this exhibit

0

20

40

60

80

FY11FY10FY09FY08FY07

49

58

48

41

75

Startup companies formed

10-year running average of startup companies formed

UCB 5

UCD 5

UCI 3

UCLA 19

UCM 1

UCR 5

UCSB 4

UCSC 1

UCSD 13

UCSF 3

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Berkeley

Merced

Los Angeles

San Diego

Santa Barbara

Irvine

Riverside

San Francisco

Santa Cruz

Davis

UC Campus Startup

UC STARTUPS IN CALIFORNIA

FY2011

S.F. / SACRAMENTO / SANTA CRUz REGIONS

15SANTA BARBARA / L.A. BASIN

19SAN DIEGO REGION

10

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services18

Total Income from Licensing

Total income from licensing for UC’s campus inventions—the

income the University receives from its technology agreements

with industry—was $202.2 million in FY11 (Exhibit 21). This

FY11 total licensing income represents a 61.4% increase over

FY10 total licensing income; the FY11 total includes an

$87.5 million prepayment of future royalty income for a UC

Berkeley invention, Immune Activator for Treating Cancer

There are two components of total licensing income The royalty

and fee income component includes: agreement issue fees,

maintenance fees and other “milestone” payments received on

specific dates or at specific points in the product development

process These payments encourage companies to diligently

pursue product commercialization. Generally, earned royalties

account for the largest portion of royalty and fee income and are

received once products and processes using UC inventions reach

the marketplace. Because of the extraordinary nature of the

prepayment of future royalty income for the Immune Activator

for Treating Cancer invention in FY11, it is shown separately in

yellow from other royalty and fee income in Exhibit 21. Reim-

bursements, the second component of total licensing income,

represent the recovery of patent and legal expenses

Technology Transfer Income

Exhibit 21: Total Licensing Income1

(Millions)

1. This exhibit shows total licensing income for inventions managed by IAS and by the campus offices (see Exhibit 33 for LBNL’s royalty and fee income). Total licensing income consists of two components: royalty and fee income, and patent/legal reimbursements

2. The total licensing income reported for FY08 ($128.4 million) does not include up-front payments and reimbursements of $42.6 million from the settlement of litigation.

3. The total licensing income reported for FY09 ($121.4 million) does not include up-front payments and reimbursements of $4.6 million from the settlement of litigation.

4. Since the $87.5 million prepayment of future royalty income in FY11 is an extraordinary event, it is shown apart from other royalty and fee income as a separate component in this exhibit

0

25

50

75

100

125

150

175

200

FY114FY10FY093FY082FY07

Prepayment of future royalty income4

Patent/legal reimbursements

Royalty and fee income

24.2

104.298.7

104.4

22.7 20.8

94.5

20.1

$128.4$121.4 $125.3

$200.2

87.5

97.6

19.3

$116.9

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AnnuAl RepoRt 2011 19

In the case of pharmaceutical and medical device inventions,

successful commercialization requires completion of a lengthy

multi-stage process for securing regulatory approval of a

licensee’s products from the U.S. Food and Drug Administration.

Thus, the introduction of a new FDA-approved product into the

marketplace is a significant event. In March of 2011, the Immune

Activator for Treating Cancer invention achieved this status with

the FDA’s approval of Bristol-Myer Squibb’s YERVOY™ for the

treatment of late-stage metastatic melanoma.* This invention

also ranked among the top earning UC inventions of FY11 as

noted in the next section

Exhibit 22 shows the amount each campus contributed to

FY11 total licensing income. Because of the large prepayment

of future royalty income, UC Berkeley’s contribution to total

licensing income rose from $6.8 million in FY10 to $95.3 million

in FY11. Other campuses with increases from FY10 to FY11

were UC Davis ($10.4 million to $11.1 million), UC Irvine

($5.3 million to $7.4 million), UC Riverside ($3.6 million to

$6.1 million), UC Santa Barbara ($4.3 million to $5.3 million),

and UC San Francisco ($29.1 million to $32.4 million).

Exhibit 22: Total Licensing Income by Campus1

Year Ending June 30, 2011 (Thousands)

* YERVOY™ is a trademark of Bristol-Myers Squibb.

1. Total licensing income consists of two components: royalty and fee income, and patent/legal reimbursements.

2. The total licensing income reported for UC Berkeley includes an $87.5 million prepayment of future royalty income

3. Total licensing income, primarily from a portfolio of IAS-managed DOE Laboratory inventions, most disclosed prior to the establishment of the Laboratory-based licensing offices.

UCB2 $95,319

UCD $11,120

UCI $7,354

UCLA $21,241

UCM $53

UCR $6,149

UCSB $5,348

UCSC $125

UCSD $18,212

UCSF $32,396

Other3 $4,876

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services20

Royalty and Fee Income

Royalty and fee income for campus inventions in the fiscal year

ending June 30, 2011, was $182.0 million, which was derived

from 1,873 inventions. This income included an $87.5 million

prepayment of future royalty income for the Immune Activator

for Treating Cancer invention. As compared to FY10, royalty and

fee income increased by $77.6 million.

In FY11, $18,617 was realized from the sale of equity previously

acquired under nine license agreements. Because of these trans-

actions and the approval of 17 agreements in FY11 that included

equity as partial consideration, at the end of the fiscal year UC held

equity related to technology transfer activities in 122 companies.

Royalty and fee income from the top five commercialized UC

inventions (i.e., inventions that had reached the marketplace)

contributed $123.2 million in FY11, accounting for 67.7% of

total royalty and fee income (Exhibit 23). The top 25 inventions

collectively accounted for $155.4 million or 85.3% of total

royalties and fees. Inventions appearing on this list for the

first time include Immune Activator for Treating Cancer from

UC Berkeley, Barrier Repair Lipids from UC San Francisco,

San Andreas Strawberry from UC Davis, and Diagnostics for

Gastrointestinal Disorders from UCLA.

For the fiscal year ending September 30, 2011, LBNL-managed

inventions generated $2.3 million in royalty and fee income for

licenses that are under the patent policy, an increase of 18.7%

over the prior year. Copyright income for LBNL increased 95.1%

from $689,000 to $1.34 million as compared with FY10 (Exhibit 33).

Exhibit 23: UC Top-Earning Inventions1

Year Ending June 30, 2011 (Thousands)

Royalty & Invention (Campus, Year Disclosed) Fee Income

Immune Activator for Treating Cancer (BK, 1996) $87,5162

Hepatitis-B Vaccine (SF, 1979 & 1981) $13,020

Treatment of Intracranial Aneurysms (LA, 1989) $10,628

EGF Receptor Antibodies (SD, 1983) $7,058

Bovine Growth Hormone (SF, 1980) $5,000

Subtotal (Top 5 Inventions) $123,222

Chromosome Painting (LLNL, 1985, 1989 & 1995) $4,015

Barrier Repair Lipids (SF, 1991) $3,695

Firefly Luciferase (SD, 1984) $2,962

Camarosa Strawberry (DA, 1992) $2,360

Detection of Mycoplasma (IR, 1984) $2,351

Dynamic Skin Cooling Device (IR, 1993) $2,234

Albion Strawberry (DA, 2004) $2,136

Energy Transfer Primers (BK, 1994) $2,073

Tango Mandarin (RV, 2005) $1,851

Biodegradable Implant Coils (LA, 1998) $1,632

Optical Network Switch (DA, 1997) $1,193

Universal Oligonucleotide Spacer (BK, 1996) $777

San Andreas Strawberry (DA, 2008) $704

Ventana Strawberry (DA, 2001) $676

Vesicle Loading Method (LBNL, 1984) $660

Magnetic Resonance Imaging (SF, 1976) $618

Comparative Genomic Hybridization (SF, 1992) $564

Genomic Microarrays (SF, 1995) $564

Diagnostics for Gastrointestinal Disorders (LA, 1997, 99, 00 & 01) $563

Aids for Learning Disabled (SF, 1997 & 1999) $507

Subtotal (Top 25 Inventions) $155,357

Total (All Inventions) $182,050

% of Total from Top 5 Inventions 67.7%

% of Total from Top 25 Inventions 85.3%

1. This list is limited to revenue-generating inventions that have been commercialized. The royalty and fee income shown here excludes patent/legal reimbursements.

2. This royalty and fee income includes an $87.5 million prepayment of future royalty income

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AnnuAl RepoRt 2011 21

Payments to Joint Holders

When an invention results from collaboration between UC

and non-UC researchers, multiple entities may become joint

holders of the invention-related patents. In these instances,

interinstitutional agreements are often negotiated to establish

which entity will manage the patenting and licensing of the

invention and the collection and distribution of invention income;

such collaborations are relatively common. In FY11, 257 of 1,581

new campus disclosures (16.3%) included non-UC inventors and

76 new interinstitutional agreements were signed, an 11.8%

increase over FY10.

In FY11, $7.8 million was redistributed to other entities for campus

inventions covered by interinstitutional and other income-sharing

agreements. For financial reporting purposes, these monies are

treated as an offset to income. As shown in Exhibit 24, these

redistributions increased from FY10 to FY11 by $2.2 million.

Income Associated with Patent/Legal Expenses

Because inventions are highly technical, UC uses specialized

outside attorneys to draft and secure patent protection both in

the U.S. and abroad. Costs to secure, maintain and protect patent

rights associated with an invention are substantial. Obtaining a

licensee’s commitment to reimburse these costs is a high priority

objective of license negotiations, and reimbursements, therefore,

are considered part of total licensing income. In FY11, UC

received $20.1 million in patent/legal expense reimbursements

related to campus inventions. This is a decrease of 3.4% from

reimbursements received for such expenses in FY10.

Exhibit 24: Payments to Joint Holders1

(Millions)

$7.8

$6.1 $6.2$5.6

$4.3

0

2

4

6

$8

FY11FY10FY09FY08FY072

1. Payments to joint-holders related to inventions managed by IAS and by the campus offices.

2. The payments to joint holders reported for FY07 ($4.3 million) do not include payments of $0.5 million for the settlement of litigation.

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services22

Legal and Other Direct Expenses

Gross legal and other direct expenses totaled $28.5 million in

FY11 for campus inventions (Exhibit 25), excluding $1.3 million

in extraordinary expenses associated with the prepayment of

future royalty income for the Immune Activator for Treating

Cancer invention. Most technology transfer legal expenses are

associated with patent prosecution and maintenance, defined

as payments to outside counsel for drafting patent applications

as well as other costs for securing and maintaining patent

protection for UC inventions. Other major categories of legal

expenses include those for patent interference proceedings,

enforcement of patent rights against infringement, and

defense against litigation in civil proceedings

The extent of reimbursement of legal and other direct

expenses is a negotiated term of a license agreement. In FY11,

reimbursements of legal expenses for campus inventions totaled

$20.1 million, resulting in net legal and other direct expenses of

$8.3 million (Exhibit 25) when excluding extraordinary expenses

for the Immune Activator for Treating Cancer invention These

reimbursements covered 70.8% of gross legal and other direct

expenses when excluding extraordinary expenses for the

Immune Activator for Treating Cancer invention

Exhibit 25: Legal Expenses1

(Millions)

Technology Transfer Expenses

1. Legal and other direct expenses related to inventions managed by IAS and by the campus offices.

2. The gross and net legal and other direct expenses reported for FY08 do not include $5.8 million in gross legal expenses and $5.2 million in net legal expenses for the settlement of litigation

3. The gross and net legal and other direct expenses reported for FY09 do not include a credit of $0.9 million against gross legal expenses and do not include $1.2 million in net legal expenses for the settlement of litigation

4. The gross and net legal and other direct expenses reported for FY11 do not include $1.3 million in gross and net legal and other direct expenses associated with an $87.5 million prepayment of future royalty income.

Gross legal and other direct expenses

Net legal and other direct expenses

0

10

20

30

$40

FY114FY10FY093FY082FY07

$32.4

$26.9 $28.5

$35.1$32.8

$9.7

$6.0$8.3

$15.8

$8.7

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AnnuAl RepoRt 2011 23

Exhibit 26: Net Legal Expenses by Category1

Year Ending June 30, 2011

Patent Prosecution &Maintenance77.2%

Other5.1%

Interference & Infringement1.9%

Expenses for Royalty Prepayment2

13.8%

Legal Defense2.0%

1. Net legal and other direct expenses related to inventions managed by IAS and by the campus offices.

2. Net legal and other direct expenses associated with an $87.5 million prepayment of future royalty income

Exhibit 26 provides a breakdown of FY11 net legal and other

direct expenses by different categories of expenditure,

including the extraordinary expense Patent prosecution and

maintenance accounted for $7.4 million of net legal and other

direct expenditures (77.2%), while the $1.3 million in expenses

associated with the prepayment of future royalties accounted

for a 13.8% share. Legal defense expenditures accounted for

$0.2 million (2.0%), interference and infringement actions

accounted for $0.2 million (1.9%), and other direct expenses

accounted for $0.5 million (5.1%). As was the case in FY10,

patent prosecution activities accounted for a relatively large

percentage of net legal and other direct expenditures in FY11,

reflecting the relatively greater reductions in expenditures that

have occurred in other expenditure categories since FY07.

It is anticipated that UC’s licensing personnel will continue to

be successful in negotiating reimbursement of a substantial

amount of patent costs. Nonetheless, it is expected that there

will continue to be significant legal and other direct expenses

associated with patenting and litigation as the technology

transfer program matures, patent activities continue to

accelerate and relationships with inventors, sponsors and

licensees become increasingly complex

Information on LBNL patenting and licensing expenses is not

provided in this report. In-house patent expenses and operating

expenses related to the licensing function are allowable costs

under UC’s current contract with DOE and are not readily

separable from other LBNL expenses.

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services24

The income derived from royalties and fees, less the sum of

payments to joint holders and less net legal and other direct

expenses, is distributed in various shares as required under UC

and campus policies. In FY11, income distributions related to

campus inventions totaled $164.6 million, distributed as shown

in Exhibit 27. A total of $86.2 million of these income distributions

arose from the prepayment of future royalty income for the

Immune Activator for Treating Cancer invention, with the

balance of $78.4 million in income distributions coming from

all other inventions

Income Distributions

Exhibit 27: Income Distributions1

(Millions)

0

30

60

90

120

150

180

FY114FY10FY093FY082FY07

30.0

35.6

3.210.0

38.2

35.2

4.5

13.6

38.9

30.2

4.5

38.8

12.1

1.4

39.9

9.2

24.8

2.5

Income after mandatory distributions

Inventor shares

Research allocation share

General fund share

10.7

38.8

$89.4 $82.8$92.8

$78.4

54.1

27.2

78.8

$164.6

$77.0

3.0

Inventor Shares

UC Patent Policy grants inventors the right to receive a portion

of net income accruing to individual inventions. In FY11, 2,153

inventors received a total of $54.1 million for IAS- and campus-

managed inventions, including $14.2 million for the Immune

Activator for Treating Cancer invention and $39.9 million for all

other inventions. Under current policy, inventors receive 35% of

net invention income. Inventor shares are calculated based on

invention income and expense activity through the close of the

prior fiscal year. Thus, most of the inventor shares distributed

in FY11 were calculated based on invention financial activity

through June 30, 2010. Trends related to the amount of inventor

share payments are reflected in Exhibit 27.

1. Income distributions related to inventions managed by IAS and by the campus offices.2. The distributions reported for FY08 do not include a general fund distribution of

$6.0 million, inventor share distributions of $12.9 million or income after mandatory distributions of $18.0 million related to the settlement of litigation.

3. The distributions reported for FY09 do not include a general fund distribution of $0.8 million, inventor share distributions of $2.3 million or income after mandatory distributions of $2.4 million related to the settlement of litigation.

4. The distributions reported for FY11 are shown without (left half-column) and with (right half-column) $86.2 million in distributions arising from an $87.5 million prepayment of future royalty income

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AnnuAl RepoRt 2011 25

General Fund Share

The portion of UC’s technology transfer income allocated to

the UC General Fund totaled $27.2 million in FY11 (Exhibit 27),

including an allocation of $18.0 million from the Immune

Activator for Treating Cancer’s income and an allocation of

$9.2 million from all other inventions. The General Fund share is

equal to 25% of the amount remaining after deducting payments

to joint holders, net expenses and inventor share payments from

royalty and fee income

Research Allocation Share

The 1997 Patent Policy requires that for inventions disclosed on

or after October 1, 1997 by inventors subject to this policy, 15%

of net royalty and fee income from each invention be designated

for research-related purposes on the campus or Laboratory

where the inventor worked at the time the invention was

disclosed. The research allocation for campus-related inventions

totaled $4.5 million in FY11 (Exhibit 27).

Income after Mandatory Distributions

All income derived from royalties and fees remaining after

deductions for payments to joint holders, net legal and direct

expenses, and other distributions, is available to the campuses

subject to certain other campus-specific debits and credits for

patent-related activities (not shown). This category combines

expenditures that Annual Reports prior to FY07 showed

separately as “Operating Expense” and “Campus Share”

distributions. Income after mandatory distributions totaled

$78.4 million in FY11 (Exhibit 27), including $54.0 million

after mandatory distributions for the Immune Activator for

Treating Cancer invention and $24.8 million after mandatory

distributions for all other inventions

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services26

Exhibit 28: Systemwide Technology Transfer Activity FY07 – FY111

Fiscal Years Ending June 30

Fiscal Year Comparisons FY07 FY08 FY09 FY10 FY11 % CHANGE (FY10-FY11)

InventionsInventions Disclosed 1,411 1,497 1,482 1,565 1,581 1.0%Total Active Inventions (year-end) 8,272 8,953 9,343 9,883 10,341 4.6%

Patent ProsecutionU.S. Applications Filed First Filings 644 623 651 643 701 9.0% Secondary Filings 564 530 524 540 584 8.1% Total 1,208 1,153 1,175 1,183 1,285 8.6%U.S. Patents Issued 331 224 244 297 343 15.5%Total Active U.S. Patents (year-end) 3,425 3,546 3,617 3,802 3,900 2.6%

First Foreign Filings 315 276 277 272 261 -4.0%Total Active Foreign Patents (year-end) 3,757 3,597 3,696 3,659 3,729 1.9%

LicensingAgreements Issued Letters of Intent 136 151 166 156 159 1.9% Options 22 47 26 41 38 -7.3% Utility Licenses 209 159 148 142 217 52.8% Plant Licenses 73 101 63 69 37 -46.4%

Total Active Agreements (year-end) Options 69 91 102 113 109 -3.5% Utility Licenses 1,315 1,359 1,336 1,371 1,477 7.7% Plant Licenses 504 554 596 612 627 2.5%

Inventions Covered Under Agreements Inventions Covered Under Letters of Intent 253 223 290 238 258 8.4% Inventions Optioned 59 157 80 102 114 11.8% Inventions Licensed (utility) 404 369 356 316 385 21.8% Inventions Licensed (plant) 37 24 38 20 30 50.0%

Total Inventions Covered Under Agreements (year-end) Inventions Covered Under Letters of Intent2 409 418 493 469 463 -1.3% Inventions Optioned2 156 242 265 288 213 -26.0% Inventions Licensed (utility)2 1,772 1,910 2,001 2,039 2,024 -0.7% Inventions Licensed (plant) 95 98 105 114 114 0.0%

Startup Companies Startup Companies Formed 41 48 493 75 58 -22.7%

1. Technology transfer activity related to a small number of DOE Laboratory inventions managed by IAS is also reflected in these figures. See Exhibit 32 for technology transfer activity related to inventions managed by LBNL’s technology transfer office.

2. An invention may be covered by more than one type of utility agreement (utility license, option and letter of intent), so the sum of these figures for a fiscal year may exceed the values reported in Exhibit 17.

3. The number of startup companies formed in FY09 has been adjusted upwards in this exhibit from the 47 companies reported in the FY09 Annual Report to 49 to include two additional companies that were founded based on UCSF inventions.

Exhibit 28 reports only technology transfer activity governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. It does not include copyright and material transfer agreement activity that is also carried out by the campus offices.

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AnnuAl RepoRt 2011 27

1. Financial activity related to a small number of DOE Laboratory inventions managed by IAS is also reflected in these figures. See Exhibit 33 for financial activity related to inventions managed by LBNL’s technology transfer office.

2. These figures have been corrected from those reported in the FY09 Annual Report.

Exhibit 29 only reports financial activity (not adjusted for legal settlements) governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. Campus offices also generate income through copyright licenses, material transfer agreements and through research support committed in conjunction with technology transfer activities This income is not included in this report

Exhibit 29: Systemwide Financial Activity FY07 – FY111

Fiscal Years Ending June 30(Thousands)

Fiscal Year Comparisons FY07 FY08 FY09 FY10 FY11 % CHANGE (FY10-FY11)

Income from Royalties and Fees $97,594 $146,314 $103,105 $104,435 $182,050 74.3%Less: Payment to Joint Holders (4,798) (6,114) (6,217) (5,641) (7,827) 38.8% Adjusted Gross Income (A) 92,796 140,200 96,888 98,794 174,222 76.3%

Legal and Other Direct Expenses (35,087) (38,602) (31,486) (26,866) (29,784) 10.9%Less: Reimbursements 19,292 24,668 22,946 20,825 20,142 -3.3% Net Legal Expenses (B) (15,795) (13,934) (8,540) (6,040) (9,642) 59.6%

Income Available for Distribution (A+B) 77,001 126,226 88,347 92,753 164,580 77.4%

Income DistributionsInventor Shares (C) 35,562 48,087 41,106 38,876 54,101 39.2%Research Allocation Share (D) 1,380 2,475 3,160 2,984 4,470 49.8%General Fund Share (E) 10,045 19,545 11,4992 12,087 27,159 124.7%Income after Mandatory Distributions (F) 30,014 56,160 32,5832 38,806 78,850 103.2%Total Income Distributions (C+D+E+F) 77,001 126,226 88,3472 92,753 164,580 77.4%

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services28

1 Technology transfer activity related to inventions having one or more inventors at each campus A number of inventions involve inventors from multiple UC campuses Technology transfer activity statistics for these inventions are reported multiple times, once for each campus involved. Thus, for any given measure of activity, the sum of individual campus numbers may be greater than the systemwide totals reported elsewhere in this report

2. An invention may be covered by more than one type of utility agreement (utility license, option and letter of intent), so the sum of these figures for a campus may exceed the values reported in Exhibit 18

Exhibit 30 only reports technology transfer activity governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. It does not include copyright and material transfer agreement activity that is also carried out by the campus offices.

Exhibit 30: FY11 Campus Technology Transfer Activity1

Year Ending June 30, 2011

UCB UCD UCI UCLA UCM UCR UCSB UCSC UCSD UCSF

InventionsInventions Disclosed 171 184 178 299 16 74 64 59 388 173Total Active Inventions (year-end) 1,277 1,047 869 1,824 67 349 590 194 2,840 1,475

Patent ProsecutionU.S. Applications Filed First Filings 82 65 70 179 14 32 48 22 155 52 Secondary Filings 81 48 33 166 16 28 76 17 84 44 Total 163 113 103 345 30 60 124 39 239 96U.S. Patents Issued 44 23 30 56 2 11 46 7 88 41Total Active U.S. Patents (year-end) 653 375 315 631 2 98 367 85 767 678

First Foreign Filings 23 30 4 70 3 11 24 8 58 36Total Active Foreign Patents (year-end) 498 411 467 628 0 141 75 28 707 807

LicensingAgreements Issued Letters of Intent 19 11 20 57 0 0 16 10 18 14 Options 13 1 5 8 0 4 2 0 0 6 Utility Licenses 32 26 20 38 1 8 12 2 46 34 Plant Licenses 0 31 0 0 0 9 0 0 0 0

Total Active Agreements (year-end) Options 32 10 13 20 1 8 14 1 2 12 Utility Licenses 298 125 98 242 2 38 52 13 300 354 Plant Licenses 0 469 0 0 0 177 0 0 0 0

Inventions Covered Under Agreements Inventions Covered Under Letters of Intent 24 13 46 90 0 0 29 9 31 21 Inventions Optioned 18 1 13 23 0 7 48 1 0 5 Inventions Licensed (utility) 39 37 40 103 1 19 31 4 69 42 Inventions Licensed (plant) 0 25 0 0 0 6 0 0 0 0

Total Inventions Covered Under Agreements (year-end) Inventions Covered Under Letters of Intent2 89 36 48 112 3 13 52 8 34 74 Inventions Optioned2 38 11 16 32 0 15 88 1 2 14 Inventions Licensed (utility)2 251 174 179 405 2 64 126 26 413 408 Inventions Licensed (plant) 0 88 0 0 0 28 0 0 0 0

Startup Companies Startup Companies Formed 5 5 3 19 1 5 4 1 13 3

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AnnuAl RepoRt 2011 29

1. Financial activity related to inventions having one or more inventors at each campus. A number of inventions involve inventors from multiple UC campuses. Financial activity statistics for these inventions are pro-rated among the campuses according to the number of inventors each campus has. Since some financial activity reported here is credited to UC inventors who are not associated with a campus (including staff at the DOE Laboratories), the sum of individual campus numbers may not equal the systemwide totals reported elsewhere in this report

Exhibit 31 only reports financial activity (not adjusted for legal settlements) governed by the UC Patent Policy for inventions managed by IAS and by the campus offices. Campus offices also generate income through copyright licenses, material transfer agreements and through research support committed in conjunction with technology transfer activities This income is not included in this report

Exhibit 31: FY11 Campus Financial Activity1

Year Ending June 30, 2011(Thousands)

UCB UCD UCI UCLA UCM UCR UCSB UCSC UCSD UCSF

Income from Royalties and Fees $92,823 $10,233 $6,033 $16,153 $26 $5,441 $2,618 $82 $14,048 $29,887Less: Payment to Joint Holders (81) (2) (36) (2,556) 0 (4) (161) (41) (321) (4,624) Adjusted Gross Income (A) 92,741 10,231 5,997 13,597 26 5,437 2,457 40 13,727 25,263

Legal and Other Direct Expenses (5,010) (2,484) (2,144) (6,298) (497) (837) (2,763) (259) (5,036) (4,196)Less: Reimbursements 2,497 887 1,321 5,088 27 708 2,730 43 4,164 2,509 Net Legal Expenses (B) (2,513) (1,596) (823) (1,211) (469) (129) (33) (216) (873) (1,687)

Income Available for Distribution (A+B) 90,228 8,634 5,174 12,387 (443) 5,308 2,423 (176) 12,854 23,575

Income DistributionsInventor Shares (C) 15,487 3,435 1,450 10,927 10 1,803 701 48 8,782 8,682Research Allocation Share (D) 115 340 80 1,348 4 254 154 18 1,956 191General Fund Share (E) 18,685 1,300 931 365 (113) 876 431 (56) 1,018 3,723Income after Mandatory Distributions (F) 55,981 3,559 2,713 (253) (345) 2,375 1,137 (186) 1,098 10,979Total Income Distributions (C+D+E+F) 90,228 8,634 5,174 12,387 (443) 5,308 2,423 (176) 12,854 23,575

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Technology Transfer acTiviTy and financial informaTion

innovaTion alliances and services30

Exhibit 32: LBNL Technology Transfer Activity FY07 – FY11Fiscal Years Ending Sept. 30

Fiscal Year Comparisons FY07 FY08 FY09 FY10 FY11 % CHANGE (FY10-FY11)

Inventions and Patent ProsecutionInventions Disclosed 126 130 109 127 154 21.3%

U.S. Applications Filed First Filings—Provisional 56 77 58 55 66 20.0% First Filings—Regular 2 0 3 3 0 -100.0% Secondary Filings—Provisional 0 14 11 17 2 -98.2% Secondary Filings—Regular 16 44 69 66 80 21.2% Total 74 135 141 141 148 5.0%

U.S. Patents Issued 25 18 26 27 36 33.3%

First Foreign Filings 29 58 14 47 26 -44.7%

LicensingAgreements Issued Secrecy 201 202 160 184 94 -48.9% Option 2 9 7 4 10 150.0% License 3 8 10 6 5 -16.7%

Total Active Agreements (year-end) Option 8 19 13 5 15 200.0% License 61 61 63 60 22 -63.3%

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AnnuAl RepoRt 2011 31

Exhibit 33: LBNL Financial Activity FY07–FY111

Fiscal Years Ending Sept. 30(Thousands)

Fiscal Year Comparisons FY07 FY08 FY09 FY10 FY11 % CHANGE (FY10-FY11)

Income from Royalties and Fees Patents and Tangible Research Products $2,502 $2,702 $2,700 $1,918 $2,277 18.7% Copyrights/Software 716 512 851 689 1,344 95.1% Total 3,218 3,214 3,551 2,607 3,621 38.9%

Inventor/Author Shares Paid Patents and Tangible Research Products 796 N.A.2 1,021 1,057 608 -42.5% Copyright/Software, Trademark and Other 169 N.A.2 93 267 109 -59.2% Total 965 N.A.2 1,115 1,324 717 -45.8%

1. In addition to income reported in this table, the IAS-managed portfolio of DOE Laboratory inventions collectively generated $4,706,186 in FY11 royalty and fee income, including $691,244 for LBNL inventions.

2. Starting in FY08, payment of Inventor/Author Shares is deferred until the following year to match the campus inventor share payment schedule.

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32

Available Technologies

University of California Technology Transfer — Available Technologies techtransfer universityofcalifornia edu

Technology Transfer Offices

UC Office of the President: Innovation Alliances and Services (IAS) ucop.edu/research/ias

UC Berkeley: Office of Intellectual Property ipira.berkeley.edu & Industry Research Alliances (IPIRA)

UC Davis: UC Davis InnovationAccess research.ucdavis.edu/u/s/ia

UC Irvine: Office of Technology Alliances (OTA) www ota uci edu

UC Los Angeles: Office of Intellectual Property oip ucla edu & Industry Sponsored Research (OIP-ISR)

UC Merced: Office of Technology Transfer (OTT) ott ucmerced edu

UC Riverside: Office of Technology Commercialization (OTC) ora.ucr.edu/otc aspx

UC Santa Barbara: Office of Technology & Industry Alliances (TIA) tia ucsb edu

UC Santa Cruz: Office for Management of Intellectual Property (OMIP) research.ucsc.edu/intel_prop.shtml

UC San Diego: Technology Transfer Office (TTO) invent ucsd edu

UC San Francisco: Office of Technology Management (OTM) otm ucsf edu

Lawrence Berkeley National Laboratory: Technology Transfer lbl.gov/Tech-Transfer and Intellectual Property Management (TTIPM)

UC Technology Transfer on the Web

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BerkeleyDavisIrvineLos AngelesMercedRiverside

San DiegoSan FranciscoSanta BarbaraSanta CruzLawrence Berkeley

University of CaliforniaInnovation Alliances and Services1111 Franklin Street, 5th FloorOakland, CA 94607-5200