A patent is a property right granted by the government that gives the owner the right to exclude others from making, selling, using or importing the invention covered by the patent. Because an owner must grant permission for a third party to use the patented invention, the owner can grant permission subject to conditions, such as royalty payments, or limit its permission to use the patent to certain territories, products or markets. The term of a patent is twenty years from the date the patent application is first filed.  After the patent expires, the invention enters the “public domain” and anyone can use it for any purpose without the permission of the owner.  Additionally, a patent only extends to the issuing government’s territory. For example, a patent issued by the United States is only effective in the United States and its territories.

Under U.S. patent law, patents may be used to protect any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (typically referred to as “inventions”). In other words, “anything made by a human.” A patent cannot be obtained for a mere suggestion or idea, anything that naturally occurs, the laws of nature or observations of a natural process. A patentable invention needs to meet three primary legal criteria:

1. Usefulness

To be “useful,” the invention must have a useful purpose and must exist and/or be operational (typically referred to a “reduced to practice”).  For example, if a patent application covers a new chemical compound, the patent applicant must demonstrate that the chemical compound can be made in the described form. If it covers a process, the patent application must demonstrate that the process actually works as described. The invention cannot be purely theoretical and unproven.  Research data is typically presented in the application to meet this requirement. If data is not available, it is much more difficult (and expensive) to convince a patent office that the invention is actually useful.

2. Novelty

The invention cannot be previously described in any printed publication (by the inventor or anyone else), or have been in public use, on sale, or otherwise available to the public before the patent application is filed. Most countries require “absolute novelty”, meaning all patent rights are lost on the date of first publication, sale or public use. The United States, however, has a grace period of one year after the first public description, use or sale to file a patent application. For universities, printed publications most often consist of academic journal articles, but it is important to note that conference presentations/posters, YouTube videos, or even press releases are considered publications. 

Not all publications automatically result in lost patent rights. Under U.S. patent law, a publication must be “enabling” to affect patent rights. In other words, the publication must expressly make obvious all of the elements of the invention, so a person with the requisite skills could replicate the invention based on the publication. For example, if an abstract of a potential conference presentation describes the impressive results obtained through a new process, but does not describe the process itself beyond a generic reference, the abstract is likely not enabling. Similarly, if a presentation slide describes the general properties or performance of a new material, but does not provide the specific chemical structure, it is likely not enabling.

3. Non-Obvious

An invention must also be “non-obvious”, meaning the subject matter of the invention must be sufficiently different from what has been previously used or described. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. In the simplest terms, there must have been an “aha!” or “eureka!” moment that led to an insight that resulted in the invention – an insight that a person with typical skills in the relevant field would not necessarily have had.

Unlike the authorship of an academic article, which is determined according to academic customs and favors inclusiveness, the “inventor” of a patent is a legal determination. Under U.S. patent law, an “inventor” is anyone who contributes to the conception of the invention. Imagine that a faculty member leaves precise instructions for a new graduate student to run an experiment that proves a new process works. If that graduate student follows the instructions exactly and the experiment proves the process works, the graduate student may be an author of the resulting paper, but is not an inventor under patent law. However, if the instructions did not result in a working process, and the student realized that running the experiment at a higher temperature with a slightly different catalyst would work, then the student is an inventor of the improved process because the student contributed intellectually to the conception of the successful process. In this example, the faculty member is also an inventor, as the adjustments were made to a process the faculty member conceived.

It is very important to identify the correct inventors on a patent application, since both the failure to list an inventor and the inclusion of a non-inventor on a patent can be grounds to invalidate an issued patent under U.S. patent law. Click here for an article that describes inventorship with scenes and plots from popular sci fi moves and television shows.

Patent rights are not automatically granted. A patent owner must formally apply for a patent. Once the application is filed, the government reviews the application and compares it against previous publications and patents (typically referred to as “prior art”). If the government believes that the invention has been described before or is obvious, it will issue an “office action” that rejects certain claims made in the patent application, citing the reasons for the rejection. The patent owner, with the assistance of specialized patent attorneys, must then present arguments to demonstrate why the prior art is not relevant. There are often multiple rounds of these discussions and, at times, appeals of preliminary decisions or even live interviews with the government’s patent examiners. As a result, the process of obtaining a patent (typically referred to as “patent prosecution”) can take from 3-6 years, at significant expense.

When software is “open sourced,” it means that the software and underlying source code can be used in any manner consistent with the terms of the open source software license it was released under without the need to obtain specific permission from the owner for such use. “Open source” does not mean that the software is in the public domain or otherwise available for unrestricted use. If someone wants to use the software in a way that is not permitted by the designated open source software license, they must first obtain the owner’s permission. Learn more here.

The University of California supports releasing software developed by its researchers under open source software licenses when the researchers desire to do so.  However, prior to open sourcing any piece of software or agreeing to openly license software contributions owned by the University, the University must first assure it has the legal ability to do so and that the release is consistent with any pre-existing legal obligations (such as obligations to research sponsors or the terms for using any third party code incorporated into the software). To obtain permission to open source software, please complete this Request to Open Source Software and submit it to the Office of Technology & Industry Alliances (TIA). TIA will review the request for legal issues.  If any issues are present, TIA will work with you to clear the concerns as much as possible so the software can be released through an appropriate open source software license.

Prior to deciding to openly license your software, it is important to consider whether releasing under an option source license is the best option to meet your goals. Once software is released under an open source license, the decision cannot be changed.  And the decision can impact future versions of the code. If, for example, the authors intend to seek extramural research funding to continue developing the software, starting a company based on the software or receive financial compensation for commercial uses, then it may not be the best choice to release software under an open source software license. If you have concerns about the decision to release a piece of software under an open source license, please contact TIA for a more detailed discussion.