Office of Technology Management - Strategies & Tactics


Invention Management

Disclosure of New Inventions

Innovators of technologies/ideas that might have commercial utility should inform the Office of Technology Management and Advancement (OTMA) about their work. UCSF employees are required to disclose their inventions and to assign them to UCSF. The OTMA requests that innovators contact the OTMA as soon as they first have their technology in hand and not wait until a few days or before they submit a manuscript for publication or otherwise decide to publicly present any aspects of their technology. Early disclosure to the OTMA gives it the time it requires to thoughtfully evaluate the opportunity and determine the next steps. Although a phone call, visit or e-mail is sufficient to start the disclosure process, the OTMA will invariably require the innovator to complete and sign the Technology Disclosure Form that can be downloaded ​​HERE.

Engagement and Opportunity Development

UCSF inventions are evaluated through an iterative process between an OTMA Business Development Manager (BDM) and the UCSF innovator. The BDM will perform a market assessment which includes: 1) Defining the product or service enabled by the invention and an early business model 2) Exploring the market (unmet need, market size, competitive landscape) 3) Obtaining market feedback through our curated KOL network. Based on this assessment, the BD Manager will assign the opportunity into 1 of 3 categories which are A) Potential license to an existing company B) Potential start-up opportunity, or C) Opportunity is not market-ready.



Intellectual Property

Intellectual Property Strategy

Once an invention is prioritized, the market-ready asset is further analyzed to derive an intellectual property strategy. Intellectual property includes protectable (copyright, trademark, and patents) and unprotectable (data, use of the name, know-how, materials) assets. For inventions with high market potential, the BDM may consult outside IP counsel to explore options for protecting the invention including the filing of patent applications. The innovators are vital to reviewing and commenting on draft patent applications to ensure they adequately describe the technology and its commercial uses. The BDM may have an initial call with a patent attorney to align them with the product and/or business model around the technology and then the attorneys may proceed to work out the details of the filing with the innovator.



Startups and Licensing


Identifying Perspective Investors or Licensees

Prospective licensees and/or investors in a startup come from many sources: a) leads provided by the innovator, b) OTMA’s extensive network with business development folks at established companies and venture capitalists for investments in StartUps, and c) corporate sponsors of the research that created the technology or providers of proprietary research materials the innovator used to create the technology


Once a company or investor expresses some general interest in starting a company or licensing technology, a Confidential Disclosure Agreement (CDA) is put in place between UCSF and the commercial partner to further explore a potential license deal. The innovator’s participation in technical discussions with a prospective investor or licensee is very valuable in securing a commercialization partner.


OTMA facilitates startup development in several ways including 1) Helping to define the business model 2) Facilitating pitch deck development 3) Attaching consultants or EiRs to projects as required 4) Connecting with potential investors 5) Pitching to investors and collating feedback


Term Sheet

Once an investor or company has completed their diligence and comes to a decision to start a company or license a technology the BDM negotiates a term sheet with the interested party. A term sheet is a short document that defines the high-level financial and business terms of a deal. If more than one party is interested in the technology, the BDM may request competing term sheets from the interested parties to help choose an optimal commercialization partner.

License Agreement

Once the Term Sheet is in place, the parties will commence negotiating the actual license agreement to govern the licensing relationship between UCSF and the company. OTMA works with internal and external counsel to complete the appropriate license agreement. Technology can be licensed exclusively to one company (or to more than one company for different field-limited uses), or non-exclusively to many different companies. All of the OTMA’s licenses must pass independent legal review by UC's Office of the General Counsel before OTMA can sign off on them.




Conflict of Interest

If an innovator has or will have a financial relationship with a prospective UCSF licensee (e.g. the innovator, spouse, or dependent child receives money from or has stock in the licensee), the innovator needs to disclose this financial interest to the BDM and the

appropriate conflict of interest, conflict of commitment representatives for their corresponding department. As an employee of UCSF, the innovator should not negotiate against their employer (UCSF) with respect to any license agreement.