Technology Transfer
Frequently Asked Questions
Intellectual Property
Tell us about your innovation! We want to hear about it, the earlier the better, at any stage of development. Then we can help in a variety of ways, from filing a patent application to finding a licensee to identifying sources of research funding.
Contact us any way you like. Give us a call, send an email, stop us in the hallway, meet us for coffee.
Tell us before you publicly disclose your innovation. You must initiate patent protection before you publicly disclose your invention or some patent rights will be lost. Once an application is filed, you can broadcast to the world and still keep all commercialization options on the table.
Before we can proceed, you need to submit an invention disclosure. Our Inventor Portal offers CSU researchers the ability to disclose their inventions to CSU Ventures through a secure online interface and allows researchers to view details and status information on inventions that they have disclosed through the portal.
If you are using the Inventor Portal for the first time, the first step is requesting a portal account on the Inventor Portal website. Once your account is approved, you can begin disclosing inventions. A written guide on using the Inventor Portal is provided here – INVENTOR PORTAL.
If you experience difficulty with the portal or prefer not to sign up for a portal account please contact us at disclosures@csustrata.org.
If in doubt, talk to us first.
Generally, we want to hear about anything that anyone outside the University might want, including:
Compositions of matter
- Methods
- Instruments
- Algorithms
- Biological materials
- Software programs
- Anything else potentially of value
Even if you intend to provide the item free of charge (e.g., software, chemical compounds, biological materials), it’s best to speak with us first to prevent an unintentional loss of rights, and to protect yourself and the University from unwanted liabilities.
Protecting Intellectual Property
The University’s academic mission includes the public dissemination of information and research results; the University also has a responsibility as a land-grant institution to provide the public and private sectors with tools to succeed in their business. Patents, copyrights, and other forms of intellectual property offer a competitive advantage that encourage companies to invest in your idea. Without some form of protection, most companies will not justify the risk and expense of developing a new product, and your idea may not have the impact that it might otherwise have.
You need protection. The transfer of chemical compounds, biological materials, software, and other research tools can expose you and the University to liability concerns. This is particularly true for open source software, which can be modified by others but continues to be distributed as your work. Whether you intend to provide these materials for a fee or without charge, we can prepare an agreement to keep you and your reputation safe.
We will work with you to determine the best way to protect your innovation. When assessing the appropriate next steps, we consider: the type of innovation, its current level of development, and your short- and long-term goals. There are a variety of ways to protect you and your work, including:
- Patents
- Copyrights
- Trademarks
- Non-disclosure agreements / CDAs
- Material transfer agreements (MTAs)
- End-user license agreements (EULAs)
Obtaining a patent is an expensive and time-consuming process that can take years. Filing a Provisional Patent Application (PPA) is an initial step that we are always willing to perform, continuing to pursue a patent requires further actions and much greater expense after one year.
When a patent is appropriate, the process usually begins with a provisional patent application (PPA), which can be filed easily and at a modest price. We work directly with you to draft a written description and file the document in-house. This process can be performed very quickly especially when a draft journal manuscript already exists. However, it’s best to begin at least two weeks before any planned public disclosure to ensure that the PPA is as solid as it should be. See Understanding IP for more information.
Once a PPA is filed, we further assess the market potential of the invention and search for a company interested in licensing it. As the one-year anniversary of the provisional application approaches, we discuss outcomes and options with you, at which time it may or may not be appropriate to continue.
Understanding Intellectual Property
The most common form of legal protection for University intellectual property is the patent. In the United States, a patent gives the owner the right to exclude others from making, using, selling, offering for sale, or importing the invention. Ownership does not actually grant an affirmative right to practice the invention, but to keep others from practicing it. If someone wants to practice a patented invention, a license may be given that states the owner of the patent will not enforce their right to exclude others from such use.
There are limits to what types of things can be patented, deadlines for applying for a patent, and options for applying for patent protection in foreign countries, all of which the technology transfer unit can review with the inventors once an invention disclosure is submitted.
Authors of original literary, dramatic, musical, and artistic works have automatic rights to control certain aspects of copying their work once it is fixed in a tangible medium. The Copyright Act generally gives the owner of the copyright the exclusive right to conduct and authorize various acts, including reproduction, distribution, public performance, and making derivative works. Registration of a copyright allows the owner to file legal action against an infringer in a U.S. court.
Copyrighted works originated by University Members are subject to various policies, depending on the type of work. For example, although many works flow through the normal process of engagement with the technology transfer unit, Members typically have the right to personally own and control the copyright to textbooks.
Symbols, names, words, and devices (and combinations thereof) that identify and distinguish the source of goods or services are called trademarks. Trademarks, like copyrights, do not need to be registered in order to receive some legal protection. There are benefits to registering a trademark with the U.S. Patent and Trademark office, because the owner is given the presumption of entitlement to use the mark for which it is registered.
The University holds registered trademark rights to University related marks, such as the Rams logo.
Licensing
We look for companies that want your innovation. We do this using a variety of tools and resources, including:
- Inventor contacts
- Professional networks
- Subscription databases
- Patent searches
- Tradeshows
We do most of the work, but you can help. You probably have a good idea of which companies could use your innovation and may also have contacts within these companies. When presenting your technology at conferences and professional meetings, it’s important to mention that you have disclosed your innovation to your technology transfer office.
We prepare, send and post marketing materials to potential licensees. Once we identify companies that may want your innovation, we contact them. With your assistance, we prepare and send a brief, non-confidential summary of your innovation, its benefits, and its applications. We also post the summary online.
Our marketing search may yield multiple positive results depending on the type of innovation, its stage of development, and the amount of serendipity encountered. Hopefully, we will find one or more companies that will:
- License your innovation
- Sponsor further research in your laboratory
- Hire your students
- Engage your services as a consultant
- Or all of the above.
Once we find a company that wants your innovation, we negotiate a license. This process can take anywhere from weeks to (more likely) months. During this time, there is usually little input that we need from you and, for the most part, we ask you to let us handle it.
In some cases we sell, but most often we license. A license is the best way to ensure that we meet our obligations (e.g., Bayh-Dole Act ), that you maintain the ability to use the innovation in your research, and that everyone receives fair value.
We are as flexible as possible when negotiating. We know you’re excited that a company wants your innovation and that you’re eager for us to close the deal. Rest assured that we will do what it takes to find a fair arrangement that works for everyone.
Some terms are simply nonnegotiable. As representatives of CSU, we have an obligation to protect you and the University. We always:
- Preserve your right to use the innovation in your academic research and education.
- Require indemnification of you, CSU and the Colorado State University Research Foundation.
- Offer the innovation without warranties of any kind.
Most of the time, significant product development is required. It will take a company time to incorporate your innovation into a product or service that the public can use. It may take longer than two to three years, especially when clinical trials or other regulatory procedures are required.
During this time, you may or may not be involved. Sometimes companies licensing your innovation will engage you as a paid consultant. Sometimes they will sponsor further research in your lab. However, the majority of the product development is usually handled by the licensee’s own employees.
We stay in touch with the licensee and ensure that they are working on your innovation. Just like you, we want your innovation to be developed and used – not just sitting on a shelf somewhere. All of our licenses require annual progress reports and some type of mechanism to ensure that unproductive arrangements can be renegotiated.
Once your innovation is in use, there are many ways for it to have an impact. Although blockbusters are rare, commercializing your innovation can have a number of positive outcomes:
- Making the world a better place, such as saving people’s and animals’ lives, to improving farmers’ yields to cleaning up the environment
- Creating new jobs and strengthening our economy
- Increasing awareness of the valuable contributions that you, your research, and the University are making
- Financial rewards as you are entitled to a share of all revenues we receive
Policies
The guidelines for consulting and conflict of interest are in the Academic Faculty and Administrative Professional Manual.
