Technology Transfer Process
Technology transfer is an important part of the technological innovation process in which ideas and new inventions developed at Colorado State University are made available to industry through commercial licensing. Not every idea needs to be commercialized, but many new technologies will only reach their maximum impact by having a company develop CSU’s invention into a marketable product available for public purchase.
The technology transfer unit of CSU Strata protects, markets, and licenses intellectual property (data, designs, devices, methods, materials, software, technical knowledge, and creative works) for the CSU System. Our goal is to find commercial partners and investors that are committed to accelerating the translation of cutting-edge research into new products and services to enrich people’s lives locally, nationally, and globally.
The first step is the technology transfer team at CSU Strata working with CSU researchers to identify, evaluate, and protect new technology that may have commercial potential. In the case of technology that was jointly developed, we work collaboratively with the other universities, national labs, companies, or other research partners in this process. Next, we work with the inventors to market their invention to companies that may be interested in licensing new technology. Other opportunities for transferring technologies include incubating startups (through our Lab to Life Venture Studio) or licensing directly to faculty–led startups. Finally, once one or more commercial licenses are in place, we will monitor each license for compliance and will distribute the net revenue back to the CSU inventors and the University.
The technology transfer process can take several years, depending on the field of innovation and the intellectual property protection needed. Many steps are involved, including evaluating the technology, strategizing protection, engaging in the protection process, issuance of intellectual property, marketing efforts, engagement with partners, assisting startups, licensing, and post-agreement compliance.
If you are using the Innovator Portal for the first time, the first step is requesting a portal account on the Innovator Portal website. Once your account is approved, you can begin disclosing inventions.
If you experience difficulty with the portal or prefer not to sign up for a portal account please contact us at disclosures@csustrata.org.
Protecting Intellectual Property
Intellectual property is a category of property that includes intangible creations of human intellect. It can include any technology, discovery, creation, know-how, scientific or technological development/advancement, research data, educational materials, and computer software. Intellectual property is typically broken into four main categories: copyright, trademark, patent, and trade secret; each has different rights, governance, protection process, and cost. Moreover, each can play a different role in the marketplace and offers various benefits.
Patents. The patent is the most commonly utilized form of legal protection for university intellectual property. In the U.S., a patent grants the right to exclude others from making, using, selling, offering for sale, or importing (into the U.S.) the invention during the term of the patent (approximately 20 years). There are limits to what types of things can or should be patented. In addition, there is a great deal of regulation governing the patent process, including patentability standards, public disclosure, deadlines for applying for a patent, and options for applying for foreign patent protection—all of which the technology transfer unit can review with the inventor(s) once an invention disclosure is submitted. Patents are the most time-intensive form of intellectual property protection and can take multiple years to issue. Patents also have the inherent limitation that merely holding a patent does not automatically grant all the rights necessary to practice the patented invention. In some instances, licensing another’s patent rights (or cross-licensing) may be required to obtain full rights to practice various aspects of a patented invention. For example, a patent on a new battery design may be dependent on someone else’s patented ceramic material.
Copyrights. A copyright is the exclusive right given to the creator of a creative work to reproduce the work for a limited time. It is intended to protect the original expression of an idea in the form of a creative work, but not the idea itself. Examples include literature, art, architecture, fashion, film, choreography, educational materials, and software. Copyright protection includes the exclusive right to determine how and under what conditions the work may be marketed, publicly displayed, reproduced, and distributed; to produce copies or reproductions of the work and to sell those copies (including electronic copies); to transmit or display by radio, video, or internet; and to create derivative works (works that adapt the original work). Federal Registration of copyright allows the owner of the work to file legal action against any infringer in a U.S. court.
Trademarks. Symbols, names, words, and devices (and combinations thereof) that identify and distinguish the source of goods (including unique products) or services from those manufactured or sold by others are called trademarks. Trademarks have two basic requirements to be granted: 1) they must be used in commerce and; 2) they must be distinctive from other marks. It is important to understand that a trademark cannot be granted until it is used in the marketplace because trademarks are intended to protect consumers. Trademarks are unique in that using a mark in commerce establishes some protection at the state level; for federal protection, the mark must be registered with the U.S. Patent and Trademark Office (USPTO). Trademark protection also includes marks for services, collectives/associations, certifications, trade dress (packaging) and sound.
Trade Secrets. This form of intellectual property is typically governed by state law. In Colorado, trade secrets describe processes, procedures, formulas, recipes, financial information, lists, customer information, and technical information relating to any business or profession that is kept secret and of value. The better a secret is kept, the easier it is to protect as a trade secret. The Coca-Cola recipe is an example of a long-kept trade secret.
As a land-grant university, Colorado State does not commonly protect ideas with trade secrets, even though it is a valid form of protection that can be pursued. The development of new knowledge through the practice of research and scholarship lies at the heart of a university’s mission; thus, dissemination of knowledge is a core value and responsibility of the CSU System and inherently adverse to trade secret law.
Tangible Materials. During the research process many labs generate novel materials, such as chemical compounds, antibodies, cell lines, or other biological materials. Many of these materials will have commercial value as research tools to other academic or commercial groups, which drives interest from reagent companies that keep large catalogs of research tools. Typically, these research tools are not patented but are protected by license agreements that limit what the distributor and end user can do with the materials. For instance, a license might specify that a new antibody can be used for in vitro biological research, but not for in vivo or clinical purposes.
Section J of the CSU Fort Collins Faculty Manual and Section 2.6.1 of the CSU Pueblo Faculty Handbook establishes that any intellectual property developed by CSU faculty, staff, and graduate students as part of their role at CSU or that used substantial CSU resources to develop is owned by CSU. CSU Strata was granted the exclusive right from the CSU System to license and manage any and all university-owned intellectual property. Please consult these documents to better understand intellectual property ownership rights and the CSU policies on intellectual property.
The University’s academic mission includes the public dissemination of information and research results; however, publishing research does not guarantee that someone will notice the discovery and continue to develop it into tangible products or services that better society. CSU Strata believes in providing access to knowledge and innovation to all and fully understand that the potential of new technology cannot be fully realized without the successful movement of technology from the lab to the public. Intellectual property protection provides the University with tools to encourage companies to invest in research. Successful collaborations with industry partners can lead to licensing or sponsored research opportunities.
Almost anything can be a protectable innovation if it is a product of human intellect. This can include new compounds, plant varieties, devices, educational materials/programs, software, biological materials, novel methods, and so much more. CSU Strata will work with you to determine the best way to protect your innovation. When assessing the 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 (NDAs)/ Confidential Disclosure Agreements (CDAs)
- Material Transfer Agreements (MTAs)
- End-User License Agreements (EULAs)
Disclosure and Evaluation
A public disclosure is any non-confidential communication that an innovator or owner makes to one or more members of the public, revealing the existence of the invention and enabling an appropriately experienced individual to reproduce the invention. A public disclosure may be any form of non-confidential communication. For example, an academic poster, presentation to a symposium/conference, website article, book chapter, academic journal article, dissertation/thesis, or even an unguarded conversation in a parking lot or over coffee.
Tell us before you publicly disclose your innovation. If patenting is the best protection strategy, we must initiate patent protection before you publicly disclose your invention, or some patent rights may be lost. Once a patent application is filed, you can have unlimited conversations about your innovation while keeping all commercialization options on the table. We are happy to chat about your project at any time and can then better advise when an invention disclosure is needed.
You can disclose your innovation through the Innovator Portal—a secure online interface that allows researchers to submit innovations and view status information on previously disclosed innovations. All disclosures are given a reference number or Tech ID; we will always refer to the submitted disclosure using the Tech ID.
To access the Innovator Portal, login with your eID credentials. If you have issues accessing the portal, please email disclosures@csustrata.org.
Typical innovations can include methods, instruments, algorithms, devices, various processes, biological materials, cultivars, educational materials, assistive technologies, chemical structures, software programs, and anything that may have potential value in the market. However, it is best to submit anything that has been developed/created at CSU as market evaluation can be complex. Some inventions have greater value as research tools and/or with other Universities. 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 unintentional loss of rights, and to protect yourself and the University from unwanted liabilities.
Types of Patents and the Patent Process
A provisional patent application (PPA) is a legal document filed with the U.S. Patent and Trademark Office (USPTO) to establish an early filing date for an invention. PPAs are temporary applications held in confidence (they are never published). They are not reviewed by the USPTO and do not result in granted patents.
A provisional patent application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional patent application during the 12-month pendency period to benefit from the earlier filing of the provisional application.
If a non-provisional application is not filed prior to the expiration of the 12-month pendency period, the provisional application is abandoned, and the early filing date is surrendered.
A provisional application is a temporary or place-holder application that establishes an early filing date; as noted previously, these applications are not reviewed by the USPTO and, thus, cannot become granted or issued patents. Non-provisional patent applications (or utility patent applications) are formal submissions to the USPTO to request a patent for a functional invention. A non-provisional application is examined by a patent examiner (through a process called prosecution) and may be granted as a patent if it meets all patentability requirements.
Universities are known for their development of early-stage research. Researchers usually need additional time to gather results and data to support their disclosed innovation. In these instances, we file provisional patent applications to ensure that an early filing date is established while allowing extra time for our researchers to test and further perfect concepts and, overall, to be confident in their results prior to submission of a non-provisional application.
A PCT (Patent Cooperation Treaty) patent application is an international, non-provisional patent application, that establishes the opportunity for patent protection in multiple countries at once. The Patent Cooperation Treaty (PCT) is an international treaty with more than 150 member countries. This treaty allows for an applicant to file a single application at the USPTO, instead of filing multiple, separate, non-provisional applications in each of the member jurisdictions.
A PCT must be nationalized (converted into individual non-provisional applications) for each chosen jurisdiction within 30 months (about two and a half years) of its earliest filing date. Nationalization can be expensive as each application must abide by the processes and procedures set by each foreign country for which you are nationalizing (filing) an application; additionally, translation fees are needed to translate the application from English to the preferred language of the region.
A PCT filing is an excellent tool for allowing applicants more time to evaluate which jurisdictions best suit their needs based on manufacturing needs, market potential, commercial partners, and other various parameters.
Many factors impact the timeline from submission of a patent application to issuance. In general, non-provisional patents take an average of 3-5 years to issue; however, this average can be increased or decreased based on the field of innovation and the overall examination process (otherwise known as prosecution).
In general, you should expect the following events to occur in the U.S.:
- Provisional application – Establishes filing date; must be converted to a non-provisional application in one year.
- Non-provisional application – Filed within one year of provisional filing
- Publication of the non-provisional application – Six months after filing the non-provisional application
- Examination (Prosecution) – A patent examiner (examiner) begins the review process of the non-provisional application and issues various actions (office actions), which we and our outside counsel (law firm) respond to (office action responses); these negotiations/discussions can begin approximately six months to one year after publication, and continue until we come to an agreement with the examiner regarding the merits of the non-provisional application
- Notice of Allowance—Once the examiner issues a notice of allowance, this signals that the examination process has concluded. At this time, we must determine if a related application (continuation or divisional) should be filed based on what occurred during the prosecution and pay the issue fee. Any additional application that needs to be filed must be done so prior to payment of the Issue fee.
- Issuance – The USPTO has received payment of the issue fee and has granted a patent – Congratulations!
- Maintenance—Maintenance fees are paid four, eight, and twelve years after issuance to keep the patent “active.” Maintenance fees vary in cost between jurisdictions (foreign countries) and depend on the size of a licensing entity.
Please note that the above timeline is specific to U.S. applications; foreign jurisdictions have varying processes and procedures. If you are pursuing a foreign matter, our team can discuss each of the nuances further.
Each matter will have different circumstances and associated costs. Generally, a U.S. patent costs approximately $25-$35K (not including maintenance fees).
These costs include:
- Patent searches
- Initial fling costs (drafting and attorney time)
- Office action responses (review of prior art and crafting arguments)
- Attorney fees (time, diligence, docketing, paperwork)
- USPTO government fees
- Patent drawing and illustrator fees
Licensing
A license is permission that the owner or controller of intellectual property grants to another party, usually under a license agreement.
License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at the University. University license agreements usually stipulate that the licensee should diligently look to bring the intellectual property into commercial use for the public good and provide a reasonable return to the University. These agreements also protect CSU and the CSU inventor’s research and education rights and academic freedom to continue to publish scholarly works.
A licensee is chosen based on its ability to commercialize technology for the benefit of the public. Sometimes, an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option.
Per University policy, a share of any positive financial return from a license is provided to the inventor(s), the college(s), and the department(s) where the intellectual property was developed. Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the public. New and enhanced relationships with businesses are another outcome that can augment one’s teaching, research, and consulting. In some cases, additional sponsored research may result from the licensee.
Policies
Refer to CSU Pueblo’s Faculty Handbook and the consulting and conflict of interest sections of CSU’s Academic Faculty and Administrative Professional Manual.
Under CSU’s general Intellectual Property Policy, the contributors on a technology that is commercialized by CSU Strata receive 35% of the net revenues, the Office of the Vice President for Research receives 15%, the contributor’s college(s) receives 10%, and CSU Strata retains 40%. If the intellectual property is co-owned with another entity, it is likely that there will also be a share of revenue that is sent to the co-owner under an inter-institutional agreement. There are some policy exceptions to this distribution laid out in CSU policy. Refer to CSU Pueblo’s Faculty Handbook and Section J of CSU’s Academic Faculty and Administrative Professional Manual for details.
For details on how CSU Strata pays royalties to contributors, refer to CSU Strata’s Royalty Payments Policy.