he SDSU TTO performs a variety of services for the faculty and University community to further its mission of commercializing research for the public benefit. At the TTO, service to our faculty and researchers is our number one priority.
The TTO helps obtain and maintain protection of intellectual property rights for faculty and staff inventions, copyrightable works, and trademarks.
These services include bearing the potentially significant costs of obtaining patent protection for an invention, managing the patent prosecution process, evaluating patentability, obtaining assignments, managing paperwork for patent offices, registering copyrights, and all duties related to protecting University IP produced through research.
University faculty and staff are required to disclose inventions produced with institutional support or in the area of their employment by the terms of their employment, Faculty Senate policy, the terms of receiving funding from the Research Foundation, federal regulations, and the terms of federal agency grants.
Inventions or creative works can be submitted via the TTO’s online portal here. If inventors need help with their disclosure, they are encouraged to contact the TTO for assistance. Additionally, the TTO reviews the disclosure upon completion to provide a preliminary market assessment and guidance on the potential IP protection available for the disclosure (patent, copyright or trademark).
The TTO evaluates proper ownership and patentability once an invention or creative work is disclosed. A final determination of ownership is made by the University Copyrights and Patents Committee, a neutral group of faculty and staff peers. An Invention Disclosure should be completed whenever there is intellectual created in an investigator’s research or with significant institutional support. Disclose an invention or creative work here.
Intellectual Property produced through sponsored research administered by the Foundation is assigned to the Foundation to comply with federal law and adhere to best practices. Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.
Although disclosures and creative works are evaluated by the TTO, ultimate determinations on the ownership of faculty and staff-created intellectual property is made by the University Copyrights & Patents Committee.
The UCPC is a neutral group of 12 faculty and staff peers. The Committee usually meets on the first Tuesday of every month. The TTO presents its evaluation of disclosures to the UCPC, but does not have a vote on ownership of intellectual property.
A confidential disclosure agreement (CDA) is an agreement between two parties to maintain certain information in confidence, such as in the course of meetings, collaborative work, or ongoing negotiations involving proprietary information. CDAs are also known as non-disclosure agreements (NDAs) or confidentiality agreements.The TTO is responsible for negotiating and signing all CDAs related to faculty research. CDAs are important in nearly all business relationships and instrumental to the protection of University IP and the contents of faculty research before publication. Contact the TTO to obtain a form CDA or to ask any questions regarding CDAs or NDAs.
All material transfer agreements (MTAs), regardless of whether SDSU is the provider or recipient of the material, must be approved by the Authorized Institutional Official within Graduate and Research Affairs. To obtain institutional approval and the appropriate signature for an MTA, please visit Research Affairs' website or call for more information at (619) 594-0905.
A CRADA sets out the terms of a research arrangement between two institutions or parties. CRADAs not only govern how a collaborative research relationship may unfold, but how the intellectual property will be handled and commercialized should any IP result from the research.
An IIA sets out licensing, management, protection, and commercialization terms between the parties of jointly owned inventions. IIAs are similar to CRADAs (Cooperative Research and Development Agreements), although IIAs are normally agreements entered into after research, as opposed to before an invention results.
One of the critical functions of the TTO is reporting inventions made using federal funds back to the funding agency. This duty is not satisfied by a one-time report, but requires a constant system of updates that describe commercialization efforts, patent prosecution progress, and commitment to ownership of patents, as required by the Bayh-Dole Act.
There are other associated compliance responsibilities such as with other laws and the terms of licenses.
The mission of the TTO is to disseminate the products of University research for the public benefit. This often entails commercialization of University-owned IP through a startup company or another company capable of bringing the technology to the market. SDSU fosters the development of ideas and the broad dissemination of these ideas for the purpose of serving the public interest while simultaneously striving to protect the legitimate private interests of members of the University community.
The TTO can provide extensive advice, planning, and support to inventors and creators to help them commercialize their creations and realize the benefits of their work. The TTO works closely with other university entrepreneurial partners and resources to develop IP.
Learn more about the Path to Commercialization here.
A core activity of the TTO is the commercialization of IP. This is primarily done through a “license,” or a contract that grants permission to another party to make and use (essentially "borrow") intellectual property.
The TTO’s philosophy for negotiating licenses is based on respect for the legal frameworks for research and innovation, and for the use of technology that most positively impacts our communities. This does not mean the University seeks to maximize revenues from the use of its technology. Rather, the TTO focuses on the goals of faculty inventors and developers while ensuring they satisfy the mission of the SDSU community, the needs of the campus, and requirements to receive fair market value in licensing transactions.The University and the Foundation generally cannot assign intellectual property to other parties because of federal law associated with the funding and development of that IP, state law, the terms of sponsored research, tax laws around non-profit entities, best practices, and other reasons.
Universities are hotbeds for new companies. Many technologies developed by faculty create entire new businesses beyond improving a current product or fitting into an existing product catalog. In many of these cases, the faculty inventors and their students look at building new companies that utilize the new technologies to impact their communities in new ways.
The TTO is dedicated to helping these startup companies (also known as “spinout companies”) grow and thrive. The TTO is highly involved in ensuring that companies relying on SDSU technology leverage the IP and research strengths of the campus. The TTO does this by ensuring that our licensing approach meets the needs of each specific company, while providing enough standardized contract and licensing language to ensure that a license can be quick and painless. The TTO welcomes the opportunity to build new companies and increase the economic viability of the San Diego community.
The TTO can also provide guidance on whether licensing to a startup company or an existing company is more appropriate based on the technical or creative, and the market needs.
Learn more about the Path to Commercialization here.
Often, faculty researchers wish to release software via an open source license. Open source licenses all release software to the public for free, with varying terms on modifications and the need to share those modifcations with the public.
The TTO can help inventors and creators determine if open source licensing is appropriate, as well as which open source license to use or whether to leave avenues for commercialization available via licensing terms.
The TTO distributes royalties according to the University Royalty Distribution Guidelines, which provide for a 50-50 split of net royalties from University IP between the creators and University institutions.
If the Path to Commercialization involves identifying and targeting potential licensees outside the SDSU community, the TTO will help market University creations and develop potential business relationships.
In order to facilitate commercialization of University creations and support the San Diego region, the TTO develops relationships with regional partners and interacts with the San Diego entrepreneurial community.
SDSU is a founding member of the San Diego Innovation Council, a group of research institutions and organizations promoting a shared vision for growth through innovation, entrepreneurial activities, and education. Other partners include local accelerator CONNECT and CSUPERB, the CSU NSF I-Corps site for life science innovations.
The TTO is eager to be a University leader in IP issues all over campus. One of the core functions of the TTO is to educate others the SDSU community on intellectual property, what it is, how it’s development, and how it is commercialized. The TTO provides presentations on and off the campus about what it does and how it serves the community. Contact the TTO if you would like a presentation to your department or unit on campus.
The TTO also mentors faculty through the processes of disclosure, protection, commercialization, and business plan development.
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