A patent is an exclusive right to practice an invention. An invention is a potentially protectable new (or novel), useful, and non-obvious machine, process, composition of matter, or article of manufacture.

Patents are the most common form of IP related to scientific research. Patents provide the owner the right to exclude others from practicing an invention for 20 years in exchange for the owner providing a written enabling disclosure of the claimed invention. 

An interesting aspect of intellectual property is that–unlike most tangible, physical property–an idea is only valuable if there is a governing body to enforce those rights.

The bargain is that in exchange for sharing how an invention works and advancing science, governments grant a limited monopoly to the creators of the invention. The government then shares knowledge of that invention with the public by publishing the patent. 

Patents are a vital enough part of the U.S. economy and American ideals that the Constitution provides for them in Article 1 "to promote the progress of science."

In the U.S., an inventor can obtain a patent available for a processes, machine, article of manufacture, or composition of matter that is new (or novel), useful, and non-obvious.

It is important to note that patents protect only the functional aspects of inventions. Creative ideas are protected by other forms of intellectual property, such as copyrights.

Patents are obtained through an application process called patent prosecution in which the creator discloses the invention to the government. The government then decides whether the invention has met all the criteria to receive a patent, and notifies the applicant on its decision. 

In the United States, the government rejects the vast majority of inventions at least once for being obvious or not novel, and often rejects inventions several times. This rejection from the government is known as an office action. The inventors may then abandon the invention, contest the rejection, amend the patent claims, or negotiate a novel invention with the government. 

It is important to note that one does not have an enforceable patent until the government grants a patent on the claims. A patent application is merely that—applications for a full-blown, enforceable patent. However, owners may still license pending patents or recover damages for infringement once a patent is granted. 

As explained in the preceding question, the government almost always rejects inventions for patent protection, often several times. For this reason, the process to obtain a patent can continue for several years before a patent issues. 

In the university context, it is rare to obtain a patent within two years of invention—and some inventions take five years or more. Factors affecting the length of time to obtain a patent are the patent examiner, the technical area, the availability of prior art, the desired patent breadth, and the funds available to pursue the patent. 

Patents can be very expensive, because of the filing fees for each country, the time spent by highly specialized patent attorneys drafting patent claims, and the number of steps required to obtain a patent and overcome government rejections. 

The cost of patents varies greatly based on the number of rejections, the countries in which applications are filed, the amount of prior art in the field, the technical area, and the level of expertise required by the patent attorney. It is rare to obtain an enforceable patent for less than $10,000, and other patents can be significantly more expensive. 

Because obtaining protection for one patent is so costly and its patent budget is limited, the TTO cannot prosecute every potential patent to issuance.

A provisional patent application notifies the government of an invention and certifies that the inventor has a filing date. Provisional patent applications are temporary, unexamined, and unpublished.

In the United States, a provisional patent application lasts 12 months, at which point a non-provisional application (such as a U.S. non-provisional or Patent Cooperation Treaty application) must be filed. Preparing and filing a provisional patent application may be relatively affordable, while non-provisional applications are much more expensive.

Because of the prohibitive costs of non-provisional applications, the TTO may file a provisional patent application but allow it to lapse (expire) at the end of the year unless there is demonstrated commercial potential. The factors to decide whether to convert an application to a non-provisional include: expressed licensing interest, size of the market opportunity, amount of grant funding associated with the invention, and the significance of the advancement over the prior art. 

The TTO directs and finances the attainment of patent protection of IP related to research. The TTO can then grant a license (permission) to others to use the invention. 

It is challenging to commercialize any technology without patent protection. Without patent protection, an inventor cannot prevent others from making or using an idea. Therefore, any idea that is reverse engineered can be duplicated without recourse for the inventor. On the other hand, any idea with patent protection can be licensed with well-defined property rights to existing company or new startup company. 

The TTO negotiates and drafts all licenses for University IP related to research, and also supports patents in a variety of other ways. Contact the TTO if you are interested in commercializing or licensing University IP.

Learn more about the Path to Commercialization and the services provided by the TTO. 

Recently, the America Invents Act (AIA) changed patent law in the United States to a “first inventor to file” country. So, even if an inventor is the first to make a useful scientific discovery, someone else can invent and file an application first to obtain the patent.

Yes, software is potentially patentable in the United States as a process. However, since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, patenting software has become much more challenging. 

Software is also potentially protectable by copyrights, and could be commercialized by way of a copyright license. Because of the difficulty in obtaining a patent for software and the availability of copyrights, copyright protection is often sufficient for software. 

The TTO helps inventors obtain patent protection for their ideas by managing and financing the patent prosecution process. The TTO further helps faculty inventions by providing commercialization support, connecting faculty with potential mentors, assessing patentability, performing market research, and marketing inventions to potential licensees. 

Also, it is important to let the TTO know of an invention before public disclosure, as a public disclosure acts as a bar to patent rights in most countries.

SDSU faculty are required to disclose inventions produced with institutional support by the terms of their employment, Faculty Senate policy, the terms of receiving funding from the Research Foundation, federal regulations, and the terms of grants from federal agencies.

Inventors receive 50 percent of net royalties resulting from University IP, as generous a share from any university in the country. 

The general rule is that the Research Foundation owns inventions produced with “significant institutional support.”  Ownership of inventions disclosed to the TTO is determined by the University Copyrights & Patents Committee, a group of faculty and staff peers. The UCPC usually meets on the first Tuesday of every month.

The TTO does not own or manage inventions created by students unless they are related to faculty research or produced with significant institutional support.

Disclose an Invention

IP 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.

Inventors should disclose an invention to the TTO when an invention results through University research or use of institutional resources. 

It is important to let the TTO know of an invention before public disclosure, as a public disclosure acts as a bar to patent rights in most countries. 

The TTO requests 30 days to evaluate a disclosed invention and file a provisional patent application before a public disclosure, but please contact the TTO before any imminent public disclosure or with questions regarding whether to disclose an invention.

Disclose an Invention

Copyrights are a form of intellectual property that protects creative ideas, in particular the rights to reproduce (or “copy”) the expression. Not everything is copyrightable: but virtually any type of creative expression can be protected as long as it has “a modicum of creativity” (Feist).

There is no exhaustive list of what can be protected by copyrights, but examples include literary works (books, novels, screenplays, manuscripts, computer code), musical works, dramatic works, pictorial works, sculptural works, and even other expression such as architectural works and fashion designs. The key to copyright law is creative expression.

Any creative expression is afforded copyright protection as soon as it is published, or first rendered in a tangible medium. For example, a blog post is instantly copyright-protected upon posting, and elements of a novel are copyright-protected once the author puts pen to paper.

Authors and owners may register a copyright, although there are few reasons to do so. Copyright registration does not provide sufficient benefits to justify registration of all University copyrights, though it may be warranted in some circumstances.

The TTO manages copyrights related to University IP produced through research. The TTO can grant a license (permission) to others to use University copyright-protected material. 

The TTO negotiates and drafts all licenses for University IP related to research, and also supports copyrights in a variety of other ways. Contact the TTO if you are interested in commercializing or licensing University IP.

Learn more about the Path to Commercialization and the services provided by the TTO. 

One major advantage of copyrights is that protection is automatic upon publication. For this reason, a public disclosure is not a bar to rights like it is for patentable inventions.

Maintaining protection of copyrighted works is less expensive than patents since there is no application process or mandatory registration. Copyrights also last a long time: for the length of the last surviving author plus 70 years, compared with only 20 years for patents. 

The TTO manages copyright protection on University IP produced with significant institutional support. The TTO further helps faculty inventions by providing commercialization support, connecting faculty with potential mentors, performing market research, and marketing inventions to potential licensees. 

Many ideas are protectable by both patent and copyrights, and the TTO can evaluate the patentability of ideas and determine if patent protection is appropriate.

SDSU faculty are required to disclose inventions produced with institutional support by the terms of their employment, Faculty Senate policy, the terms of receiving funding from the Research Foundation, federal regulations, and the terms of grants from federal agencies.

Authors receive 50 percent of net royalties resulting from University IP, as generous a share from any university in the country.

Disclose a Creative Work

IP 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.

No. The general rule of thumb is that the Research Foundation only owns creative works produced with “significant institutional support.” SDSU University Senate Policy also provides exception for “traditional scholarly works,” which do not need to be disclosed to the TTO. 

The most common situation in which the University would own a copyright is when a copyrightable work is produced directly within the scope of a research award. 

Ownership of inventions disclosed to the TTO is determined by the University Copyrights & Patents Committee, a group of faculty and staff peers. The UCPC usually meets on the first Tuesday of every month.

Disclose a Creative Work

Contact the TTO if you have questions about ownership or whether to disclose a creative work. 

Yes. Copyrights protect the creative expression in a program or its body of code. New versions or improvements to that software are generally considered derivatives of the original.

Some software might also be patentable because of what it does or what it produces. However, since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, patenting software has become much more challenging. Because of the difficulty in obtaining a patent for software and the availability of copyrights, copyright protection is often sufficient for software.

A trademark is a form of intellectual property identifying the source of a product or service to consumers. A trademark can be in the form of a logo, word, image, or even a sound or smell. Trademark law allows an owner to prevent others from using that mark. 

Trademarks protect consumers by allowing them to trust the sources of goods and services. Trademark law prevents the sale of phony products that could be dangerous or disruptive to commerce.

Probably the most famous existing university license is for a trademark—Gatorade is primarily a trademark license from the University of Florida. 

As the manager of IP related to research, the TTO protects trademarks directly produced through research and those obtaining value through their connection with research. As such, trademarks become important to protect and derive value from goods and services connected to SDSU research. 

A successful example of this avenue to commercialization is SDSU’s eCHECKUP TO GO trademark. What began as an alcohol intervention tool involved in research became a recognizable trademark and a suite of online products helping users cope with cannabis, tobacco, and sexual violence. 

The TTO is not responsible for SDSU marks or logos. For questions about the SDSU or Aztec marks, please contact Aztec Shops.

A trade secret is information with economic value because of its concealment that is kept secret by reasonable security measures.

Common examples of trade secrets include recipes, proprietary formulas, manufacturing processes, and customer lists. 

One common reasonable security measure to protect trade secrets is the Confidential Disclosure Agreements (CDA). 

CDAs, otherwise known as Non-Disclosure Agreements (NDAs), are agreement between two parties to maintain certain information in confidence. The TTO is responsible for negotiating and signing all CDAs related to faculty research. 

Contact the TTO to request a CDA to share with a partner outside the University. 

Other reasonable security measures to protect trade secrets unrelated to the TTO include employment agreements, confidentiality provisions in licenses, and even things like locked doors or password protections. 

The key is that the trade secret owner take steps to keep the information secret, and that they not publicly disclose the information. This is the opposite of patent law, where protection is given in exchange for disclosing it to the government. 

The advantages of trade secrets are that they can exist in perpetuity, and it is illegal in most jurisdictions to circumvent the security measures protecting the information.

The main disadvantage of trade secret is that there is nothing in the law preventing reverse engineering of a trade secret. For this reason, trade secrets are ineffective at protecting most technological inventions. 

For example, if a company sells a soft drink, then a competitor can buy it, analyze it, and replicate what it believes is the exact same product. The owner of the trade secret would have no claim of impropriety in that case. 

For this reason, it is often much more attractive to file for patent protection to protect an invention as opposed to relying on trade secret protection. 

Trade secrets also require efforts to maintain the secrecy of the protected information. It is often impractical to protect trade secrets at public institutions given the desire to publicize information and the difficulties in concealing some information. 

Given the unique circumstances, requirements, and missions of public institutions, commercializing an idea through trade secret is often impractical at state universities.

However, there may be some aspects of University IP or research that are protectable by trade secret. The TTO can license (give permission) to use these trade secrets, often in tandem with a patent or copyright that the trade secret supplements. 

The TTO can also work with external partners or research partners to protect some of their proprietary information under a CDA. 

Contact the TTO to request a CDA to protect proprietary information connected to research or to share with a partner.  

The United States does not formally recognize data itself as a form of intellectual property protected under the law. However, it may have limited IP protection under other forms of intellectual property. 

Some jurisdictions such as European Union do recognize database rights independent of copyright law and other forms of intellectual property. 

Although data is not its own form of intellectual property, other forms of IP provide limited protection to data. 

For instance, data can be protected as a trade secret (see above for more information on trade secrets). 

Data can also be protected as proprietary or confidential information by contract, such as through a CDA or NDA. The TTO is responsible for negotiating and signing all CDAs related to faculty research. 

Contact the TTO to request a CDA to share with a partner outside the University. 

Terms of use can limit how those accessing a database use the data it contains by way of a contract with the user. 

Copyright law protects compilations of data and databases—to the extent that creative choices were made such as what data is included, how the data is organized, how it is stored, how it is shared, what the display of that data looks like.

However, this does not protect the factual information constituting parts of the underlying data—there is no creative component to factual information. Thus, copyright protection for data is very limited in the U.S. 

Yes. Faculty Senate policy provides that the University owns some data resulting from research and the copyrights associated with the data. 

Using licensing language and other contractual terms, the TTO can give permission to an individual or entity to make use of the data. 

Read more about the services the TTO provides faculty or contact the TTO to learn more about commercializing data.