How to share your idea with the world
hile each invention and creative work is different, the TTO has a plan to move ideas from campus into the wider world.
Deploying each invention or creative work takes some or all of the following steps in the Path to Commercialization. The the TTO will tailor a plan to suit the goals of the inventor or author, the characteristics of the idea, the IP involved and the needs of the market.
The TTO helps commercialize all inventions and creative works owned by the University (by way of the Research Foundation). Most of those creations are produced through the research efforts of faculty and students.
Research is the fuel that drives innovation, and the TTO supports SDSU faculty inventors and creators by helping them commercialize the products of their research. If you have discovered, invented, or created something in the course of your research, proceed to the next step: Disclosure.
Student and staff ideas divorced from research may be candidates for the ZIP Launchpad, SDSU's on-campus accelerator.
Begin the commercialization process and the TTO's involvement with disclosure via the TTO's Inventor Portal here or at the link below. SDSU faculty are required to disclose all inventions, creative works, and software arising from sponsored research, institutional support, or university employment.
It is important to initiate the invention disclosure process prior to publication, presentation, or demonstration to the public, as public disclosures can act as a bar to patent rights.
Contact the TTO with any questions about whether or when to disclose a discovery, invention, or creative work. The TTO asks inventors to allow it at least 30 days to evaluate an invention. If the TTO doesn’t know about the invention, then it can’t help share the idea with the world!
The TTO evaluates all disclosed inventions, creative works, and software before the commercialization process begins. As part of the evaluation, the TTO will speak with the inventors or authors, determine the level of institutional support, assess patentability and perform a prior art search (for inventions), research the market for the creation, identify potential licensees, and approximate the market potential of the creation.
The TTO will share the findings of its preliminary evaluation with the University Copyrights and Patents Committee, a neutral committee serving the interests of the faculty, University, and Foundation composed of 12 faculty and staff members.
The UCPC will determine if it would be proper for the Research Foundation to own the disclosed IP, and recommend whether to exercise or waive ownership. UCPC recommendations proceed to the Vice President for Research for final determination. The TTO works collaboratively with inventors and authors in evaluating disclosures.
If the UCPC determines that the Research Foundation should own the creation, the creators will be asked to complete an assignment of the invention or creative work. Otherwise, title will remain with the inventors or authors. The UCPC generally meets on the first Tuesday of every month, and TTO asks inventors to allow it at least 30 days to evaluate an invention.
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.
If the UCPC recommends and the Vice President for Research accepts ownership of an invention or creative work, the TTO may file a patent application to protect the invention after assignment from the creators.
A provisional patent application could be filed a few weeks or months after UCPC approval, depending on the circumstances. For copyrightable works that should be owned by the University, additional protection generally need not be sought as copyright protection is automatic upon publication.
In the U.S., provisional patent applications last for one year before they need to be converted into a non-provisional patent application. Due to limited resources, the TTO is often unable to pursue the cost of conversion absent expressed licensing interest. If the TTO declines to convert or maintain a patent or patent application, the Research Foundation may return the IP rights to the inventors.
Upon pursuing IP protection (if applicable), the TTO will speak with the authors or inventors and develop a plan for commercialization of the work by assessing the market, identifying potential licensees, and contacting industry and community partners. The protection and planning process begin soon after a decision by the UCPC and is ongoing for the life of the creation.
The Path to Commercialization from here has two main directions: licensing to a startup company or licensing to an existing entity.
In some instances, University creative works, basic research, or disruptive technologies are best commercialized by a startup, a small business trying to turn an idea into a viable business model. In those cases, the TTO will work closely with the inventors or creators upon formation of a startup company.
A license is a grant of permission to use IP, the terms of which are set out in a written contract. If a startup is the most viable route to commercializing an invention or creative work, the TTO will negotiate a license with the startup company to use the technology.
If a faculty member or team working with University IP wishes to create a startup company, the TTO will work closely with them to help realize that vision by providing counsel related to the IP, and connecting the company with partners or funding sources in the community. The TTO can provide faculty startups with fair licensing terms that include deferred patent expenses and reasonable royalty rates.
Additionally, the campus has resources to help startups built around University IP including access to mentorship, the CSU I-Corps program, and the ZIP Launchpad. Ask the TTO about the services and resources they can provide to assist startup companies.
Often, forming a startup company is not the best path to successfully commercialize an invention or creative work.
Another viable Path to Commercialization is licensing the technology to an existing company outside the Univeristy. Licenses can be either exclusive (only granted to that recipient) or non-exclusive (can be licensed to many different parties). The TTO will negotiate license that suit the needs of the licensee, University, Foundation, and creators. In licensing transactions, the TTO aims to maximize public benefit by moving the IP out into the public.
The time to complete license negotiation and execution varies greatly on many factors, but timeliness is a priority of the SDSU TTO.
Royalties earned from licensing transactions are split according to the University's Guidelines for Royalty Distribution, which include a 50-50 split on net royalties between the creators and the University, a generous share by both private and public university standards.
The TTO continues to manage creations into the future with a focus on a collaborative relationship with inventors. The TTO does its best to simultaneously serve the interests of the faculty and University while maximizing public benefit with limited resources.