The TTO is here to help SDSU faculty. What can the TTO do for you?
he TTO provides a variety of services for the faculty and University community to further its mission of commercializing research to benefit the public. These services can be divided into four different categories: intellectual property management and education, commercialization support, agreement negotiation and maintenance, and administrative assistance. At the TTO, service to SDSU faculty and researchers is its top priority.
IP Education and Management
The TTO obtains and maintains IP protection for intellectual property related to research and owned by the Research Foundation. Forms of IP protection include patents, copyrights, trademarks, and trade secrets.
These services include paying the potentially significant costs of obtaining patent protection for an invention, managing the patent prosecution process, evaluating patentability, obtaining assignments, administering paperwork for government patent offices, registering copyrights, and all other duties related to protecting University IP related to research.
Read more about Background on Intellectual Property.
The TTO manages the process for obtaining patents on inventions owned by the University. Known as patent prosecution, the process for obtaining a patent is lengthy, involved, and costly.
Because obtaining a patent is costly, the TTO works with faculty to generate licensing interest in the one-year window when an initial provisional patent application is still pending.
The TTO distributes royalties according to the University Royalty Distribution Guidelines. The guidelines provide that inventors and authors receive 50 percent of net royalties, as generous a share as any university in the country.
The home college of the inventors or authors receive 25 percent of net royalties to support scholarly activities, such as the inventors' or authors' own research.
The TTO is eager to be the campus leader on IP issues related to research. One of the core functions of the TTO is to educate the SDSU community on intellectual property: what it is, how it is protected, and how it is commercialized.
The TTO provides presentations on and off campus about IP and ways in which the TTO serves the community. Contact the TTO if you would like a presentation for your department or unit on campus.
The TTO also educates faculty who have disclosed inventions and creative works on IP, how to protect their idea, the patent prosecution process, licensing, and how to best commercialize their idea.
The mission of the TTO is to disseminate the products of University research for the public benefit. In furtherance of this goal, the TTO provides extensive advice, planning, and support to inventors and creators to help them commercialize their ideas and realize the benefits of their work.
The two primary paths to bringing an idea to market are licensing the idea to an existing company or building a startup company around the idea. The TTO helps inventors and authors select which path is most appropriate for their idea, as well as identify the companies, applications, and markets through which they can best capitalize on their creation.
Learn more about the Path to Commercialization.
Because the University cannot assign away ownership of IP, commercialization is primarily accomplished through a license, a contract that grants permission to make and use intellectual property.
The TTO is responsible for drafting, negotiating, and finalizing licenses of IP produced through research. Whether to a faculty startup company or an existing external company, the TTO considers the needs of the invention or creative work, the market, the University mission, and the desires of the faculty when crafting the terms of a license.
Although all licenses differ, common licensing terms include license exclusivity, patent costs, a license issuance fee, and a running royalty. At SDSU, inventors and authors receive 50 percent of the net royalties resulting from licenses of IP, as generous a share as any university in the country.
If the appropriate Path to Commercialization for an idea is through a license to an existing company, the TTO will market University creations and develop potential business relationships.
Often, a faculty member's own existing network is the most promising source of licensing partners. The TTO can further cultivate these relationships, create informational materials on inventions or creative works, and market ideas to generate licensing interest.
Startup companies are appropriate for commercializing some inventions and creative works, particularly ideas that are disruptive, unserved by existing markets, or create new markets. This is often the case with the innovative ideas resulting from university research, and increasingly so in an era when regions increasingly look to universities to foster innovation and economic development.
If a faculty member pursues commercialization of an idea by founding a startup company, the TTO can work with the company to license University IP. An exclusive right to use a University invention or creative work may provide the company the competitive advantage required to grow or raise funding. While license terms must be fair, the TTO's goal is to provide startup ideas with an opportunity to succeed.
In addition to licensing University IP to a new venture, the TTO can help faculty launch a startup company by connecting them with potential mentors, referring them service providers, introducing them to funding sources, helping them validate their idea through the CSU I-Corps program, managing IP protection, and providing commercialization advice related to the IP throughout the process.
The TTO's services are only available for companies relying on IP owned by the University. Student companies can launch a startup with the help of the ZIP Launchpad.
Learn more about the Path to Commercialization.
In order to facilitate commercialization of University creations and support the San Diego region, the TTO interacts and develops relationships with regional partners in the San Diego entrepreneurial community such as CONNECT, CSUPERB, Tech Coast Angels, Startup San Deigo, and the CSU I-Corps program.
SDSU is also founding member of the San Diego Innovation Council, a group of research institutions and organizations promoting a shared vision for regional growth through innovation, entrepreneurial activities, and education.
One of the most important steps in commercializing a research idea is validating that it solves a worthwhile problem. The NSF I-Corps Program forces scientists to leave the laboratory to talk to customers and accelerate the economic and societal benefits of their research.
The CSU I-Corps Site program is available to all campuses in the California State University system for research ideas related to biotechnology. The TTO assists with the program and Director Tommy Martindale serves on the teaching team.
The $2000-3000 microgrant is used to facilitate customer 30 interviews to validate the idea. Teams that receive a Go decision from the teaching team are eligible for the I-Corps National program, which includes $50,000 to validate the idea.
The benefits of I-Corps transcend commercialization: program participants win grants at a higher rate than those who have not participated in I-Corps.
Learn more about the CSU I-Corps Program.
The TTO maintains relationships with experienced entrepreneurs who will provide feedback on research or technology, share their industry expertise, or serve as mentors to faculty looking to license their technology or start a company.
In particular, the TTO can interact with the vast network of experienced entrepreneurs held by local accelerator CONNECT. For faculty pitch decks, CONNECT will convene a panel of domain experts to review the technology and share their insights. These domain experts often express interest in mentoring the faculty and building a relationship after the assessment.
Often, faculty researchers wish to release software via an open source license. Open source licenses release software to the public for free, with varying terms on modifications and the need to share those modifications 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. "Copyleft" open source licenses leave avenues for commercialization available in addition to releasing the software to free to those willing to follow the license terms.
Agreement Negotiation and Maintenance
The TTO reviews a variety of important agreements, including licenses, confidential disclosure agreements (CDAs), material transfer agreements (MTAs), inter-institutional agreements, and the intellectual property terms of sponsored research agreements.
If an agreement is related to IP, the TTO likely reviews part of it.
The TTO reviews and negotiates the intellectual property terms of sponsored research agreements. The terms of federal grants are usually straight-forward and acceptable to the University. The University cannot assign ownership of IP absent exceptional circumstances, but has significant experience negotiating IP terms with large and small companies.
For assistance creating, negotiating, or accepting a sponsored research agreement, contact Sponsored Research Development. For questions about the IP terms in a sponsored research agreement, contact the TTO.
A confidential disclosure agreement (CDA) is an agreement between two parties to maintain certain information in confidence. CDAs are vital 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, to negotiate a CDA, or to ask whether a CDA is necessary or appropriate.
Material Transfer Agreements (MTAs) are contracts governing the exchange of certain materials vital to research. he TTO reviews and negotiates many University MTAs related to research.
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 Cooperative Research and Development Agreement (CRADA) sets 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 IP will be handled and commercialized should any result from the research project.
An inter-institutional agreement (IIA) sets out the licensing, management, protection, and commercialization terms between the owners of jointly owned inventions.
IIAs are similar to CRADAs (Cooperative Research and Development Agreements), although IIAs are normally agreements entered into after an invention results, as opposed to before research begins.
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, SDSU University 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. If inventors or authors need help with a disclosure, contact the TTO for assistance.
Upon receipt of a disclosure, the TTO reviews the invention or creative work to assess the potential for IP protection and conduct a preliminary market assessment.
Upon receipt of a disclosure, the TTO evaluates whether the invention or creative work should be owned by the University (via the Research Foundation). Ownership is determined according to SDSU University Senate Policy, but the rule of thumb is that the University owns IP created with significant institutional support.
The TTO presents the disclosure to the University Copyrights and Patents Committee, which makes a recommendation on ownership to the Vice President for Research.
It is imperative that the University own IP produced with significant institutional support to further its research mission and to comply with federal law.
Although disclosures of inventions and creative works are evaluated by the TTO, ultimate determinations on the ownership of faculty and staff-created intellectual property are made by the University Copyrights & Patents Committee and the Vice President for Research.
The UCPC is a neutral group of 12 faculty and staff peers. The UCPC generally meets on the first Tuesday of every month.
The TTO presents disclosures to the UCPC, but does not have a vote on ownership of intellectual property. The UCPC's recommendations are forwarded to the Vice President for Research, who makes the formal determination on ownership.
One of the critical functions of the TTO is reporting inventions made using federal funds back to the funding agency as required by the Bayh-Dole Act.
Compliance with Bayh-Dole regulations does not merely require a one-time report, but continual updates that describe commercialization efforts, patent applications, and decisions on whether to elect title to an invention.
There are other compliance responsibilities as well, such as including certain language in licenses and identifying issues associated with export control regulations.