Where do I Start?

INTELLECTUAL PROPERTY, PATENTS, TECHNOLOGY TRANSFER, AND COMMERCIALIZATION

BASIC STEPS

Step 1-- DETERMINE IF YOU HAVE AN INVENTION  -- A member of the Faculty, Staff or Student determines that she or he may be developing or have already developed an INVENTION, DISCOVERY OR INNOVATION that could be patented or commercialized. http://www.fresnostate.edu/academics/grants/proposal/policies/intellectualandpatent.shtml

Step 2
-- FILL OUT AND SUBMIT AN INVENTION DISCLOSURE FORM – To the Office of Research and Sponsored Programs (ORSP) .   http://www.fresnostate.edu/academics/grants/proposal/forms/patentform.shtml

Step 3: ORSP REVIEW -- The Office of Research and Sponsored Programs collects preliminary information for review by the PATENT BOARD or INTELLECTUAL PROPERTY COMMITTEE.

Step 4:  PATENT BOARD REVIEW– Reviews information to determine: (1) if the University has provided EXTRAORDINARY RESOURCES or will in the future; (2)  if the INVENTION has strong potential to receive a patent or to be commercialized; and (3) if the University has an EQUITY INTEREST.

Step 5: THE PROVOST DECIDES THE NEXT STEP – Based on the Patent Board’s recommendation, the Provost decides whether or not to have the UNIVERSITY OR FOUNDATION take further action, such as making an application for a patent, providing support for commercialization.

Step 6: AGREEMENT WITH THE UNIVERSITY – If the University determines it has an EQUITY INTEREST and/or it decides to provide more financial support on your behalf, then you either negotiate a separate agreement or assume a DEFAULT AGREEMENT.

Step 7-- ONE OF THREE OPTIONS!!!
Option 1- IF THEUNIVERSITY HAS EQUITY INTEREST AND PROVIDES MORE SUPPORT

  • SEEK PATENT PROTECTION WITH UNIVERSITY SUPPORT
  • FURTHER DEVELOP, TRANSFER OR COMMERIALIZE INVENTION
  • REPAY UNIVERSITY EQUITY INTEREST FROM GROSS INCOME
  • SPLIT NET PROFITS 50/50 OR BY OTHER PRE-DETERMINED FORMULA

Option 2- IF THE UNIVERSITY HAS EQUITY INTEREST BUT NO ADDITONAL SUPPORT
Creator/Inventor proceeds on own behalf with obligation to repay University from first gross income. After repaying, you go forward on your own.
Option 3– IF THE UNIVERSITY HAS NO EQUITY CLAIM OR FUTURE INTEREST
Creator/Inventor goes forth, maybe takes on partners, accepts all the risks and (hopefully) prospers!