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!