PATENTS AND INTELLECTUAL PROPERTY
Why get a patent?
Rightly or wrongly, most companies will not commit to developing your innovation unless they have some reasonable expectation that their investment will generate financial returns. For patentable innovations, most companies will require a patent or patent application as this form of intellectual property protection provides the strong market advantage needed to justify the significant investment of resources necessary to develop a product or service from your innovation. Seeking a patent can be done in parallel with traditional academic activities such as publication and speaking at conferences. As long as the patent application is filed first, it is no problem to publish on and speak about your innovation while simultaneously seeking a patent.
Does seeking a patent prevent me from publishing or presenting my research?
Absolutely not. Seeking a patent can be done in parallel with traditional academic activities such as publication and speaking at conferences. As long as the patent application is filed first, it is no problem to publish on and speak about your innovation while simultaneously seeking a patent.
What is the difference between a provisional patent application and an invention disclosure form?
Submitting an invention using an invention disclosure form is just the first step in the commercialization process. It serves to provide CSU Ventures with an official record of your innovation but does not bestow any intellectual property protection (i.e., it is not a patent application). When patent protection is desired (e.g., before an upcoming presentation or publication), our office can file a provisional patent application with the U.S. Patent and Trademark Office (USPTO). This document protects the innovation for up to one year, during which time a non-provisional patent application must be filed to continue the patent process. We file these for you, but we will also require an invention disclosure form.
How much does a patent cost? Who pays for getting a patent?
Filing for and receiving an issued patent is an expensive process that can easily cost $15,000-$25,000 or more (a lot more if foreign patents are desired). Of course, CSU innovators are not responsible for these costs. Typically, the company(ies) licensing the innovation will be responsible for the costs of obtaining a patent. Although CSU Ventures will sometimes elect to pursue a patent without a licensee, the expense of obtaining a patent is a major reason why we must be selective in which innovations to sponsor.
Is it possible to get an international patent? What is a PCT?
There is no such thing as an international patent that affords protection everywhere in the world. A Patent Cooperation Treaty (PCT) application is a single application used to enter a patent application into most legal jurisdictions in the world. A PCT application is filed early in the patent process, and 18-30 months later a decision must be made regarding which jurisdictions that application will be transferred to. In effect, a PCT application simply provides more time to decide which foreign patents to pursue.
Will CSU Ventures initiate or continue a patent application without an identified licensee?
We are almost always willing to initiate the patent process through the filing of a provisional patent application. These applications are inexpensive, quick, and do not require the use of outside patent counsel (we usually file them ourselves). The catch is that a much more expensive non-provisional patent application must be filed within one year to continue the patenting process. Because of the expense associated with obtaining a patent, we usually require that a licensee be found before we will file a non-provisional patent application. However, we will sometimes decide to patent an unlicensed innovation if it appears particularly promising. In other cases, it may be possible to re-file a provisional patent application in order to gain another year to find a licensee.
How is software protected? Can it be patented?
All software is protected by copyright. In addition, some software may be patentable if it embodies a novel process or algorithm. Regardless, patents are not necessary for software to have commercial potential and we are interested in hearing about any software you may have developed. We can also assist if you would like to distribute the software at no cost. When considering the potential of software, it is also important to evaluate the licensing terms of any third-party source code that has been incorporated into the software. While some open source licenses are very permissive, others are not. We can assist you with this process.
What is a Material Transfer Agreement (MTA)?
A MTA is a type of confidentiality agreement that governs the transfer of research materials between two organizations. The MTA does not transfer ownership – the materials are merely lent to the receiving scientist/organization and the MTA sets forth the conditions of the loan by defining the rights of the provider and recipient with respect to the materials and any derivatives, as well as the purposes to which the material may be put. Biological materials, such as reagents, cell lines, plasmids, and vectors, are the most frequently transferred materials, but MTAs may also be used for other types of materials, such as chemical compounds and even some types of data sets and software.
Does CSU Ventures sell commercial products?
No. Rather than selling the products ourselves, we license the legal rights to an innovation to a third party that then develops the innovation into a commercial product or service. Although in some cases our licenses will include the transfer of software code or biological materials, these are one-time transfers to assist the licensee in developing the product or service.
Can I request that CSU Ventures distribute my software at no cost and/or as open source?
Absolutely. In most cases, we will honor your requests with respect to providing software at no cost and/or under an open source license, so long as these requests are not contrary to the terms of any applicable sponsored research agreements. It is still a good idea to contact us so that we can identify an appropriate license agreement that best suits the software and protects you and CSU from any unwanted product liabilities.
How does CSU Ventures find someone interested in my innovation?
After discussing the innovation with you and initiating patent protection (if necessary), marketing the invention is the next thing we’ll do.
Can I decide what company will get my innovation?
More than half of licensing deals are executed with companies that were identified by the inventors of the technology. Your input during the process is invaluable and we will generally listen to your advice. In some cases, CSU innovators want to create a new company to commercialize their innovation. Some innovations are well-suited to be commercialized by a startup company, others are not.
I would like to be involved in the negotiations. Is that possible?
Typically, we ask CSU innovators to leave the negotiations to us. We’re happy to hear your concerns and any particular terms that are important to you, but license agreements are complex and we will be representing your interests, those of CSU, as well as our own. Accordingly, it’s usually best for us to handle the negotiations.
How long does the licensing process take?
The licensing process often requires weeks to months before negotiations are complete. The length of time depends on such factors as the starting positions, the responsiveness, and size of each party (larger organizations usually require more approvals before an agreement can be finalized).
How are royalties paid out?
After we have recouped our direct expenses incurred on your innovation (e.g., patent costs), revenue from innovations is distributed as per CSU policy: 35% to the inventors personally, 15% to CSU’s Office of the Vice President for Research, 10% to the inventors’ college(s), and 40% to CSU Ventures.
Can I direct all revenue from my innovation to a specific college/department/lab?
As a rule, no. Revenue derived from your innovation will be distributed as per CSU policy, which dictates that after we have recouped our direct expenses on your innovation, 10% of the revenue goes to the college(s) of the CSU innovator(s). The college may direct the money to the CSU innovator’s department but that is done on a case-by-case basis and there is no guarantee. In addition, you may direct your personal share of the revenue to your department, but there is no requirement that you do so. Keep in mind that you may still be required to pay tax on this money (consult a tax professional).
What do I need to know about starting my own company?
Before starting a company to develop a CSU innovation, prepare yourself for what lies ahead. The best way is to contact us. We’ll be happy to discuss the new venture and what CSU and CSU Ventures will ask of you. Read our brief overview on forming a startup or, for an in-depth roadmap, see the comprehensive Startup Guide.
When does it make sense to start a new company?
This depends on many factors, including the innovation, the founding team, and target market. Platform technologies (innovations that support multiple applications and products) and disruptive technologies (innovations that lead to products that are different from existing products) are often well suited to startup companies. Innovations that lead to more incremental improvements, have a very specialized focus, or that can be readily implemented into an existing service or product line are often best licensed to existing companies that have the commercialization infrastructure. Forming a startup is not easy, and the skills, dedication, and ambition of the founding team are also important. While the CSU innovator is often in the best position to further its development, he or she will need to fully commit if the startup is to succeed.
How can CSU Ventures assist my new company?
We are willing to do everything that we can to ensure your startup is successful. Examples of how we can assist are: Connecting you to qualified business partners or investors in our network, finding student groups to perform initial market research, competitive analysis, etc., filing (and sometimes sponsoring) patent applications on your innovation, awarding research grants to your lab (in some cases), providing guidance and advice, and assisting in identifying a CEO (or business driver).
Can I start my own company and keep my position at CSU?
CSU encourages entrepreneurship among its faculty and students and allows CSU innovators to found companies while maintaining their position at CSU. CSU even allows new startups to rent space and sponsor research in the innovator’s own CSU laboratory. As long as a current Conflict of Interest/Commitment Management Plan is developed and followed, it is usually possible for CSU innovators to participate in a startup company. (See Section D.7 of CSU’s Academic Faculty and Administrative Professional Manual.)
How do I manage Conflict of Interest/Conflict of Commitment with a startup?
Deans, department heads, and directors typically manage Conflict of Interest and Conflict of Commitment (COI/COC) concerns according to guidelines set forth by the Office of the Provost and Executive Vice President in Section D.7 of CSU’s Academic Faculty and Administrative Professional Manual. The same process applies to CSU innovators seeking to found a startup company. In most cases, CSU Ventures requires that a current COI/COC management plan is in place before executing a license with a startup company.
Can I start a company so that I can apply for SBIR/STTR funding?
Many federal agencies that sponsor basic research offer small business innovation research (SBIR) and small business technology transfer research (STTR) grants to small, for-profit U.S. companies seeking to develop new technologies into new commercial products or services. SBIR/STTR funding can be instrumental to early-stage CSU startup companies. SBIR/STTR grants are extremely competitive and have strict requirements (e.g., the Principle Investigator must be more than 50% employed by the applicant company at the time of award), therefore, it is generally not advisable to found a company solely to augment the research funding to an academic laboratory.
Can my company conduct research using CSU space and facilities?
Yes. Most often, CSU startups will lease CSU space and facilities use by negotiating a Master Research and Development Agreement with CSU’s Office of Sponsored Research. Although not free, the rent charged by CSU is usually quite reasonable. It is also possible for your company to sponsor research in your CSU lab under terms similar to those required of any other company.
Can I hold a management position in the company?
Yes. As long as a current Conflict-of-Interest Management Plan is in place, CSU will usually allow its faculty to hold management positions in the company while maintaining their position at CSU. Although having two jobs can be feasible initially, managing a successful company is usually very time-consuming and we encourage CSU innovators to find qualified executive talent to run the company.
Can I sit on the Board of Directors or Scientific Advisory Board of the company?
Absolutely. CSU innovators who found companies do not have to manage the day-to-day operations. Maintaining a seat on the Board of Directors and/or on the Scientific Advisory Board allows CSU innovators to provide direction and guidance to the startup without committing as much time to the company.
Can I consult for the company?
Yes. CSU innovators are usually allowed to provide paid consulting services to the company, provided that an up-to-date Conflict of Interest/Commitment Management Plan is in place.
Do I still receive royalties on innovations licensed to my company?
Yes. In addition to any arrangements you may have personally with the company (e.g., holding equity shares, paid consulting), you will still receive your share of any revenue that CSU Ventures receives under the license agreement with your company. This is an especially nice perk if your company is acquired by another company, as the license agreement will in most cases continue to earn royalty income even after you’ve sold your personal shares in the company.
What is CSU Ventures and what does it do?
CSU Ventures provides all technology transfer and commercialization services for CSU faculty and researchers. We connect individuals and companies in the private sector with the brilliant innovations developed at CSU so that the University’s research has the greatest impact possible.
I am not part of the CSU community. Can CSU Ventures help me with my innovation?
Yes and no. CSU Ventures provides technology transfer services to CSU exclusively and as such cannot generally provide financial or patent support to innovators that are not affiliated with CSU. However, if you are seeking assistance to further test or develop your innovation, we may be able to connect you with a CSU faculty member who has the relevant technical expertise. If you are looking for CSU innovations to license, or are looking to work with a CSU startup company, then please browse our Available Technologies, Pending Startups, and Existing Startups or contact us directly.
How do I find a CSU startup to partner with and/or invest in?
How much does it cost to license a CSU Ventures innovation?
There is no one-size-fits-all license. We strive to accommodate the particular needs of each licensee and will utilize a situation-appropriate combination of terms, which will depend on the innovation and the type of license desired (exclusive, non-exclusive, field of use, etc.). Most licenses require an upfront licensing fee and ongoing royalty payments. Licenses to startup companies looking to backload the financial terms will often contain equity and milestone payment terms.
How can I get into contact with a particular startup?
Just contact us and we will discuss where and how you might best fit in.
Are paid consultants also needed by university startups?
Most CSU startups utilize a variety of skills to help them get off the ground and many will hire consultants. Keep in mind, however, that most startups are also short on cash and may require alternative fee arrangements, such as equity compensation or deferred payment schedules.
What kinds of compensation packages are available for executives looking to work with a startup?
CSU Ventures provides guidance to CSU startups but ultimately it is up to them to develop executive compensation plans. Generally speaking, most startups often request arrangements such as equity compensation or deferred payment schedules in lieu of a salary, at least in the early stages.
Can my company conduct research using CSU space and facilities?
Absolutely. CSU welcomes collaborative research opportunities with your company (whether it is a CSU startup or not). In addition to sponsoring research in the lab of a CSU faculty member, CSU also offers state-of-the-art incubator facilities (including wet lab space). Check out our Research and Specialized Facilities pages, as well as the For Industry FAQs to learn more.
I don’t know who to talk to at CSU Ventures.
A good place to start is by contacting our office at (970) 491-7100, or simply email us using the Contact Us form. You can also view our Staff Directory.