CSURF-Technology Transfer Office

Technology Transfer - The Process

A Summary of the Technology Transfer Process at CSU The Steps:
1. University policy requires that inventions or works created by faculty, staff and students using University resources be disclosed to the University, as outlined in Section J of the Academic Faculty and Administrative Professional Manual. This can be reviewed at the Colorado State University web site http://facultycouncil.colostate.edu/files/manual/sectionj.htm. (Ownership of intellectual property, consulting, distribution of royalties and the rights and obligations of faculty and staff are among the other issues covered in Section J. The University continues the tradition of not claiming ownership of materials such as textbooks, or their equivalent, not supported by it or expressly commissioned by it). The invention disclosure form can be obtained from CSURF at their web site www.CSURF.org.
2. The invention disclosure describes the technology and the circumstances under which the technology was created. The disclosure lists all sources of funding, inventors and industrial contacts. Any relevant material can be attached to the form. The purpose of the invention disclosure is to notify the University of the technology and to determine if it is patentable and/or commercially viable. The Invention Disclosure is received by CSURF and VPR, and preliminary evaluation is performed.
3. Public disclosure occurs when the invention is described in a public forum such as presentation, publication, poster session etc. with enough detail that the audience would be able to practice the invention being described. CSURF evaluates the Invention Disclosure and determines if a public disclosure has occurred or when the anticipated public disclosure will take place. This date is important as it establishes a deadline by which a patent application must be filed if foreign patent protection is desired or, if the invention arises out of federally sponsored research, a date by which the University has to relinquish rights back to the federal agency.
4. This process is intended to provide the inventors with an initial indication of the extent and type of protection that would be available and can be divided into five individual steps:
	a. A preliminary patent search is performed by CSURF. This is a key-word search and is conducted on the publicly available patent databases (www.delphion.com and www.uspto.gov/main/patents.htm). This search provides an initial indication of the scope of prior art and the protection that may be obtained. The search results are provided to the inventors for review. b. The inventors review the search results to determine the relevance of the prior art. This review is usually a good indicator of relevance of the art found in the search. Depending on the feedback, the search criteria may be modified and the search repeated. c. A modified search may be performed to better isolate the key prior art. The input of the inventors is critical to this process, as they are best able to evaluate the relevance of any patent search. Not only does this provide information with respect to potential patent coverage, but it may also provide relevant information to the inventors to which they have not formerly had access. d. Based on the outcome of the search, a decision may be made by the inventors and CSURF about performing additional research to develop supplemental data and submitting a revised disclosure at a later date. e. The alternative decision would be to submit the invention disclosure and search results to a patent attorney for a formal evaluation regarding the extent of patent protection expected.
5. In concurrence with evaluating the extent and type of protection available, CSURF attempts to identify those companies that may be interested in the technology as well as be potential commercialization partners and/or licensees. This process can also be divided into five steps:
	a. CSURF, in conjunction with the inventors, develops a non-confidential description of the invention that can be used to "market" the technology to prospective licensees. b. CSURF performs a preliminary market assessment to determine if there are any competing technologies, determines potential market size, and determines the differences and advantages of the invention in relation to existing technology. c. With input from the inventors, CSURF also develops a list of potential partners for commercialization or licensees. d. The information developed and collected above is provided to the prospective licensees to assess their interest in commercializing the invention. e. CSURF works closely with the inventors in a team effort to determine the best avenue for commercialization.
6. After the initial input from the patent attorney and comments from industry have been received and reviewed, a decision can be made either to file a provisional patent application or a utility patent application.
	a. A patent application is usually filed if there is definite interest from a company in licensing the invention. This may be a utility patent application or a provisional patent application, depending on the status of the technology. b. The patent application is normally filed concurrently with negotiating terms for the license. At this point, the potential licensee becomes a part of the team in determining the protection strategy. CSURF views technology transfer as a collaboration requiring participation and input from the inventors as well as the licensee. c. A provisional patent application may be filed instead of a utility patent application. This application establishes the priority date and can be converted to a utility patent application within the following one-year period. A provisional patent application provides a one-year period to perfect the invention, produce additional research results in support of the claims and find a partner for commercialization.
7. At the conclusion of all of the above processes, the goal is to have an invention that is being commercially exploited and generating revenue. This revenue is divided between CSURF, CSU and the inventors according to policy.


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