Intellectual Property Protection and Commercialization
Research and Development
As a faculty member, student, researcher, or staff member at Cal Poly, you have the opportunity to create new inventions. Your discoveries may be a new technology or an enhancement of an existing technology. New technologies that you have developed should consist of original useful methods, techniques, or creations. Finding should be recorded, dated, and witnessed in laboratory notebooks and kept confidential.
We understand that faculty, staff, and students have a need to disclose work in a public setting. However, if done before patent protection, rights to protect the invention may be lost.
Prior Art: Any public disclosure prior to patent application is considered prior art. Examples that may be considered public disclosures include: academic papers, abstracts, online publications, presentations, seminars, and thesis defenses.
What you should do? Speak with the Technology Transfer office in advance of planned public disclosure(s) and discuss options to protect any new discoveries, methods, or technologies.
The University is committed to providing an intellectual environment in which all members of the academic community learn to the fullest extent possible. The University recognizes and values creativity and innovation as part of this learning process. The University wishes to encourage the transfer of new knowledge generated in the University to the private sector and for the public good.
Prior to public disclosure, make early contact with the Cal Poly Technology Transfer office. Technology transfer personnel will provide direction for disclosure, assessment, and the patenting processes. Submit your Invention Disclosure Form -- which is an important legal document for technology transfer agreements. The Technology Transfer office will provide the Invention Disclosure Forms and guidance. If you do not feel your research is at the point to warrant a formal invention disclosure, contact the Technology Transfer office for guidance.
The Technology Transfer office will evaluate your idea and pose questions such as:
- Is there a market for your discovery?
- Can your technology be protected?
- Is your concept nuanced, nonobvious, and valuable?
- Are they are prior art issues?
A technology transfer representative will review the Invention Disclosure, evaluate the market for competitive technologies, and determine commercialization prospects.
If Cal Poly decides to pursue patent protection, an outside patent attorney and the Technology Transfer office will begin to work with you to draft a patent application. Our patent attorneys will provide innovative analysis for suggestions, submissions, and claim coverage during the patent drafting phase. After patent application submission, you may be called upon to work with the patent attorney to address any office actions from patent officials. Typical patent reviews often take two to three years from application to issuance.
Marketing and Commercialization
With your input, the Technology Transfer office identifies possible licensees, and will market your technology to interested companies. Non-disclosure agreements are sometimes used with potential licensees to assess claims and technology suitability. Your active participation is crucial to identify credible networks for market commercialization.
Licensing and Revenue
Cal Poly will seek to license the invention to a third party. The license is a negotiation between Cal Poly and the commercial partner. The inventor's expertise is beneficial throughout this process. Royalties received by Cal Poly from licensees are distributed according to the Cal Poly Intellectual Property Policy.
Accurate inventorship is extremely important. Each person listed as an inventor must have contributed to the "conception" of the invention as described in any surviving claims in an issued patent. In patent law, "conception" is the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice. Consult the Technology Transfer office for guidance if questions exist regarding inventorship.
Questions and Answers
Does Cal Poly file patent applications on all inventions developed by faculty, staff, and students? No. Cal Poly requires that all inventions must first pass the basic test for patentability and have commercial potential before the University will apply for a patent on behalf of the inventor(s).
Who pays the cost of obtaining and maintaining a patent? If Cal Poly decides to apply for a patent, then the University pays for all expenses including the attorney's fees and fees to obtain and maintain the patent. Such costs are reimbursed to Cal Poly from any revenues ultimately obtained from commercialization of the intellectual property. Costs may also be shared or covered entirely by a third party (future licensee) if this is negotiated by the Technology Transfer office or pre-negotiated as part of a sponsored research project.
Is my invention protected internationally by default? Based on market potential, the Technology Transfer office will decide whether to file your patent domestically through the United State Patent & Trademark Office (USPTO) or make necessary arrangements to file internationally through the Patent Cooperation Treaty (PCT). Cost to file internationally is significantly higher than U.S. filings.
The content of this page is for general information and does not alter the Cal Poly Intellectual Property Policy.