Technology Transfer Office

An Inventor or Author may contact the TTO at any time to discuss disclosure as well as other intellectual property (IP) issues. The Director will be able to advise the individual inventor/author when the invention/work will be ready to be disclosed. The earlier the TTO is involved, the better for the protection of the IP as well as clarification of issues for the inventor/author. The invention/work should be disclosed at least as early as the inventor/author reasonably foresees its completion.

The TTO advises authors to discuss any prospective instructional media work with the TTO prior to discussing it with the Instructional Technology Services department (ITS).

Most funding sources (including the federal government) require that inventions be reported to the University as early as practicable. Even intellectual property development sponsored by the private sector should be disclosed to the TTO prior to the execution of any agreements or assignment of any intellectual property rights.

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Common Law Copyright. Any author of a completed, original work is automatically protected by U.S. copyright law at the time the work is completed. This is what is known as a common law copyright.

It is strongly recommended that the author of a work, including a written work, software, and all types of media publications, include the following script in a prominent place on the work: "© [year of creation], [author(s)'s name(s)]. All Rights Reserved."
	Ex: © 2002, David C. Guzman, M.D., M.P.A. and Elizabeth Chan, Ph.D. All Rights Reserved.

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Keeping detailed research notebooks is helpful for clarifying the invention process leading up to a patent. A good research notebook can: (1) Clearly establish inventorship; (2) provide evidence for disputing challenges to patent claims; (3) provide a record of or reference to the efforts of co-inventors and assistants (i.e., graduate students); (4) record any use of prior art; (5) reference particular funding sources and record why the research was done; and (6) record the use of licensed proprietary materials.

In keeping a notebook, a researcher is advised to either maintain a hand-written bound notebook or an electronic record containing entries as research occurs, while a research session is still fresh in the researcher's mind. The entries should be maintained in chronological order as much as possible.

General Advice:

	Sign and date every entry;
	Maintain entries in chronological order;
	Cross-reference corrections back to the original crossed-out entries;
	Try to include all thoughts and their evolution in research records. While a thought not followed through at the time may not seem important, a record of the inventor's thought process during research may provide evidence of inventorship, as well as assistance in the research process at a later stage.
	Give credit where it is appropriately due and reference work of co-inventors and assistants;
	Record use of licensed proprietary material;
	Briefly record all funding and your purpose in using such funds;
	Strive to make entries as detailed and complete as possible.
	Archive electronic entries by having them copied onto a disc and stored by another person (e.g., an assistant within the department or a colleague who has signed a confidentiality disclosure agreement).
	Archive hand-written entries by having them photocopied and maintained by another person (e.g., same as above).
	Safeguard original entries by using electronic password protection or by locking up handwritten notebooks in a safe place every night.

Hand-Written Bound Notebook:

	Use a bound notebook with numbered pages;
	Make use of every line and each side of each page. Blank space that is not made use of should be crossed out;
	Write legibly;
	Use ink rather than pencil;
	ü Cross out entries that are later corrected and date and initial - do not erase.

Graduate Student Notebooks:

If graduate students participate in research, have them maintain their notebooks in the lab. Only allow a graduate student to remove photocopies of notebook pages, or copied discs, from the lab. Graduate student notebooks should be locked up in a safe place nightly along with other research notebooks. If a graduate student uses a notebook computer, the electronic record should be kept on a designated disc, rather than on the hard drive. This original disc should be locked up nightly along with the research notebooks.

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Points for the Inventor to Consider:

	If graduate students participate in research, have them maintain their notebooks in the lab. Only allow a graduate student to remove photocopies of notebook pages, or copied discs, from the lab. Graduate student notebooks should be locked up in a safe place nightly along with other research notebooks. If a graduate student uses a notebook computer, the electronic record should be kept on a designated disc, rather than on the hard drive. This original disc should be locked up nightly along with the research notebooks.
	Public disclosure includes:   Discussing the invention idea with, or within hearing distance of, an individual not obligated to keep the information confidential;   Publishing any work revealing the invention idea;   Publicly speaking about the invention idea.
	To avoid public disclosure:   Have all individuals not otherwise obligated to keep information confidential sign a confidential disclosure agreement prior to any discussions;
	Advise the TTO of any public disclosure immediately. U.S. patent law requires a patent application to be filed within 1 year of public disclosure, or the inventor loses her right to file a patent application altogether.
	Discuss the invention idea with the TTO early and file TTO documents in a timely manner to allow the patent application to be filed as early as possible. It generally takes a patent attorney one to two months to file a patent application once she has received all necessary information from the inventor.

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The NIH encourages and expects that biomedical research resources developed with NIH funds be shared among the research community to the greatest extent possible, provided intellectual property rights to resources determined to be patentable are not infringed.

THE NIH guideline, "Sharing Biomedical Resources: Principals and Guidelines for Recipients of NIH Grants and Contracts," may be found on the NIH Office of Technology Transfer website link provided here.

These guidelines provide sample agreements for the transfer of biological materials. Please use the SDSU Material Transfer Agreements instead.

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The Guidelines may be found at the following link: http://www.foundation.sdsu.edu/tto/policies.html

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