Inventors Info | 
The Technology Transfer Office (TTO) follows a standard process for evaluating all inventions. The first step of the process is to identify a proprietary discovery that has been "reduced to practice" and has utility or design value as an invention. Next, the invention is assessed as to whether it has commercial potential. Finally, the invention is evaluated as to whether it is patentable and, if so, whether it will be practicable to police the patent for infringement. If the invention meets all the appropriate criteria, the TTO contacts a patent attorney, who works with the Inventor to file a patent application. After the patent is filed, the TTO initiates the marketing and licensing of the technology.
- Informal Discussion
- Invention Disclosure
- Detailed Interview with the Inventor
- Evaluation of Technology
- University Copyright and Patent Committee
- Patenting
- Licensing
- Informal Discussion.It is useful for the Inventor to make an informal visit to the TTO to inform the Director that an invention is imminent. The Director will review the uniqueness, novelty and usefulness of the technology and the scope of the commercial market with the Inventor. Additionally, the Director will discuss the use of a Confidential Disclosure Agreement (CDA), publication and/or presentation plans and the measures necessary to maintain the invention's confidentiality (i.e., preventing it from entering the public domain, which interferes with patentability).
- Invention Disclosure and Declaration of Institutional Support Forms.These are documents that formally disclose an invention to the University and initiate the events described below. The Inventor should download these documents from the TTO homepage and complete, sign and submit them to the TTO. If there are manuscripts, grant applications or other written materials that describe the technology, please submit them with the disclosure. Otherwise other written materials that describe the content of the invention should be submitted with the disclosure.
- Detailed Interview with the Inventor.There is no one who understands the invention, the scope of its uses, and its potential commercial applications as well as the Inventor. During a detailed interview between the Director and the Inventor, patentability issues and commercial potential are discussed. The Director typically queries the uses (applications) of the technology; its advantages and limitations; the market; potential licensees and corporate collaborators; the competition; what needs to be done to the technology before it is ready to be commercialized; and future research and development plans. In addition, the use of University resources are discussed, as they may determine the role of the Foundation in licensing or the distribution of royalty from the commercialization of the work. Finally, the Inventor is apprised of the fact that the Copyright and Patent Committee will ultimately determine whether or not the invention should be assigned to the Foundation, or returned to the Inventor.
- Evaluation of Technology. The TTO assesses the patentability, marketability and commercial potential of the invention. Assessment includes, but is not limited to, searches of the Internet and available databases; discussions with attorneys; discussions with potential licensees; and discussions with other experts in the field. The evaluation must establish whether or not the technology can be protected (patented); if the patent can be policed; and if the invention has a commercial opportunity (whether licensed to an existing company or to the Inventor's start-up a company).
- University Copyright and Patent Committee. The Director of the TTO presents the patentable, commercially viable projects to the Copyright and Patent Committee and, based on the results of the evaluation, the Copyright and Patent Committee recommends that the work be: a) assigned to the University (and to the SDSU Research Foundation) for patenting and licensing; b) tabled pending acquisition of additional information or; c) returned to the Inventor for their personal exploitation and/or commercialization effort (in which case, the University relinquishes its right to the invention). If the Copyright and Patent Committee formally recommends the transfer of the invention from the Inventor to the University, then after approval by the Vice President for Research, the Inventor assigns ownership of the invention to the Foundation for patenting and licensing.
- Patenting. The TTO contacts one of several patent law firms that work for SDSU Research Foundation and submits whatever written material the Inventor has provided to the firm for their review and patent cost estimate. After the TTO has approved the cost estimate, it notifies the Inventor that (s)he will be contacted by a patent attorney who will write and file the patent with the United States Patent and Trademark Office (USPTO).
- Licensing. The TTO performs database searches and explores its network of contacts for licensing opportunities. The Inventor typically becomes involved in identifying opportunities as well, if the Inventor has become aware of potential licensees through contact with fellow scientists active in its field of work; scientific literature; publications emanating from corporate research; or a direct contact from a company expressing an interest in the invention. Once sufficient information has been gathered, the TTO evaluates it and contacts potential licensees to explore their interest in licensing. If there is a mutual interest to pursue a licensing arrangement, general terms and conditions of an agreement are discussed, including alternatively purchasing a future option to license if the invention is in an early stage of development. The Inventor then presents a seminar to the interested company; a detailed, confidential discussion with key corporate individuals takes place; and, if the company decides to seek a license, a license agreement is drafted.
Usually, the SDSU Research Foundation maintains ownership of the invention and licenses the rights to commercialize the invention to the company. The license (or option for a license) is a comprehensive document that describes all the details of the working relationship between the company and the SDSU Research Foundation (the representative of both SDSU and the Inventor), the scope of the company's rights and obligations to commercialize the invention and the financial arrangements of the agreement.