1. Research & Development

Cal Poly Researchers work together on innovative projects, some of which are supported by governmental grants or through industry/business support. The Grants Development Office and the Sponsored Programs Office facilitates obtaining and administrating grant applications and other contracts. The Principal Investigator, usually a faculty member, manages contractual obligations on behalf of the team. Sometimes, the project is not done under a contract. In all cases, confidentiality should be maintained and documented using non-disclosure agreements if patenting is a project goal. Any public disclosures (including abstracts, posters, presentations, journal articles) or public uses (including sales, demonstrations, online fundraising, donations) may harm patent rights. Liberal use of non-disclosure agreements is the norm. Contact Technology Transfer if you have questions.

2. Innovation Disclosure

After Cal Poly Researchers & Engineers design the first prototypes or obtain preliminary data, that is the time to consider whether the innovation might be patentable. Online patentability searching is helpful to refine understanding of the improvement over similar technologies. Cal Poly Technology Transfer is also available to conduct a patentability and commercial applicability review. The most efficient way to communicate the information needed for a patentability and commercial applicability review is to use the Online Innovation Disclosure Portal. However, Research teams should feel free to call or email Technology Transfer for an informal meeting.

3. Innovation Assessment

Cal Poly Technology Transfer will review the rough prototype and/or preliminary data and provide an initial patentability and commercial applicability report. To be patentable, patent laws require that the innovation be novel (new - not otherwise publicly-available), unobvious (different "enough" in structure or function than previously-available technology), and described with sufficient detail to allow others to recreate the innovation once the patent expires. For Commercial applicability, Cal Poly Technology Transfer will consider whether a profitable business model is available that leverages the technology for the benefit of the public. Often, the Principal Investigator is critical to identifying relevant technology and markets.

4. Patent Protection

If Cal Poly decides that the innovation is highly patentable and highly commercially-feasible, Cal Poly may decide to move forward with patenting. Ownership of the patent rights is determined by the Cal Poly IP Policy and agreements between the inventors and Cal Poly. After the ownership issues are determined, Cal Poly will hire a patent attorney who has scientific training that aligns with the invention. The team - inventors, technology transfer, and the attorney - will work together to draft a patent application. The patent application process is lengthy, complicated, and expensive. Cal Poly is careful and thrifty at all stages of the process and expects significant input from the inventors. Even when the team proceeds with measured caution, some patent applications fail to result in issued patents or commercialization. 

5. Marketing & Commercialization

Even before a patent application is filed, inventors, the tech transfer office, and other mentors will work together to find potential licensing or start-up partners for the innovation. Sometimes, further research or validation is needed, and the team works together toward partnering with organizations who can help. The inventors' network of colleagues and industry partners is often the best source for commercialization leads. However, Cal Poly can also leverage the Kennedy Library resources as well as networks within the CSU and the Association of University Technology Managers to locate potential commercial partners. Once a lead is identified, most conversations proceed with a mutual understanding of confidentiality so as to preserve future patent rights. Non-disclosure agreements are the norm.

5. Licensing & Revenue

In the event that a company is interested in licensing a Cal Poly innovation, Cal Poly Technology Transfer will draft a term sheet that includes milestones for commercialization as well as a compensation. The company and Cal Poly will use the term sheet to negotiate either an option agreement (a first right to license an innovation) or a licensing agreement. Each licensing agreement is different. Most include a requirement that the company reimburse Cal Poly for all patent-related costs (attorney and government fees). In addition, an up-front payment is common, along with royalty fees based on the particular business model and expectations of how the innovation will be used. Revenue received after the patent fees are reimbursed are shared between the inventors and Cal Poly, according to the Cal Poly IP Policy and a written agreement.