Technology Transfer FAQ’s

The Bayh-Dole Act gave universities the right to own patent rights to inventions developed with U.S. government funds. Under this act:

• Universities must report inventions arising from federally funded projects
• Universities must share revenues with inventors
• Universities have constraints on how technology is commercialized
• The intellectual property must be licensed to a company that will exploit it to the advantage of the public
• Preference for licensing to U.S. companies
• Preference for licensing to small companies

No. It is possible to both publish and patent an idea. While TTO would like ample time to assess an invention before applying for a patent, in some cases, this is not an option. The TTO will work with the inventor to make sure that commercialization of the invention does not in any way impede academic progress.

• To move inventions into the commercial realm, IP protection must be in place to enable companies to retain exclusivity in the marketplace.
• To provide companies sponsoring research – they must be able to recoup their investments in the technologies.
• To ensure inventions have practical applications and improve quality of life for citizens.
• Because Federal law (Bayh-Dole Act) requires that results from federally funded research be developed to benefit taxpayers.
• To attract and retain top faculty.
• To increase institutional revenues (shared with inventors).
• To promote economic development for the state.
• To generate income to promote and support teaching and research.
• To provide opportunities for more sponsored research

Fill out and sign the invention disclosure form (direct download). The more complete the disclosure, the faster and more efficiently we can assess your invention. Please make sure all inventors are listed.

An inventor is one who was the first to form, in his or her mind, a definite perception of the claimed invention or design.

NOT AN INVENTOR – A person who:

• contributes to an obvious element of the invention
• merely suggests an idea
• simply follows instruction
• explains how or why an invention works
• adopts information derived from another

JOINT INVENTOR

• need not have physically worked together or at the same time
• need not make an equal contribution
• need not contribute to the subject matter of every claim

It is important that a US patent application name the correct inventors. Failure to name the proper inventors or including people who are not inventors could invalidate your patent. You can recognize contributors who are not inventors by sharing licensing revenues with them. Inventorship is a legal determination that we ask our patent attorneys to make.

The TTO will research the technology, explore the uses/markets for the technology, identify the inventive elements and assess the patentability and commercial viability of the invention.

A patent enables the owner of the patent to exclude others from making, using, or selling the invention for twenty years from the date of filing the application. Patentable material includes new processes, devices, instruments, formulations, machines, manufactures, composition of matter, and any new or useful improvements of the former.

If after assessing your invention disclosure report and talking to the inventor(s), the TTO feels the invention has commercial potential, we assign your invention to outside patent council to prepare a patent application. The inventor(s) should be available to the patent attorneys to answer any technical questions. Once filed, it can take some time before the patent is issued.

While there is some time and effort needed to discuss the invention at the initial stages with the TTO and the patent attorney, the time demands on inventor(s) is minimal after that. The TTO may ask you to discuss the invention with potential licensees, but the TTO will market and negotiate the inventions for you and Mines.

Because of the nature of business arrangements, there are several issues that both the inventors and industry need to be aware of:

• Ownership – As a state institution, CSM owns all intellectual property developed by its employees. However, the sponsor may have an exclusive option to any intellectual property developed. The sponsor may exercise that option for an exclusive or non-exclusive license, depending on their preference.
• Pre-valuing intellectual property – Because the intellectual property has not been developed at the time of the signing of a research agreement, assigning a value to that intellectual property is difficult. Mines agrees to negotiate in good faith the value of the intellectual property, once its created and the sponsor has determined they wish to pursue a license agreement.
• Maintaining publication and research rights – Mines must always retain the ability to use the results of sponsored research in publications (subject to a short review by the sponsor) and for further research and educational purposes.

A confidentiality or non-disclosure agreement allows researchers to talk to people outside of Mines while maintaining the patentability of the invention. If you need a CDA please contact the TTO or the Office of Research Administration. Under no circumstances should a researcher sign a CDA.

A material transfer agreement allows researchers to: Send materials to colleagues outside of Mines

• Receive materials from colleagues outside of Mines
• When you want to bring materials from another institution to Mines
• When you want to take materials to another institution from Mines

MTAs protect researchers at Mines by:

• Defining the material
• Setting the rules about how the materials will be used and distributed
• Defining any intellectual property and publication rights

If you need an MTA please contact the TTO. Under no circumstances should a researcher sign an MTA.

This is a joint decision made by Mines TTO/E & I partners and the inventors. The startup is formed outside of Mines, but Mines has resources and networks that will help in process of planning and executing a business plan. These individuals act as business formation consultants, providing assistance and access to University and outside resources.

The company must either license or option the invention to have the rights need to procure investments and offer products or services for sale.  An option is an agreement that the company has the right exclusive rights to the invention for a limited amount of time (usually 6 – 12 months).  At any time during the option period, the company can convert the option to a license.  A license agreement is an agreement that grants the rights to commercially use the invention.  The TTO has outlined express licensing terms for Mines personnel which includes both equity and non-equity terms.

For a comprehensive list, please visit the Mines Venture Center website.  Resources available to Mines personnel include:

• Mines Accelerator Fund to de-risk the technology at the early stage
• Access to the State of Colorado’s Advanced Industry Proof of Concept and Early-Stage Company funds
• SBIR/STTR fund assistance
• Entrepreneurial mentors
• Access to the Front Range entrepreneurial network
• Startup forums

Faculty can serve as technology consultants, advisers or in some other technical developmental capacity. Faculty are generally, but not always, not suited to run an investible startup business, given the time needed for such endeavors.  Faculty may work at the startup during a sabbatical or choose to take a reduced appointment with their department head’s approval.  As additional investment is required, the inventor’s role may change. Faculty involvement of any kind in a startup is also reviewed by the Mines Conflict of Interest Committee. Student inventors and post-docs may choose to join the startup upon graduation.

Founding a startup requires considerable amount of time and effort. Until the startup team is identified and engaged, the faculty member will need to be involved the formation effort.  After the team is in place the inventors may have formal responsibilities in or with the company.

In addition to corporate counsel, the startup may have its own intellectual property counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area.  Inventors should have agreements regarding their roles with the startup reviewed by their own counsel to ensure that all personal ramifications—including taxation and liabilities—are clearly understood.

Mines can accept equity as part of the financial terms of a license through its 501c3 MATTI (Mines Advanced Technology Transfer Institute). Equity may be substituted for other cash considerations that are often difficult for startups. It is also a way for Mines to share some of the risk associated with startups and must make sense for both Mines and the company.  The TTO has outlined express licensing terms for Mines personnel which includes both equity and non-equity terms.

Yes.  Mines’ education mission and status as a state institution allow us to do sponsored research agreements with outside entities.  If you need help in finding researchers that fit your needs, please contact the TTO.  If you’d like to see the template for sponsored research agreements, you can find those on the Office of Research Administration’s page here.  Other agreements such as NDAs and guidelines can be found here.  

For companies interested in licensing Mines technology, the next step is a discussion and/or meeting with the Mines TTO to determine the objectives and needs of each party. The TTO will work with the company to determine the type of agreement that fits the company’s needs.  The most common agreements are (links to templates for the blue text):

Research License – this allows the company to do research on the invention but does not allow for commercial activities.

Option Agreement – Used when a company desires a period time to assess the technology and its potential commercial value.  During this period, Mines will not market the technology to any other third party.  The company can convert the option to a license at any time during the option period.

Non-exclusive license – If a company wants commercial access a technology, but does not need exclusive rights, they can sign a non-exclusive license.  Mines will continue to market the technology to other companies and the right to sublicense is not generally available.

Exclusive license – Used when a company desires exclusive access to the technology.  The exclusive license will define the terms under which the company can commercially exploit the technology.

No.  As a state institution, Mines can give up control of state-owned technologies through agreements, but ownership will remain with Mines.  Even with sponsored research agreements, Mines will own any technology developed by Mines researchers.  If the company has an inventive contribution, the technology will be jointly owned.

This is determined on a case by case basis.  As a state-institution we are legally obligated to obtain fair market value for the state assets used by a private entity.  For research licenses and options, this is usually just opportunity costs.  For the licenses, companies should expect to pay a combination of license fees, royalties, sublicense fees, maintenance fees and patent costs.  All put the patent costs can be negotiated as different companies have different needs.  Mines uses a termsheet to finalize all business terms before negotiating other terms in the licenses.  If forming a startup company with Mines technologies, Mines can accept equity instead of cash for some fees.  

Can my company use Mines facilities?

Companies can use various Mines facilities for commercial use through either a facility use agreement or by contacting the Shared Instrument Facility (SIF).  The TTO is happy to help facilitate either of these pathways and help a company choose which is right for them.  

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