We strongly advise that you submit an invention disclosure before a public disclosure (anticipated publication, presentation, poster session, etc.). A public disclosure may jeopardize the patentability of an invention. That said, even if you have already disclosed your invention, idea or technology, please reach out to us and we can provide guidance.
A provisional patent application essentially holds your place in line for one year, providing the opportunity to conduct more research before filing a non-provisional patent application. A provisional patent application is not reviewed by the USPTO and is a simple and cost-effective option to protect your invention.
A non-provisional patent application must be filed within one year of the filing of the provisional application for examination by the USPTO. A non-provisional patent application requires the expertise of a patent attorney or agent to meet the requirements of federal patent law and regulations. The prepared application is then submitted to the USPTO for review to determine whether a patent should be granted. This process takes considerably longer and is more costly than the filing of the provisional patent application. If the USPTO grants the patent, Caltech then has the exclusive right to make, use, sell and import an invention - and can license that right to other parties for commercialization - for approximately 20 years.
An NDA, also known as a CDA, is a legal contract between Caltech and an outside party that protects the confidential information generated by either party that they wish to share with one another. Both parties agree to keep the other party's information confidential and only use the information for the intended purpose stated in the CDA.
A NDA allows two parties to freely share their research ideas or potential intellectual property in a non-public way to protect the patentability of an invention. A NDA is typically used for the purpose of evaluating the potential for a research or business relationship.
In certain instances, it may be allowed, but in general please contact OTTCP for review and signature.
The Bayh-Dole Act is federal law that was enacted in 1980 to create a uniform policy regarding the ownership of patents arising from federally funded research. The Act facilitates commercialization of federally supported research by promoting cooperation between government, industry, and academia. Key takeaways:
- Universities are allowed the option of retaining ownership of inventions developed under federal funding.
- Universities must attempt to develop and commercialize inventions. This may be done through license agreements with industry.
- Universities are expected to file patents on inventions they elect to own.
- The U.S. government retains a non-exclusive license to use the invention.
- Failure to comply may result in loss of rights.
Under the Bayh-Dole Act, Caltech has two months from the date of the invention disclosure to report a federally funded invention to the appropriate funding agency. Failure to comply could result in Caltech losing rights in the invention.
Once we understand your goals for corporate engagement, we can help you identify sponsored research or gift opportunities with industry. Please contact the Corporate Partnerships team so that we can assist you.
Caltech has many mutually beneficial and productive research relationships with outside companies. Industry engagements range from one-time individual projects to larger, multi-PI projects. We are focused on transferring technology from campus to industry and working with industry to solve pressing problems that will benefit society. The Corporate Partnerships team can guide you through the various options for engagement.
Caltech's Entrepreneurs in Residence can help you identify the best way to commercialize Caltech technology. OTTCP also has a list of resources readily available to founders interested in startup creation.
If you are looking to license Caltech or JPL technology, please send your inquiry to email@example.com.