For MSU Innovators
TTO leads efforts to protect the university's intellectual property and serves as a commercialization and partnership facilitator for MSU faculty, staff, and students. Please contact us if you are in the following situations or simply have a question about technology transfer, collaborations, and commercialization:
- You wonder if your idea or discovery is intellectual property that should be disclosed to the University or a project sponsor
- You have an idea for a new product or service that fills an unmet or underserved market need with potential for substantial revenue
- You have an innovation with commercial potential but need additional development resources
- You are planning to or already did disseminate your innovative research results in a grant proposal, publication, poster presentation, dissertation, or even a casual conversation
- Your research has federal funding or is sponsored by industry, and may have resulted in intellectual property
- There may be commercial interest in your discovery or a company has contacted you to find more about your research
- You want to send or receive research tools or materials to or from another institution
- You want to start a company with your idea
Looking for additional information on the topics above? Please read below for answers to frequently asked questions as well as resources, policies, and other helpful information.
Frequently Asked Questions (FAQ)
Inventions and Intellectual Property
Inventions covers a broad swath of domains. Generally speaking, an invention is a new development that may be of value to others. New materials, techniques, and devices are traditionally identified as inventions. Software, data, biological materials, and plant varieties are also amongst the many fields of inventions at MSU.
Congratulations! Please contact TTO to discuss your innovation or download, fill out, and submit the MSU invention disclosure form. Once the form is received, we will begin the formal review process to determine appropriate intellectual property protection measures as well as development and commercialization marketing activities.
Invention disclosures and subsequent intellectual property protection actions, such as patenting, should not impede your abiilty to disseminate your work; however, it is imperative that new inventions be disclosed to TTO before they are presented, published, or otherwise disseminated publicly. This helps fulfill obligations we have as MSU employees to comply with Board of Regents policies and protect the taxpayers investment in MSU research. Fortunately, the disclosure process does not require much deviation from the typical publication or presentation workflow as a draft manuscript or presentation is typically sufficient to support an invention disclosure.
The answer depends on a variety of factors; however, MSU typically owns intellectual property (IP) under the following circumstances: 1) IP created by faculty and staff when the IP arises from the individual's assigned duties as an MSU employee; 2) IP created by the use of MSU facilities beyond the normal academic environment; and/or 3) when stipulated by clauses of grant or sponsored research contracts. Please contact TTO if you have questions regarding ownership of IP at MSU. Board of Regents policies governing IP ownership are available on the TTO webiste.
Collaborations with Industry and Other Univeristies
Non-Disclosure Agreements (NDA) are used to protect proprietary MSU and partner information. Such agreements can safeguard MSU intellectual property and enable communication with partners without violating obligations as MSU employees. The MSU Office of Research Compliance manages NDAs. Visit their NDA site here to learn more.
Material Transfer Agreements (MTA) are used to protect proprietary MSU and partner property, such as material samples; cell lines, germplasm, and other biological materials; software; and a variety of other related items. The MSU Office of Research Compliance manages MTAs. Visit their MTA site here to learn more.
Absolutely. A Sponsored Research Agreement (SRA) with an industry partner can be an effective means of further developing and commercializing innovations from MSU. In exchange for providing funding to support your research, the partner typically receives an option to license innovations resulting from the collaboration. A successful project may result in a license agreement that generates income for you as an inventor. TTO can help identify potential industry sponsors for you, or work with you to explore opportunities with a prospective partners you already know.
Yes. A Testing Services Agreement (TSA) enables you to perform testing for partners and to be paid to reimburse the cost of the testing provided. Please note that a TSA is appropriate for non-collaborative activities where new intellectual property is not likely to be created. For example, if the work is intended to create a new innovation or improve an existing technology, a Sponsored Research Agreement should be considered instead of a TSA. The Office of Sponsored Programs manages TSA.
Yes. A Facilities/Equipment Use Agreement can be used to make research facilities, laboratories, and equipment available to entities outside MSU. Regular classrooms and the Library are excluded, as are activities that would distrupt regular academic, laboratory or research programs at MSU and that the facility/equipment is not needed by University affiliated faculty, students or other empoyees at the time request. Additional requirements are detailed in Board of Regents policy. Facility/Equipment Use Agreements are managed by the Office of Sponsored Research.
Licensing, Commercialization and Entrepreneurship
A license is a legal agreement typically granting rights to make, use, and sell products and services based on intellectual property. For example, MSU (the licensee) may enter into a license agreement with a person, company, non-profit, other other entity (the licensor) that enables the licensor to manufacture and sell a product based on a particular MSU invention. In exchange for those rights, the licensor typically pays MSU a royalty based on sales in addition to other financial considerations. These licensing revenues are shared between the inventor and MSU.
TTO can assist your entrepreneurial andeavors by exploring licensing and gap funding opportunities. In addition, we can connect you with various MSU and external resources who can provide additional guidance and resources.
TTO manages the “CATalyst” Gap Fund program to support the pre-commercialization activities around faculty inventions exhibiting strong market potential. Up to $80,000 is available for direct costs. Smaller proposals (e.g. <$20k in direct costs) are encouraged. CATalyst grants are made possible by an award from the US Economic Development Administration to provide market-relevant development and/or validation for MSU technologies that are beyond the point where traditional research funding is available or appropriate. Therefore, this program is not intended to support basic research or answer fundamental scientific questions.
Students who are not being paid as MSU employees typically own the intellectual property resulting from their work. However, an MSU student may be obligated to assign their intellectual property rights in an invention if the invention results from a project of a proprietary nature and/or funded by a project sponsor. The most common instances are capstone projects, senior design projects, independent study, or performing volunteer work in a research laboratory, where the effort is funded by a sponsor (e.g. federal agency, state government, foundation, industry). In such where MSU has a legal obligation to fulfill regarding intellectual property ownership, the student, faculty advisor, and project sponsor should download and review the Montana State University Memorandum of Understanding Regarding Project Intellectual Property Rights.
Forms & Policies
- Intellectual Property Agreement for MSU Personnel--this form is now signed electronically through the MSU MyInfo portal. In the Personal tab, there is a link to a page called MyApps, where you can find this form and sign it.
- Intellectual Property Disclosure Form
- Nondisclosure/Confidentiality Agreements
- Student Projects and IP Rights
- Strategies to Preserve Patent Protection when Writing Proposals and at Early Stages of Projects
- Contact Daniel Juliano for assistance with Material Transfer Agreements
Office of Sponsored Programs Resources
Office of Research Compliance Resources
- Office of Research Compliance & Committees http://www.montana.edu/orc/
- Conflict of Interest http://www.montana.edu/orc/conflict-interest/index.html
- Consulting Activities http://www.montana.edu/orc/conflict-interest/consulting_activities.html
- Export Control http://www.montana.edu/orc/exportcontrol/index.html
- University Research Misconduct Policy http://www.montana.edu/orc/reporting/policy.html
- Anonymous Reporting and the MSU Compliance Hotline http://www.montana.edu/orc/reporting/index.html
- Montana Agricultural Experiment Station Variety Release Policies
- Cultivar Development Research Program (CDRP) Guidelines
- MSU Royalty Donation Policy
- BOR 401.3 Policy: Copyright
- BOR 406 Policy: Ownership of Electronic Course Material Policy
- BOR 407 Policy: Equity Interest and/or Private Business Participation
Overview of the Technology Licensing Process:
The TTO meets with faculty to discuss the applicability of their research to industry and identify possible inventions.
- Disclosure Review
As a result of faculty meetings or in response to unsolicited disclosures, the TTO reviews Intellectual Property Disclosure Forms (IPDF's) submitted by inventors.
- Patent Assessment
TTO staff determine the possibility of securing IP protection based on such factors as novelty, uniqueness and usefulness.
- Market Assessment
TTO staff assess the market potential for disclosed inventions based generally on the value proposition of the invention, need in the marketplace, competition, potential costs and revenues to a commercializing entity and other variables.
Inventions which have progressed to this stage are assessed as to their potential to be licensed to existing Montana companies or entrepreneurs as new Montana start ups. If it is determined that the invention is not suitable for commercialization in state, TTO staff actively market nationally using new media strategies and traditional marketing tactics.
If the TTO is successful in interesting a potential licensee, staff work collaboratively with the prospect to realize benefits to inventors and MSU while providing a structure whereby the invention can be commercially successful.
Tracking performance milestones, invoicing for royalty payments, managing patent prosecution and communicating with licensees and inventors is an ongoing and time intensive function of the TTO.