WSU Research Foundation

OIPA is the university unit that receives the invention disclosures, evaluates them, and determines if IP protection is appropriate for the disclosed technologies. WSURF is a 501c3 corporation that acts as the agent of WSU and is in-charge of licensing and managing the technologies. Once a technology is close to be licensed, OIPA assigns the technologies to WSURF for licensing and management. OIPA and WSURF are both physically located in the same building and OIPA personnel also serve as WSURF staff.

OIPA is the university unit that receives the invention disclosures, evaluates them, and determines if IP protection is appropriate for the disclosed technologies. WSURF is a 501c3 corporation that acts as the agent of WSU and is in-charge of licensing and managing the technologies. Once a technology is close to be licensed, OIPA assigns the technologies to WSURF for licensing and management. OIPA and WSURF are both physically located in the same building and OIPA personnel also serve as WSURF staff.

Most have technical backgrounds and understand the process of bringing new technologies to market. Some also have Ph.D.'s, some M.B.A.'s, and some legal backgrounds. All are problem-solvers with excellent communication and negotiation skills.

Each officer manages individual "cases" from beginning to end, including: evaluation of invention disclosures, management of literature searches, market assessment, decisions on patent filing, managing of outside attorneys on patent prosecution, marketing of the technology to potential licensees, negotiation of license agreements, and monitoring of licensee performance.

A Confidential Disclosure Agreement, sometimes called a Non-Disclosure Agreement, is a legal document for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (such as a university researcher) to another (such as a corporate representative). Otherwise, the transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure. In the worst case, such a disclosure could allow the individual or company to whom this information was disclosed to use or transmit to others your confidential information, thus placing the invention in the public domain. This would preclude the possibility of obtaining intellectual property protection and might even violate federal regulations. It is important to contact OIPA before disclosing any confidential proprietary information to another party.

We receive 60-80 disclosures each year. Of these, very few become patents. While the specific number will vary from year to year, roughly 10-20 disclosures become non-provisional patent applications.

Inventors receive royalties according to the set of guidelines in the WSU faculty manual. WSU returns 100% of all profit directly to the inventors up to $10,000. Profit ranging from $10,001 to $200,000 is split 50/50 between WSU and the inventors. Any profit over $200,000 is split 75/25 between WSU and the inventors.

Please contact the appropriate technology licensing manager for that technology for more information. Please call our office at (509) 335-5526 and you will be directed to the appropriate technology licensing manager.

We have a standard license agreement which can be tailored for each licensee.

An Invention Disclosure is a form we use to create a record of the invention, the inventor(s) involved, related sponsorship of the work, and any public disclosures and publications.

There are no hard and fast rules for when an invention disclosure should be submitted. However, following these two guidelines will avoid the submission of a late invention disclosure in most situations and will aid in the protection of the intellectual property in a timely manner:

1. Submit your invention disclosure well in advance of any publications; and
2. Submit your invention disclosure when you have conceived the idea of the invention and have either proven the concept, or determined how it can be accomplished (preliminary data indicating utility and/or an actual reduction to practice is most helpful, but the disclosure need not wait for the data in some situations).

The faculty manual requires that all potentially patentable inventions conceived or reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources be disclosed on a timely basis to the University. Title to such inventions is assigned to the University, regardless of the source of funding, if any. If you have any questions please contact us.

WSU copyright policy states that if significant University resources are used or if a work is created within the scope of your employment, then the University has ownership rights to the created work. More information on the WSU copyright policies can be found in subsection H of section IV of the WSU faculty manual.

Disclosing your invention to OIPA is an important part of protecting the rights to your discovery. One of the most important benefits may be the commercialization of your technology through WSURF's efforts in patent and licensing of the discovery. Other benefits through OIPA's marketing efforts include new contacts with industry or industry-sponsored research in your laboratory.

Usually, if you are a university employee and the invention is in your area of expertise, WSU does have ownership. For example, if you are a WSU professor and you invent something clearly in your field of teaching and research, then WSU owns your invention.

In most cases, it is obvious that WSU owns the invention. However, there are exceptions to this. WSU's ownership of your invention may be contingent upon the specifics of your employment status and what University resources you used in its invention and development. For example, what if you are not a WSU employee but a student or a volunteer? What if you are a WSU faculty member but your invention is not in your field? What if you used your computer and your office but not much else? To determine ownership in these situations, OIPA will need to do some fact gathering and analysis. It is important that you discuss the situation with OIPA as soon as you think you may have an invention. Not only will the office help to clarify the situation, its involvement may lead to the process of protecting and commercializing your invention and starting you, your department, and WSU on the road to personal and institutional financial rewards.

The University does not claim ownership of such inventions. However, any developments or improvements of these inventions that your make while at WSU may be owned by the University and should be disclosed to OIPA.

We will review your invention with you and then coordinate a preliminary evaluation of the invention's potential for protection as intellectual property and for possible commercialization. A confidential expert review of the idea or discovery will be conducted, and we will then decide whether to file a patent application to protect the invention. An Overview of our technology assesment process can be found here.

A Transfer Agreement (MTA) is a legal document for the protection of tangible research materials created by researchers that may be useful to others for research or for commercial development. It is important to contact OIPA prior to receiving or sending out any research materials so that appropriate MTAs can be developed to protect you and the institution.

A typical template Material Transfer Agreement form can be downloaded here, please contact OIPA for assistance in tailoring an agreement to your specific needs. Outgoing MTAs are handled by OIPA. For more information, contact our office at (509) 335-5526. If you are transferring materials into your program from somewhere else, please contact WSU's Office of Grant and Research Development at (509) 335-9661 for arranging an incoming MTA.

All the materials that go out of the University need to have an out-going materials transfer agreement attached to them. These MTAs specify the rights and limitations for using these materials and are meant to protect the rights of WSU researchers. In addition, these also serve the purpose of complying with export regulations between the United States and a foreign country. Outgoing MTAs are handled by the WSU Research Foundation. For more information, contact our office at (509) 335-5526.

Corporate entities can have access to materials developed by WSU researchers. This type of transfer is facilitated via a research use license/MTA with that entity. The research use licenses are handled by the WSU Research Foundation. For more information, contact our office at (509) 335-5526.

WSU's Office of Grant and Research Development enters into a non-disclosure agreement (NDA) to facilitate exchange of confidential information with an industry sponsor to protect the rights of its researchers. NDAs allow the disclosure of confidential information prior to, for example, a research proposal submission. For more information, contact OGRD at (509) 335-9661.

All the materials that come into the University need to have an in-coming materials transfer agreement attached to them. These MTAs specify the rights and limitations for using these materials and are meant to protect the rights of WSU researchers. The incoming MTAs are handled by WSU's Office of Grant and Research Development. For more information, contact OGRD at (509) 335-9661.

Know-how and information that is not patented or patentable can be made available to an industry partner under a Know-how license. Know-how licenses are negotiated by the WSU Research Foundation. For more information, contact our office at (509) 335-5526.

Inventors are those who conceived the invention. In some very rare circumstances those who intellectually contributed to the process of reduction to practice can be considered inventors.

Inventorship resides with the person(s) who have created the work--designed or written software, produced a video piece, crafted a tutorial tool, or discovered an improved manufacturing process, for example.

Ownership refers to the legal possession of a patent granted by the U.S. Patent and Trademark Office or of a copyright registered with the U.S. Copyright Office.

The determination of copyright or patent ownership is based on the extent to which University resources, facilities, or other support or contracts were involved in the development of the work or whether the material was created within the scope of employment duties. If the work's creation is dependent upon University involvement, most likely the ownership will go to the University.

University ownership, however, does not diminish the primary role of the author or inventor of a work. Inventors maintain creative control of the development, enhancement, or presentation of the work; they are entitled to receive a share of royalties which may accrue; they are free to use the work for their own personal or professional purposes; and their wishes are considered in any decisions for public distribution or use.

There are many factors that dictate how, when, and if to file a patent. A general guide can be found within our technology assessment methods, however a brief narrative is provided below.

While most anything useful is patentable, the more important questions are: What will the patent ultimately cover? And will the resultant patent be of significant financial value?

Some general considerations that address these questions include:
Scope of potential patent protection and blocking patents;
New platform technology vs. incremental improvement on existing technology;
Are there patents on similar topics that would need to be licensed to use the technology?
What has been published relating to/describing this and related technologies?

Commercial interests:
Is it useful in many areas or tied to a particular technology?
What are competing technologies and will the cost of implementation be returned to the investors?
Does a market exist or is one emerging? If the latter, how much time-lag to develop and market a product?
What is the size of the potential market?

Stage of technology:
Concept or near market prototype?
Timeframe and costs of development?
Inventors' interest and availability to participate in the process:

Usually the inventor needs to be supportive of the tech transfer process in order for it to succeed. We greatly respect the time demands on the University faculty and do our best to minimize our requests of their time. However, in many cases, information critical to the technology transfer process is lost in translation. As a result, access to the original information is required and technology transfer cannot be successful without it.

Ultimately, all of these factors are considered in the decision to move forward with a patent application. Patents can be quite costly to pursue and maintain, and as a result, difficult decisions regarding filings are a fiscally responsible necessity.

Most foreign patent rights are lost immediately upon public disclosure. In the U.S., you have one year from the date of the public disclosure to file a patent application.

To protect the patentability rights to your invention, it is important that you contact OIPA as early as possible prior to public disclosure. Public disclosure includes but is not limited to journal articles, publication on the web, conference abstracts, oral presentation or poster presentations and published grant proposals or abstracts of awarded grants and progress reports.

The University is supportive of faculty interested in forming companies, while aware of potential conflicts which may arise. A good starting point would be to look through WSU's Executive Policy 27, which outlines many of the relevant topics, including Conflict of Interest issues. In addition, please contact us; we have access to many resources that may assist you in your efforts.

The research and technology park has incubator space available; moreover WSURF can provide funding for further development of "near market" University technologies.

No. But we can provide some resources towards this end.

No. But we can assist in connecting entrepreneurial inventors with potential funding sources.

We do take equity "in partial lieu of royalties." Typically our licenses also require some licensing fees, running royalties, and diligence milestones.