Washington University in St. Louis | OVCR

 
Inventions/Licensing Under Washington University’s Intellectual Property (IP) policy, creators are required to disclose to the Office of Technology Management (OTM) inventions made using significant University resources and/or pursuant to a research project funded through corporate, federal or other external sponsors.

 

What is an Invention?The discovery or creation of a new material (either a new manufactured product or a new composition or matter), a new process, a new use for an existing material, or any improvements of any of these.

If you think you have discovered an invention with commercial possibility we encourage you to contact our office as soon as possible and submit an Invention Disclosure Form well in advance of making the invention public.


Technology Transfer Process

Step 1: Invention Disclosure and Assignment
The researcher(s) submits an Invention Disclosure Form describing the invention, the funding used, the creators, and any public disclosures or publications. An Invention Disclosure Form may also be obtained via Emailing OTM  or 314.747.2873. Once a disclosure is received by our office, the invention is assigned to a business development manager who will review the disclosure and meet with the researcher to discuss the invention in more detail. 

Upon receiving a new Invention Disclosure Form, OTM will ask all contributors to the invention to sign an Assignment form which is an agreement that perfects the University’s ownership rights in the invention, pursuant to the University’s IP Policy.

Step 2: Evaluation
The business development manager evaluates each new disclosure for its potential commercial value and for the best modes of intellectual property protection and commercialization. For some disclosures copyright protection is most appropriate, such as computer software or questionnaires, for others patent protection is sought and still others may be commercialized without filing for a patent.

Step 3: Patent Application
In order to be patentable, an invention must be useful, novel, and non-obvious to those skilled in the field. Patentability is also affected by whether an invention has been disclosed to the public. In order to receive patent protection in foreign countries, an invention must not have been publicly disclosed prior to a patent application being filed. In the United States, there is a grace period of one year in which to file a patent application after public disclosure. 

OTM does not file patent applications for all invention disclosures it receives due to the high cost of filing ($6,000 to $10,000). The decision to file a patent application is based on careful consideration of the commercial potential for the invention. 

OTM will select an outside patent attorney to represent the University in the filing and prosecution of patent applications. We select attorneys based on their technical competence and experience with inventions similar to yours. Patents usually take an average of four to six years to issue and expire 20 years from the date of filing. During the prosecution of the patent, the invention creators will be called upon to provide valuable assistance in responding to Patent Office questions and correspondence.

If the University decides not to file a patent or to commercialize an invention, the University may assign its rights back to the creators, along with the responsibility to manage the intellectual property. Please note, however, that if the invention was developed using federal support, we must first seek approval from the government before assigning interests back to the creators.

Step 4: Licensing of Patents
OTM seeks to put the University’s inventions and discoveries into the hands of the public. Sometimes this means sharing our inventions with other non-profit organizations for free and other times this means licensing them out to corporate entities in exchange for fees and/or royalties.  Patented and unpatented inventions are transferred to industry through a variety of licensing arrangements. Some of the licensing or license-related arrangements OTM enters into are as follows:

Evaluation & Option Agreement:

  • Gives a company a time-limited (generally six months to a year) to “preview”  the invention for the purpose of deciding whether to take a license

Non-Exclusive License Agreement: A Non-Exclusive License Agreement

  • Fee- and royalty-bearing license: rights are granted to commercialize the technology, may be granted to multiple licensees
  • Paid-up license: a non-exclusive license granted for a one-time, up-front license fee without subsequent fees or royalties
  • No-fee license: rights are granted to a third party (usually another non-profit educational institution) to use a technology that is generally licensed to commercial entities for a fee

Exclusive License Agreement:

  • A fee- and royalty-bearing exclusive license; grants a licensee the sole right to commercialize a technology (may include sublicensing rights)

License agreements may be limited to a particular field of use or geographic area. They also often vary in terms of amount of fees and royalties due, milestones to be achieved by the company, and length of the agreement. While the majority of licenses granted by the University are to existing commercial companies, the University is also actively supporting and encouraging the creation of new business ventures in St. Louis by licensing technology to Start-up companies.

Step 5: Development and Commercialization of Product - License Maintenance and Revenue Sharing
The executed licensing agreement represents the beginning of what, in most cases, is a long term relationship. During the course of this relationship OTM is monitoring the licensee’s business development and compliance of performance milestones, coordinating patent prosecution, processing license income and distributing revenue according to the University’s IP policy.  Under most revenue-generating licenses, OTM receives gross licensing income in the form of license fees, maintenance fees, milestone payments, and earned royalties on sales of products or services.  In addition, the University collects patent expense reimbursement from some licensees, particularly when the license is exclusive.

According to the University IP Policy, licensing income received is distributed as follows:

  • 25% OTM
  • 35% Creator(s) *
  • 40% Creators' School

* Creators may divert part or all of their share of the revenue to their laboratories or designate that a portion of their share be given to another individual(s) at the time of license execution.