Technology Transfer

a.   Reporting Inventions

The University policy pertaining to patents and inventions appears in the University Handbook, Volume 4, Part V, Chapter 7.  All potential inventions should be reported promptly by the inventor to the OIPTT. Faculty and staff should contact that office for advice on:

The OIPTT reserves the right to handle inventions directly or to use other technology administration agencies.

b.   Invention Disclosure

The evaluation of an invention for patentability is usually based on an invention disclosure. Forms and guidelines for this purpose are available in the OIPTT. The invention disclosure has several values. By writing the disclosure, the inventor clarifies the inventive conception. A disclosure is essential for technical evaluation of the invention, assessment of its commercial feasibility, and determination of its patentability. It is used for the novelty search and its clarity and completeness have a definite bearing on the quality and the conclusion of the patent search. The disclosure is used in preparing the patent application. A well-prepared disclosure allows the patent attorney to prepare an application at minimal cost. Where dated and witnessed laboratory notebooks are not available, the disclosure serves as proof of the conception and may help to determine, in any controversy, who first made the invention.

c.   Laboratory Notebooks

Laboratory notebooks in diary format are especially helpful in preparing an invention disclosure and may be crucial in cases where two or more parties claim the same invention. In legal challenges, this record may provide the evidence necessary to establish the date the invention was conceived or first reduced to practice, and document the steps taken to reduce it to practice. Further advice regarding laboratory notebooks is available in the OIPTT.

d.   Evaluation, Patenting, and Licensing Process

	1)	Invention Evaluation—During the invention evaluation process, the invention will be subjected to technical, legal, and marketing analyses. This generally involves consultation with the inventor, patent counsel, and prospective licensee(s) under appropriate confidentiality arrangements. If commercial value is present but patent protection does not appear possible, the invention may be licensed as nonpatented technology (see Section 7.a, "Transfer of Innovations Without Intellectual Property Protection").
	2)	Patent Application Process—If a patent application is filed, it is common for several months to elapse before the office in which it is filed acts on the application. The first "Office Action" often results in a detailed rejection of all or some of the proposed claims. At this point, the patent attorney normally consults with the inventor to prepare a response, giving reasons for believing that certain parts of the Office Action are incorrect. This process is time consuming but typical for most patent applications. It is common for at least two years to elapse between the filing of an application and the issuance of a patent. However, licensing activity can be initiated while the patent application is being reviewed and claims negotiated.
	3)	Other Options—Inventions in which the University has an interest but which do not meet University criteria for patenting shall be managed in accordance with policies and procedures determined by the OIPTT. Those procedures may include: A mechanism by which the inventor(s) may personally pay patenting costs; The formation of a commercial enterprise to pursue commercialization; and The transfer, for fair consideration, of the patent rights to the inventor(s), under appropriate circumstances. The choice of options in a given case will depend largely on what is permitted by state law, other University policies, and preexisting commitments to sponsoring agencies.

e.   Types of Licenses

In general, there are two principal types of licenses: exclusive and nonexclusive. Under an exclusive license, the company is the University's sole commercial licensee and no other license may be granted by the University during the term of exclusivity. In some instances, exclusivity may be limited to a product line or geographical area. Nonexclusive licenses may be issued to all companies or organizations that meet the terms of the proposed license.

f.   Assistance in Licensing and Patenting Inventions

The University retains the right to license intellectual property, but may on occasion engage other intellectual property management firms. The University has agreements with other nonprofit agencies—the Washington Research Foundation, Research Corporation Technologies in Tucson, Arizona, and the Battelle Development Corporation in Columbus, Ohio, and occasionally uses other agencies on a case-by-case basis.