WSU Patent, Copyright and Computer Software Policy
More than 550 intellectual properties have been disclosed to the University by faculty and staff since the issuance of the University's current patent policy in 1984. A number of these technologies have been patented and licensed to new or existing companies and the University has received sponsored research support, licensing fees and royalties as a result. Such technology transfer activity benefits all parties - faculty, the department and the University - because it brings financial support and licensing revenue which is shared by all three stakeholders. In addition, alliances with industry strengthen the University’s technology base and may result in future collaboration opportunities. Finally, successful commercialization of University innovation brings needed products to society and enhances the reputation of the University and its scientists.
Cooperation and coordination are required to expedite the transfer of innovations to industry and society. During the invention review process several key issues arise which affect the University's ability to protect and market faculty inventions. These problems can be avoided by remembering that:
Publications and other forms of public disclosure relating to patentable inventions should be avoided until the University has actually filed a patent application or otherwise protected the invention. Inventions must be disclosed to the University for evaluation on a timely basis. Premature disclosure to persons outside of the University before a patent is sought can result in the loss of some or all patent rights. Public disclosure includes publications in academic journals, theses, grant and contract applications (when awarded), publication of abstracts, materials distributed on the web, and tapes and projected materials which are distributed or discussed at non-confidential meetings or conferences as well as informally among individuals.
Unique biological or other materials which have commercial value should not be transferred outside of the University (e.g., to industrial or academic scientists) without a Material Transfer Agreement (MTA) signed by the recipient scientist and an authorized representative of his or her organization. Such material can be protected by carefully controlling its distribution by means of a signed MTA and then licensed as a proprietary property.
Use of third party material in making a WSU invention. If you utilized proprietary material owned by outside organizations or individuals to make an invention at WSU, please note this on your invention disclosure form. Examples of such material are chemical compounds, cell lines, cDNA’s, antibodies, transgenic animals, or computer source code.
All computer software must be reported to the University for an evaluation of patentability and commercial potential of the subject matter. The University's policy regarding computer software represents an agreement between the University and AAUP on procedures for faculty to submit their computer software inventions to the University for review. Originators of software products are entitled to the same rights and benefits enjoyed by creators of other intellectual properties (e.g., they are entitled to a share of royalties).
A copy of the Invention Disclosure Form is available from the Technology Transfer Office. Please use this form when reporting inventions and return it to the Technology Commercialization Office, 5057 Woodward Ave, Suite 6400, Detroit, MI 48202 (fax: 313-577-5650). Where applicable, the form must be accompanied by information about the funded project/proposal which led to the development of the invention. A review process will begin once the disclosure is received. This process includes a determination of ownership of the intellectual property; an evaluation of its scientific merit, patentability, and commercial potential; and establishment of a course of action to protect and license the property, if warranted. Software, once it is disclosed, will be subject to a similar evaluation.
Feel free to call the Technology Transfer Office at 313-577-5655 for assistance or additional information about this document or the invention review process.