Technology Transfer Process
There are four stages in the technology transfer process:
Inventors take part in all four activities but there is some latitude in the time investment required depending on your preference and the situation. The Technology Commercialization Office (TC Office) can tailor the level of involvement to your needs.
Disclosure in this context means to submit an invention disclosure form to WSU’s TTO. (Download the WSU Invention Dislosure Form) Three main factors in the timing of formal invention disclosure are: 1) possible loss of patent protection due to publication; 2) development stage of the invention; and 3) commercial significance of an idea. (Keep in mind that obligations to most external research sponsors, including federal funding agencies, require you to disclose inventions to the University.) Any publication, published abstract, or public presentation of a discovery prior to filing a U.S. patent application may destroy your ability to obtain patents in most foreign countries. To avoid this, let us know as early as possible so we can protect your invention and avoid publication delays. In certain cases involving biological materials or software, WSU can protect and license an invention without patenting. Please contact our office with any questions you may have regarding the timing of your disclosure.
A discovery should be sufficiently developed before patenting; however, standard academic practice does not always apply in the timing of a patent application filing. When you submit to a peer-reviewed journal, your conclusions tend to be conservative and carefully supported by data. In contrast to publishing, however, a patent application may be filed before all confirming results are in hand and the patent seeker can be more expansive in making claims. Of course, if an invention does not meet the requirements of patentability, i.e., novelty, non-obviousness and utility, reduction to practice and enabled by a complete written description, it may not be protectable under patent law. When in doubt, contact the TC Office before you submit an invention disclosure form. TC will seek, as needed, opinions from outside patent counsel on patentability.
Judging commercial significance is as much art as science. Most technology transfer offices have years of experience in evaluating which inventions are likely to be successfully transferred to industry. Often, the TC Office will ask consultants or industry representatives to evaluate an invention in confidence. Key factors influencing commercial potential include the size and growth rate of the potential market for a new product or service; investment required to develop the technology; the competitive landscape; cost reduction; regulatory or liability issues; and number of potential licensees.
In conclusion, before publishing or making any public disclosure of a discovery with commercial significance that may be protectable under U.S. intellectual property laws, contact the TC Office about submitting an invention disclosure form. It takes approximately 1-2 hours to prepare the disclosure form and gather supporting documentation. Within weeks of receipt of your completed disclosure form, a one and one-half hour meeting will be scheduled during which you can present your invention to the Administrative Patent Committee and answer questions about its benefits and uniqueness.
If the University decides to invest in patent protection for your discovery, most of the actual work of writing the patent application will be done by an outside patent attorney retained by WSU’s General Counsel. The attorney will ask you to supply certain technical details or data and may ask you to provide substantiation or arguments which will increase the likelihood of securing a patent. You will carefully review one or two patent application drafts before the final version is filed with the U.S. Patent and Trademark Office (USPTO). From the time a decision to file is made until actual filing takes from 4-12 weeks or longer; your time commitment during that period is dependent upon the complexity of your invention and the completeness of the materials provided on which the application will be based. A well presented technology will usually require about 8 hours of your time. Once filed, it can take 2-5 years for a patent application to be approved for issuance, and approval is not guaranteed. Again, the patent attorney handles the effort to obtain protection and your role is to comment, inform and advise the attorney as he/she negotiates with the USPTO. Your time commitment during this “prosecution” phase will vary from 4-10 hours per year depending on the technology and the response of the patent office.
Fortunately, the TC Office does not need to wait for a patent to issue to begin promoting a discovery to prospective licensees. It is possible and appropriate to license a patent application to a company, so marketing efforts can begin immediately after the application is filed if certain precautions (e.g., confidentiality agreements) are put in place. However, the most effective marketing activities often involve the inventor: you are most familiar with the technology and are an ideal spokesperson for it; companies see your expertise and personal involvement as a key part of the technology package; and you often have contacts in industry with which the TC Office can begin discussions. When one or more companies expresses an interest in securing license rights and supporting further development of an idea, the inventor’s participation in technical meetings is critical to the success of the licensing effort. Companies are extremely interested in the inventor’s vision of the discovery, its details and its applications. Finding the right licensee may take several months or many years depending on the circumstances. Your interactions with a company can take from 1-10 hours or more for each prospective licensee which formally evaluates your invention.
If a qualified company wishes to license WSU technology and enters into a licensing negotiation, TC will handle all aspects of the negotiation, while informing and seeking input from the inventor. If the licensee agrees to support further research at WSU, you will work with company scientists to create a research plan and budget. Completing a license negotiation may take from three weeks to one year, depending on the deal structure and complexity. Your possible time commitment for input during a license negotiation is 1-5 hours; for developing and writing a research plan and budget, 4-16 hours. After a license is signed, your assistance for a day or more each year may be needed to ensure timely and successful development of products or processes based on your discovery.
In certain situations, WSU technology is most appropriately commercialized via a new “start-up” company. The TC office is open to considering such opportunities, and we encourage faculty inventors and outside entrepreneurs to review the “Venture Development” section of our web page for more information. (Click HERE to visit our Venture Development home page.) If a faculty member becomes involved with a start-up company based on their technology, the faculty time commitment to the commercialization of the technology can vary widely depending on how hands-on they are with the firm’s operations.
The process and times described above are estimates; your actual commitment may vary. Overall, the technology transfer process is fascinating and worthwhile, even if a particular invention is not licensed. Among the benefits to you as an inventor are collaborations with industry researchers, possible research support, seeing your ideas used and made available to society, and a personal share of royalties.