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660 S. Euclid Avenue Campus Box 8013 St. Louis, MO 63110 (314) 747-0920 (314) 362-5872 (fax) Street Address: 724 S. Euclid Avenue Suite 2259 St. Louis, MO 63110 |
Our Process
As a core part of our mission, we attempt to communicate actively with investigators in every corner of the University. Whether we meet with you at various gatherings or while walking through the University or through a formal Invention Disclosure Form, we make every effort to listen to your ideas and help you think about them in a commercial context. The essence of technology transfer is collaboration with industry as a means of fostering public access to the practical benefits of University research. Our role is to make that collaboration as productive for all parties as possible... particularly for our faculty and employees.
We make every effort to track events in the laboratories around the University, but the rapid pace of discovery makes this effort very challenging. If you think you have an invention with commercial possibility or you simply want to talk with someone about how your ideas may fit in a commercial setting, just call us at (314) 747-0920.
Beginning the disclosure process
After a preliminary conversation, we may ask you to describe your ideas in writing using the Invention Disclosure Form. This communication enables us to assign a business development manager to you and to begin the process of assessing the strength of your idea in the marketplace. It also provides a platform for reporting your invention to federal agencies (NIH, NSF, etc.) that have funded your research. From that point, you will be able to work with the business development manager through the commercialization decisions.
The Invention Disclosure Form helps with the protection and marketing of your invention. This form, together with any additional supporting information, provides us with details that describe your discovery and its benefits as compared with other developments in the field. We can best evaluate the strength of your idea if we know who participated in the invention process, who provided funding for your work, where you are in the publishing cycle, and with whom you have spoken regarding your work. It is also important for us to know whether the discovery was made using materials obtained from another source (with or without a Materials Transfer Agreement). For example, you may have worked with materials you developed previously with research support received from a commercial sponsor or, perhaps, you developed your idea in collaboration with third parties outside of Washington University. Sometimes ownership can be encumbered by these complex relationships that develop in advanced research.
Give us a call at the Office of Technology Management, and we can help you with the Invention Disclosure Form or any questions you may have. Our telephone number is (314) 747-0920.
Protecting your ideas -- safeguarding intellectual property
Your intellectual property is a precious asset for you and the University. While we work to allow you and members of your investigative team to publish and otherwise share ideas, we also make every effort to protect IP interests. This is the balancing of academic and commercial interests. We can achieve both goals, but it requires thoughtful action and planning.
Some inventions cannot be patented. The United States Patent and Trademark Office (USPTO) may determine that certain ideas lack "novelty" or "utility." The Patent Office may deem certain ideas "obvious to one skilled in the art" and, therefore, not ones that can be protected by patent. Furthermore, the Patent Office will not grant patents on ideas that have been part of the "public domain" for a year or more--if you share your idea with a group or an individual, you have one year to patent in the United States. You don't get this "grace period" for IP protection in countries outside the United States--there, you lose when you disclose. Patent rights are the foundation for licensing your ideas. Without them, the potential licensee will not have the leverage to profit from your idea. Please take great care of your lab notes and all communications.
Funding patent prosecution fees
We will work with you to determine whether your idea has a commercial application. OTM does not file patent applications for all invention disclosures it receives due to the high cost of filing ($6,000 - $10,000.) It is desirable to have an interested potential licensee before committing to patent filing. However, in rare cases, the commercial potential may justify filing when guarantees of cost reimbursement by potential licensees are not reasonably assured. Based on this information, the associate will determine whether or not the University will elect title and file for a patent on the invention.
We work with the Office of General Counsel to select an outside IP law firm to represent the University in the prosecution of the patent filing. We select attorneys based on their technical competence and experience with inventions similar to yours.
As part of the patenting process, we will ask you to assign your ownership rights to the University. In return, you will participate in the University's revenue sharing program.
The Office of Technology Management will administer the intellectual property interests from the date of patent filing until the patent expires. Patents usually take an average of three to four years to issue and expire 20 years from the date of filing. During the prosecution of the patent, we will communicate with you about progress and may require your assistance in responding to the patent examiner's questions.
The inventor's cooperation is essential in patent filing and prosecution. The chosen patent attorney will be familiar with the field of the invention, but he/she is unlikely to be an expert at the level of detail that makes the invention novel, useful and non-obvious. You, the inventor, by providing both written and verbal information, will make an important difference and are indispensable for obtaining meaningful patent protection.
If the University (or the research sponsor) decides not to file a patent or to commercialize your invention, the University may assign its rights back to you, along with responsibilities of the University 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 you.
Market analysis
We conduct preliminary market analysis at the beginning of the disclosure process to determine whether an idea has commercial applications and can be patented. This analysis continues after patent prosecution has begun in order to develop plans to find the best licensee. A business development manager will meet with you to make a preliminary evaluation of manufacturing feasibility, potential applications and possible markets. We will work with you to develop a licensing strategy.
Licensing strategy varies according to the requirements of the idea and the nature of the relevant markets. For example, an idea that might be widely used in many different economic sectors perhaps would best be licensed on a non-exclusive basis. On the other hand, if an idea will have a highly focused application, only an exclusive license will meet the needs of the company that must invest time and capital to bring the idea to market.
We will research potential target markets and communicate with potential licensees and venture capital firms in order to develop an optimal licensing strategy. When necessary, we will protect sensitive communications through use of nondisclosure agreements.
We advance the marketing and patenting processes simultaneously. As soon as we file the patent application, we seek licensees, either in the form of large, established companies or business start-ups. Each invention has its unique path to market and the inventor plays a key role in determining which path may be best. In particular, inventors often know better than anyone which companies are, or may be, interested in their ideas.
Finding a commercial partner
Based on our market knowledge, we will target companies that represent the best possible potential development partners. If interested, companies will typically want to receive additional detailed information. When this is confidential and proprietary, we execute a nondisclosure agreement with the company before sending the information.
A negotiation follows that usually results in the execution of a license agreement granting the company the right to make, use and sell products that fall under the claims of the patent. The license may be exclusive or non-exclusive and may limit the allowable field of use (e.g. therapeutic vs. diagnostic). The business development manager will work with you to help you understand the terms of the agreement and any obligations that may apply to you. In most situations, you will be required to assist in the transfer of the technology to the company. The legal and business ramifications of a commercial agreement are complex. It is in your best interest allow our staff to utilize their licensing and negotiation skills to frame and finalize these instruments. We will keep you informed of our progress and seek your support and approval where appropriate. You may be asked to disclose any other relationships you may have with external third parties at the time a license is executed in order to avoid any potential conflict of interests.
Revenue sharing
When a licensing agreement is executed, the University will ask you to complete a revenue distribution form. This document addresses the sharing of license revenue among the group of inventors, if more than one. The pool of revenue to be distributed represents 35 percent of the total proceeds received from the licensee. The revenue stream from a license is typically comprised of an up-front license fee, maintenance and milestone payments, minimum royalties, and earned (beyond minimum) royalties from the company's sales of products based on the intellectual property. In some cases involving start-ups, we will take equity in the company in lieu of cash payments. We take this course with the understanding that most start-ups need cash in order to grow. This approach preserves cash for the young entity and can potentially yield superior financial results over time.
In many cases, inventors will divert part or all of their share of the revenue to their laboratories or to support stipends for post-doctoral students. These decisions have had huge impacts on some laboratories, supporting new or continued research efforts. We can work with you to sort out these issues when they arise.
During the term of the license agreement, this office will manage the distribution of licensing income to inventors and departments. Furthermore, we will administer the paying of expenses and the recovery of expenses from third parties, where appropriate. We will keep you informed of any changes or new developments regarding our relationship with the licensee. The licensee and the University will also monitor the marketplace to enforce intellectual property rights.
Please visit the University web site concerning these issues:
University Intellectual Property Policy
The agreement with the company is only the beginning
The executed licensing agreement represents the beginning of what, in most cases, is a long relationship. Companies that want our technologies today are highly likely to want them tomorrow. We make every effort to develop and maintain these important relationships with private industry. They are the gateway to the public domain, where your research can play an active, positive role in society.
This relationship has many aspects, ranging from the basics of money exchange and the licensee's periodic reports to the discussion of tomorrow's market demands. In many cases, the need arises to modify agreements to adapt to changing economic situations. These discussions can play a central role in maintaining the dynamics of the license agreement over time.