Under Washington University in St. Louis’s Intellectual Property (IP) policy, creators are required to disclose to 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 OTM as soon as possible and submit an invention online well in advance of making the invention public.
Technology Transfer Process
Step 1: Invention Disclosure Submission
Inventor submits an invention disclosure to OTM with:
- description of the invention;
- names of all creators;
- funding information;
- discloses other information (e.g. potential publications)
Step 2: Invention Assessment
- OTM evaluates the invention to determine:
- the appropriate intellectual property protection mechanism (e.g. patent).
- the potential commercial applications/products and the market(s).
- Generally the OTM evaluation process takes 60 days from the date of submission.
- The outcome of the analysis is communicated to the creators through an in person meeting, by phone or email.
- There are multiple outcomes of the analysis:
- Protect the invention (see step 3);
- More research being required for the invention to be protected or commercialized;
- Commercialize the technology without protection (see step 4);
- In some circumstances, OTM will not retain ownership (in which case a discussion around return of IP will occur).
Step 3: Intellectual Property Protection
- OTM protects the intellectual property using the appropriate mechanism (e.g. filing a patent, registering a copyright, etc.).
- OTM informs inventors of the protection chosen and corresponding rights and restrictions.
- If patent protection is opted, then OTM works with the creators and selected external patent counsel to draft a patent application.
Step 4: Marketing & Outreach
- OTM identifies potential industry partners and delivers to them a non-confidential marketing package promoting the technology.
- OTM solicits feedback from industry contacts and facilitates technical discussions between interested parties and the creators.
- OTM sets up a confidentiality/non-disclosure agreement (CDA/NDA) to protect information exchange between the interested parties and the creators.
Step 5: Licensing of Intellectual Property
- Once an industry partner expresses interest in commercializing WashU IP, OTM drafts and negotiates a licensing agreement.
- The licensing agreement includes both financial terms (e.g. milestone payments, royalty payments, etc.) and diligence milestones that define timelines and goals for the development and commercialization of the technology.
Step 6: Product Development & Commercialization
- The industry partner develops and commercializes the Washington University technology in accordance with the diligence milestones set forth in the licensing agreement.
- According to the financial terms of the agreement, the industry partner will make payments to Washington University, and OTM will distribute a percentage of this income to the technology’s creators per the University’s IP policy.
- OTM will solicit progress reports annually from the company to assess progress against development milestones.
Income Distribution Process
Creator Share Forms
Starting in November of FY18, the Income Distribution Form (IDF) which was provided at the time of licensing will no longer be used. Instead, the Creator Share Form will dictate how the OTM distributes any funds among Creators. This Creator Share Form will be considered perpetual and irrevocable except in those cases where the Lead Creator elects at the time of signing to amend the Creator Share Form at the lime of licensing. This situation occurs when the invention is not in a final state when disclosed. If this indication is made, OTM will seek an amended Creator Share Form upon the execution of a license agreement. At that point, the Creator Share Form will be considered perpetual and irrevocable.
In some cases, a license agreement may bundle several distinct technologies under a single agreement. In these instances, the Lead Creator will need to determine the weighting of each technology relative to the overall license agreement. For example, if two patent families were licensed under the same agreement, the Lead Creator may determine that one patent family contributed to 90% of the value of the license agreement while the other patent family only contributed 10%. In this scenario, the Creators identified on the Creator Share Form of the first patent family would be entitled to 90% of the Creators’ Share of the license income, while Creators on the 2nd would get 10%.
In the situation where multiple technologies are bundled under a single license agreement, the income that is received may be specific to just one of the technologies or span multiple technologies. The Lead Creator will make the determination as to whether technology-specific income will be shared only with the Creators of the contributing technology or technologies or whether the income will be shared with the Creators of all of the technologies included in that license agreement. This determination will be made at the time the license is executed.
All Creators will have an opportunity to review income distributions in more detail upon request to OTM. Creators should consult the IP policy for raising issues/disputes under any allocation.
Identification of Creators
If an invention disclosure is submitted by a non-faculty Creator, OTM will request that the Creator Share Form be approved by the lab’s primary faculty member or other such appropriate lead (e.g. department chair).
Distribution of Income
One month prior to the distribution of income, a report will be sent to any Creator receiving income that summarizes the amount that he or she is to receive. If the individual has any question about how this income was calculated, he or she can contact the OTM for more detailed information.
Finally, income will be distributed on a quarterly basis going-forward with distributions occurring in September, December, March, and June.
|Funds Recieved||Distributed By:|
|June — August||9/30|
|September — November||12/31|
|December — February||3/31|
|March — May||6/30|
Release, Return, Re-Assignment of Intellectual Property
In the event that OTM assesses a technology disclosure and decides not to pursue IP protection, or has protected or commercialized the IP, but will no longer do so, the IP may be released, returned, or re-assigned to the Inventors. Please answer the question(s) below to guide you to the correct process.