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 our office as soon as possible and submit an Invention Disclosure Form well in advance of making the invention public.
Technology Transfer Process
We have broken out the process into six distinctive steps. OTM is here to help you every step of the way, from submission of your Invention Disclosure to Development and Commercialization of the product.
Step 1: Invention Disclosure Submission
- Inventor submits an invention disclosure form to OTM that:
- describes the invention;
- lists the names of all creators;
- provides funding information;
- discloses other information (e.g. potential publications) that is important for assessing the invention.
- The invention disclosure form can be found on at the top of this page.
- Inventors should submit the completed invention disclosure form via email to email@example.com.
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 and 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 Washington University intellectual property, 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 and 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 Universtiy, 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
There are three steps to the income distribution process:
Step 1: Creators Share Form
The distribution process at OTM begins at the time of disclosure with the Creators Share Form. The purpose of the Creator Share Form is to identify the contribution of each Creator (defined in the university’s IP Policy) to the technology (or material) that has been disclosed. While it may take many years until the disclosed technology is licensed, this Creator Share Form can be used to establish a general view of the creative contributions of each individual at the time of disclosure.
Step 2: Income Distribution Form
At the time a license agreement is executed, each Creator is asked to complete an Income Distribution Form (IDF). The purpose of this form is two-fold. First, it identifies each Creator’s contribution to the licensed intellectual property or material at the time of the license. This contribution determines how any income resulting from the agreement would be distributed among those listed on the IDF. This form also provides an opportunity for the Creators to add additional non-Creators to receive a portion of income, if desired. The second purpose of the IDF is to identify what portion, if any, of the income is to be waived back to the university, department, lab or other area identified by an individual Creator.
The Creators Share Form may serve as a guide to determining the creative contribution of each individual on the IDF. At times, however, creative contributions can change and individuals may be added as the technology is developed.
If a license agreement encompasses multiple technologies (each with its own set of Creators), an estimate needs to be agreed upon by all Creators regarding the relative weight of each technology to the overall license agreement. Once that is determined, this weighting can be applied to the individual contributions of each technology (as seen below).
Example of Income Distribution Calculation
Please note that OTM does not provide an opinion on the appropriate contributions of each Creator in a given license agreement. OTM can, however, facilitate a discussion among the Creators so that an agreement can be reached. Any disputes will be handled according to the university’s Intellectual Property Policy.
Step 3: Income Distribution
While it is the policy of OTM to distribute any license income received on an annual basis, the current practice is to distribute funds more quickly. Typically, the department holds income for 30 days to ensure that the funds have cleared the bank. After that waiting period has occurred, OTM will distribute those funds by the last day of the month. The gross income received from a license agreement is reduced by all technology transfer expenses directly linked to it. For example, the patent expense incurred by OTM must first be recovered before any income can be distributed. The gross income must also be reduced if a third party jointly owns the intellectual property with Washington University and is entitled to a share of the revenue. Other expenses are permitted to be deducted from gross income which include but are not limited to Bear Cub awards.
Once these deductions are applied, OTM will distribute the income received in the following manner:
- 35% to the Creator(s)
- 40% to the Creators’ School
- 25% to the OTM
This distribution schedule applies to any agreement executed after July 1, 2005. The portion of income that is distributed to the Creator(s) is then split based upon the Income Distribution Form that was discussed in step 2. The portion of income that is distributed to the Creators’ School is then allocated within the School based upon the distribution policy of the School.
Example of Royalty Distribution
Please note that, should a creator leave the university, she will still receive her share of the Creators’ share of the income. Also, a Creator’s beneficiaries will be entitled to the Creator’s share of the income upon death of the Creator.
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, as outlined in the below process. For a diagram of the full process please click here.