Frequently Asked Questions

What can I expect from OTM when they handle my case?
The person handling your case should let you know what to expect about the process and the timeline during your first conversation. If circumstances occur that delay the process, you should be informed by OTM regarding the reason for the delay.

Who should I contact at OTM for question about my research?
To determine which staff member is designated for your department, please view the Who to Contact page.

Where can I find information on OTM and University policies?
These policies can be found on the OTM Policies page.

When should I contact OTM about a possible invention?
As soon as possible after you think that your research has resulted in a new discovery.

What can I do to protect my (and the University’s) intellectual property?
Keep good research records and contact OTM before disclosing your idea.

Where can I find a notary public?
Please view our Notary Publics page.

I would like to consult with a company. Do I need to contact OTM?
Please review OTMs section on Consulting Agreements.

Can I consult and collaborate with a company at the same time?
Balancing these two types of relationships can be tricky as conflicts can arise between the agreements. Please review our Conflict of Interest Policy or contact OTM to discuss this issue.

What type of agreements does OTM handle?
OTM negotiates many agreements including Material Transfer Agreements, Licenses, Inter-institutional Agreements and CDAs that have been or will be disclosed to OTM through our invention disclosure process.

What is Bayh-Dole?
The Bayh-Dole Act is legislation passed by Congress in 1980 and the Act applies to all federally funded research. Bayh-Dole directed that universities could take title to ownership of patent rights stemming from employee inventions. In return, universities were mandated to promote public utilization and commercialization, to manage the intellectual property of these inventions, and to share revenue from commercial partnering with the university inventors and the university itself. More information on the Bayh-Dole Act can be found on the AUTM website.

Sometimes my agreements take a long time to complete. Why?
Negotiating even simple agreements is a dynamic process. Processing times can vary with complexity of the agreements, sophistication of the negotiating parties, priority of the agreement with and response time by the outside party, funding cycles of the outside party, etc.

Does OTM handle consulting agreements?
Consulting Agreements are a personal agreement between the faculty member and the company. OTM neither advises nor negotiates the terms of these agreements. OTM recommends that faculty members insert a paragraph into any consulting agreement to protect against confusion between personal obligations to the company and your work at the University.

When do I need a CDA?
OTM is always available to review whether a CDA is needed. A CDA should be put in place when presenting any unpublished data to a non-Washington University employee. This includes industry visits, discussions with industry representatives, discussions with multiple party attendees, etc.

Why does the University require material transfer agreements when I am sending materials to others?
Material transfer agreements (MTAs) protect you and the University from two kinds of problems. First, they are a means to help you lay claim to your valuable intellectual work product. An MTA ensures that you will be rewarded if that value is realized in a commercial undertaking. Second, you and the University need to be protected from improper or unsafe use of the materials. The MTA informs the recipient that his/her institution is responsible for mishaps that occur while using the material.

Why do MTAs apply when I am bringing materials into the University?
When you receive materials from other organizations, the same issues arise. What happens if you invent something based on the materials you have received? Who owns the new idea? MTAs can address that. This is particularly important when receiving materials from a private company. Management of the company has an obligation to the company owners to seize as much intellectual property as possible-they are eager to own what you may have discovered. Second, the liability issue remains. In this case, it is we who must be careful in the handling of the materials.

Why do I fill out the MTA questionnaire? What is the purpose of it?
The MTA Questionnaire should provide the OTM with enough information to create an accurate record of the technology and the parties involved so that negotiations of the MTA will proceed more effectively. Also note, that the questionnaire for receiving materials is different and more in depth than the questionnaire for sending materials. Whatever you do, please contact us prior to receiving or sending out any research materials.

Why are MTAs with some businesses so difficult to complete?
A company tries to maximize its intellectual property position, especially where the company’s proprietary materials are concerned. As a consequence, companies aggressively negotiate intellectual property and confidentiality issues that may be incompatible with University and other government policies.

Who is authorized to sign an MTA?
An MTA is a legal contract between institutions. The signatory for Washington University in St. Louis is the Associate Vice Chancellor for Technology Management.

Is an MTA required in every situation where biological materials are being shared with another non-profit or for-profit institution?
Yes. Always have an MTA to protect your interests and those of the University.

Does Washington University comply with the Uniform Biological Material Transfer Agreement (UBMTA)?
With respect to other non-profit institutions, Washington University adheres to the guidelines of the UBMTA.

How is license revenue distributed?
Please view our information on our Income Distribution Process.

 

Who can help me with Sponsored Research questions?
Please contact the Office of Sponsored Research for questions regarding Sponsored Research.

Where do I find info on startups?
You can find this information on OTM’s Startups page.

Where types of alternate funding sources are available?
LEAP, Biogenerator, SBIR, and STTR

What is the filing criteria for supporting international patent applications?
OTM files and maintains intellectual property through its patent fund.  The decision to support intellectual property centers on three broad considerations:

  • The potential for intellectual property protection (through patents or copyright);
  • Potential market opportunity for the technology;
  • Perceived barriers to commercializing the intellectual property.

For determining whether to support or continue supporting a patent or patent application, assessments are made at multiple decision points and take into account information available in the public domain or market reports, information from experts such as patent attorneys and those in the industry sector, feedback received through OTM marketing efforts, and data received from the technology creators.

PCT application filings will be considered if

  • Significant commercial interest has been indicated;
  • A significant market opportunity exists outside the US; and
  • A high probability of licensing the technology exists, as demonstrated from positive marketing feedback, and it is likely such licensing would take place prior to national phase decisions.

National stage filings will be undertaken, only if, a third party (licensee or optionee) is responsible for all patent costs.

The following information is meant to guide the licensing team in the Office of Technology Management for decisions relating to international filings.  The criteria are suggestive and meant to be used inclusively such that not one criterion is sufficient to support a positive international filing decision.  The Office of Technology Management holds the final decision.

Please email OTM with any additional questions.