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FAQ

General

  1. How can WVU OTT help the inventor?
  2. Why are Confidential Disclosure Agreements (CDA) or Non-Disclosure Agreements (NDA) necessary?
  3. Does WVU OTT license only patents or patentable inventions?
  4. If I invent something at the University does it belong to the University? What about inventions I thought of and invented before I came to the University or outside of the University?
  5. If I write a software program as my thesis can I license and distribute it myself, or does the University own it?

Intellectual Property

  1. What should be done if I think I have made an invention?
  2. How do I obtain an invention disclosure form?
  3. Why are the dates of conception and first public disclosure important?
  4. What is considered a public disclosure of an invention?
  5. What is the invention evaluation process? What happens after I disclose it to WVU OTT?
  6. How do I know when my invention is complete enough to file for a patent?
  7. How detailed should the description of the invention be?
  8. How does the inventor benefit from disclosing an invention to WVU OTT?
  9. How is it determined who the inventor is?
  10. Can there be more than one inventor?
  11. Why is accurate inventorship so important?
  12. What can I do to ensure that my patent has the proper inventive parties listed?
  13. Is software considered an invention?
  14. Why is the contract/grant information important to WVU OTT?

Patents

  1. What is the difference between a copyright and a patent?
  2. If I publish a paper or make an oral disclosure before WVU OTT files a patent application have I lost patent rights?
  3. What can be patented?
  4. What are the requirements for patentability?
  5. How long does it take to get a patent?
  6. What can prevent obtaining a patent?
  7. How do I search for prior patents?
  8. How do I know if I want a Design vs. a Utility patent?
  9. What is a provisional patent application?
  10. How long is a patent valid?

Licensing

  1. What is a license?
  2. How does WVU OTT find licensees?
  3. What role does the inventor play in the licensing process? Does the inventor participate in the negotiating process?
  4. Is there a standard fee for a license?
  5. May I license my own invention back from WVU OTT?
  6. What are considered conflicts of interest and how can I avoid them?

Agreements

  1. What is an NDA or CDA?
  2. When do I need an NDA?
  3. Can I disclose intellectual property before an NDA is executed?
  4. What is an MTA? When do I need an MTA?
  5. What if there is a charge for the materials?
  6. Why does WVU OTT need to negotiate agreements?
  7. What do I do if someone asks me to sign an NDA or MTA?
  8. How can I obtain a standard NDA or MTA form to send to outside parties?
  9. Who is an authorized signatory for the University? Why can’t I sign it myself?

General

  1. How can WVU OTT help the inventor?

    WVU OTT is able to provide services in the following areas:

    • Protecting Intellectual Property (IP)
    • Evaluating the research and other works for IP protection
    • Evaluating research and other University works/output for commercialization potential
    • Marketing expertise for the purposes of commercialization
    • Monitoring of patent prosecution
    • Commercialization of IP through licensing and start-ups, etc
    • Monitoring of executed licenses
    • Royalty distribution
  2. Why are Confidential Disclosure Agreements (CDA) or Non-Disclosure Agreements (NDA) necessary?

    A Confidential Disclosure Agreement (CDA) or Non-Disclosure Agreement (NDA) is necessary before any proprietary information is disclosed from one party to another. Without this agreement, the party to whom the information is disclosed is free to use and transmit the information to others. This also protects the technology from public disclosure that could prohibit or negatively affect the ability to patent. We recommend contacting the OTT before disclosing any confidential information to any other party. The CDA or NDA will be negotiated by the OTT for all WVU proprietary information.

  3. Does WVU OTT license only patents or patentable inventions?

    No, WVU OTT also handles copyrights, trademarks, “know how” (research of value not covered by a patent), trade secrets and other tangible research property.

  4. If I invent something at the University does it belong to the University? What about inventions I thought of and invented before I came to the University or outside of the University?

    What is pertinent regarding ownership is not the location you were when the idea was conceptualized but its relationship to your research or work at the University. If the idea grows out of your work or research or is developed with more than incidental use of University resources or if it is an outgrowth of sponsored research (even if it did not use substantial University resources), then it belongs to the University.

    If you have been working on intellectual property in an outside collaboration, please disclose the intellectual property to the University even if your collaborator offers to handle the invention. The employer of each inventor may have ownership in the invention. WVU OTT will coordinate with other joint owners of inventions and will negotiate how the invention will be managed and be sure any potential royalties will be fairly shared.

    Please see the WVU IP policy for more information on this topic.

  5. If I write a software program, can I license and distribute it myself, or does the University own it?

    The University owns all patentable and/or copyrightable software developed using University resources, software developed as work for hire (absent a written agreement signed by WVURC stating otherwise), software that was commissioned by the University, software developed under a sponsored research program or software otherwise created under the WVU IP policy.

Intellectual Property

  1. What should be done if I think I have made an invention?

    You should submit an invention disclosure form for all inventions, regardless of the source of funding. Completed disclosures should be sent to the Office of Technology Transfer, 886 Chestnut Ridge Road, P.O. Box 6224, Morgantown, WV 26506-6224.

  2. How do I obtain an invention disclosure form?

    An Invention Disclosure packet (disclosure form and assignment form) can be downloaded from the WVU OTT website here: Invention Disclosure Packet

    Call us if you have any questions at (304) 293-7539.

  3. Why are the dates of conception and first public disclosure important?

    The U. S. patent system is a “first to invent” system. The party that can prove they were the first to invent gets the rights to the patent. Keeping dated notes that others have witnessed, and other records, is potentially very important for patenting. The date of first public disclosure is important because in the U.S. an inventor has one year from the date of first public disclosure to file a patent application. Once the invention has been publicly disclosed, foreign patent rights may be lost.

  4. What is considered a public disclosure of an invention?

    Anything readily available to the public that describes the basic ideas in sufficient detail that someone else would be able to make and use the invention. Showing and/or telling about the idea or selling or offering for sale the actual product or a prototype of the invention is also considered public disclosure.

  5. What is the invention evaluation process? What happens after I disclose it to WVU OTT?

    Your invention is evaluated for both patent potential (is it a new, non-obvious idea? is it useful?) or potential for other forms of IP (copyright/trademark) and also commercialization potential (does it have value in the marketplace?). The inventor can help in this evaluation by:

    1. Completing a preliminary patent search on the U.S. Patent & Trademark website and
    2. Presenting some ideas on commercial use/markets and companies that might be interested in the invention.
  6. How do I know when my invention is complete enough to file for a patent?

    Two things signify the completion of an invention— conception and reduction to practice:

      1. Conception is established by showing that the inventor had a definite and permanent understanding of the invention and an idea of how to make and use the invention. A written description of an invention should be made as soon as possible after its conception, witnessed and dated.
      2. Reduction to practice is successfully using the invention in its intended way. This should be witnessed and recorded.

      Dates of conception and reduction to practice may be necessary to establish priority of invention. Technically, an invention can still be completely conceptual as long as its best mode of operation is described in the patent application. An actual reduction to practice can be extremely useful to establish priority (e.g. building a prototype), but it is not necessary to obtain a patent.

    • How detailed should the description of the invention be?

      The invention should be described in as much detail as possible so we can perform a thorough evaluation of the invention’s licensing potential and adequately formulate decisions as to whether an invention is patentable.

    • How does the inventor benefit from disclosing an invention to WVU OTT?

      Inventors may benefit by the development and commercialization of their invention. Financially, inventors share in the net royalties generated. In addition, a company that licenses a patent or technology may be interested in sponsoring further research for inventors or hiring researchers and inventors as consultants. Inventors are ID'd on patents and other registered forms of IP (copyright/trademark) while the University bears expenses and financial risk.

      Please see the WVU IP policy for more information on this topic.

    • How is it determined who the inventor is?

      An inventor is one who gives creative input to the conception of an invention. Conception is established by showing that the inventor had a definite and permanent understanding of the invention and an idea of how to make and use the invention. Consistent with this, simply stating a result to be achieved without a plan for how to do so would not be considered a contribution to conception. Also, simply working to reduce the invention to practice or to make a prototype will not qualify as inventorship under U.S. patent law. This is how inventorship is established even though reduction to practice often is more time consuming than conception of the invention. While generally one who reduces the invention to practice is not an inventor, they can be if in reducing it to practice an inventive element is added. For example, if problems are encountered in the process of reducing it to practice and the problems are solved in a way that required an act of conception, this entitles the problem solver to inventorship status.

    • Can there be more than one inventor?

      Yes, there may be more than one inventor, i.e., co-inventors. In order for multiple people to be considered inventors, it is necessary that they each contributed to the conception of the invention. Because of this, co-authorship on a scientific paper will not necessarily translate into co-invention on a patent application. While it is necessary that all inventors contribute to the conception of the invention, their contribution need not be to the invention in its entirety. It is only necessary that they contribute to a part of one claim of the ultimate patent that issues. The claims of a patent define the subject matter of the invention and therefore define who can be considered an inventor. As claims are added, deleted, and altered during patent prosecution, inventorship can change and should be updated.

    • Why is accurate inventorship so important?

      In a patent application, a simple error in the identification of inventors, without deception, can be corrected. However, a deliberate exclusion of an inventor will make the patent unenforceable or invalid.

    • What can I do to ensure that my patent has the proper inventive parties listed?

      The easiest and best way to ensure that the proper inventors are listed is to keep accurate records of the inventive process. If you have records, preferably dated, that describe who contributed what to the invention throughout the inventive process, this will make it much easier for WVU OTT or outside patent counsel to determine who would be considered an inventor. Alternatively, you can submit a statement from each contributor on the Disclosure of Invention form stating what their contribution to the invention was. Either way, this information will help determine the proper inventors and protect the validity of the patent.

    • Is software considered an invention?

      Sometimes software is considered an invention. Copyright laws usually govern software, but in some cases, the software is patentable. A patentable invention may include software code.

    • Why is the contract/grant information important to WVU OTT?

      Under federal law, the University is required to report inventions created under sponsored research to the government. If the University decides not to keep title to the invention (retain entire right, title and interest throughout the world) then the government has the rights to it. Non-governmental sponsors may also have IP clauses and obligations attached to such sponsorship with which the University must comply.

    Patents

    1. What is the difference between a copyright and a patent?

      A patent is the grant of a property right to the inventor. What is granted is the right to exclude others from making, using, offering for sale, selling or importing the invention.

      Copyrights protect original works of authorship, giving the owner the exclusive right to reproduce the work, prepare derivative works, distribute copies or perform or display the work publicly. A copyright protects the form of expression rather than the subject matter of the writing.

    2. If I publish a paper or make an oral disclosure before WVU OTT files a patent application, have I lost patent rights?

      Most foreign rights are lost immediately. However, you are allowed one year from the public disclosure to file a U.S. patent application. If possible, you should refrain from publishing a paper or making an oral public disclosure of an invention before WVU OTT has filed for a patent.

    3. What can be patented?

      A utility patent may be obtained for a new and useful process, machine, article of manufacture, composition of matter, or for an improvement thereof. A design patent may be granted for a new, original design for an article of manufacture. Patents may also be granted for certain types of plants and microorganisms.

    4. What are the requirements for patentability?

      In order to be patentable an invention must be novel (i.e. new and original), must have a utility (a clear use), and it must be non-obvious. Even though it is new, it must not be obvious to one of ordinary skill in the art to which the invention applies.

    5. How long does it take to get a patent?

      Typically three (3) to five (5) years with costs ranging from $10,000 – $15,000.

    6. What can prevent obtaining a patent?

      An applicant shall be entitled to a U. S. patent unless:

      • Before he/she made the invention, it was known or used by others in the U. S. or was patented or described in a printed publication in the U. S. or a foreign country.
      • The invention was patented or described in a printed publication in the U.S. or a foreign country or was in public use or on sale in the U. S. more than one year before the date of filing a U. S. patent application.
      • The applicant for patent has abandoned the invention.
      • The applicant patented the invention in a foreign country more than twelve months prior to the filing date of the U. S. patent application.
      • The invention was described in a U. S. patent granted in an application filed by another before the invention was made by the applicant for the patent.
      • He/she did not invent the subject matter sought to be patented.
      • Before the applicant made the invention, it was made in the U. S. by another who had not abandoned, suppressed or concealed it.
    7. How do I search for prior patents?

      There are a few reputable web sites you can visit to search for prior art patents. They are:

      We also have an expert patent librarian on campus available by appointment:

      Ms. Marian Armour-Gemmen
      Patent Librarian
      Evansdale Library
      West Virginia University
      Morgantown, WV 26506-6105
      (304)-293-9758 Ext. 5106 | Fax: (304)-293-7730 

    8. Marian.Armour-Gemmen@mail.wvu.edu

    9. How do I know if I want a Design vs. a Utility patent?

      The difference between a utility patent and a design patent is that a utility patent protects the way an article is used and works while a design patent protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and original appearance. The patent agent or attorney will generally determine the type of patent to file for after evaluation of the disclosure and consultation with the inventor(s).

    10. What is a provisional patent application?

      A provisional application is a faster, less expensive application used to establish the original filing priority date with the patent office while still investigating whether to proceed with filing a full application. After filing a provisional patent application the applicant has one year to file a complete application.

    11. How long is a patent valid?

      For a Utility or Plant patent, the term is 20 years from the date of filing. For a Design patent, the term is 14 years from the date of filing. A Provisional patent application lasts for one year from the filing date.

    Licensing

    1. What is a license?

      A license grants a company permission to use an invention for commercial purposes, subject to certain terms and conditions that typically include fair compensation to the University and the inventors based on the estimated value of the invention. There are exclusive and non-exclusive licenses.

    2. How does WVU OTT find licensees?

      Usually the best sources of licensees are the inventors as they are likely to know about people and companies doing work related to the field they are inventing in. In other cases, contacts are used to find companies who might be interested in the technology.

    3. What role does the inventor play in the licensing process? Does the inventor participate in the negotiating process?

      Other than verifying information about the invention or industry the inventor does not generally participate in the negotiations. In some cases the inventor may be asked to participate. The inventor(s) are always kept informed about the negotiations.

    4. Is there a standard fee for a license?

      No, license fees and royalty rates are determined on a case by case basis because every company and technology is unique.

    5. May I license my own invention back from WVU OTT?

      Yes, if you/your company can demonstrate that such a license would provide the best chance of commercialization for that technology and if potential conflicts of interest are manageable.

    6. What are considered conflicts of interest and how can I avoid them?

      A conflict of interest in technology transfer occurs when the activities associated with a license will induce or cause a compromise of an inventor’s primary duties to the University. Sometimes conflicts of interest cannot be avoided but they can usually be managed.

    Agreements

    1. What is an NDA or CDA?

      NDA (Non-Disclosure Agreement) and CDA (Confidential Disclosure Agreement) are two IDs for a legal document which restricts disclosure of information covered by the agreement.

    2. When do I need an NDA?

      As a researcher at the University, you need an NDA when you would like to share your intellectual property or you are approached by an outside party to receive or share intellectual property. An NDA will be needed when working with non-WVU collaborators, companies, grants with NDA stipulations and any other party with who intellectual property may be disclosed or received during discussions.

    3. Can I disclose intellectual property before an NDA is executed?

      No, WVU OTT should be contacted before any intellectual property is disclosed. Disclosure of IP prior to execution of an NDA may result in a loss of IP rights.

    4. What is an MTA? When do I need an MTA?

      An MTA (Material Transfer Agreement) is needed when there is an exchange of materials to or from WVU with an outside party.

    5. What if there is a charge for the materials?

      If payment is required for the materials, please contact the Office of Sponsored Programs or your department Chair.

    6. Why does WVU OTT need to negotiate agreements?

      Consistent use of an agreement provides security during collaboration. There are many areas that require negotiation from both parties, such as governing law, jurisdiction, IP rights, publication rights, indemnity and party to the contract. Signing without negotiations can lead to undesirable contractual terms like publication restrictions, unreasonable IP ownership clauses and unwanted legal obligations. The University is prohibited to enter into some terms, such as non-WV governing law. Failure to execute or improper execution can also lead to loss of IP rights.

    7. WVU OTT staff is skilled in reviewing these agreements and generally is able to negotiate them quickly assuming there is cooperation from the counterparty. WVU OTT staff is trained to spot problem areas in these agreements and to resolve them. By keeping a record of the agreements, we can also keep track of the obligations of the University and ensure that there are no conflicting terms should we enter into another agreement at a later date. WVU OTT does make it a priority to negotiate NDA and MTA as quickly as possible so as not to create any delay in research or other collaborations.

    8. What do I do if someone asks me to sign an NDA or MTA?

      If possible, send an electronic editable version of the document and the contact information of a technology transfer counterpart or the sending party to TechnologyTransfer@mail.wvu.edu. If you have additional questions call WVU OTT at (304) 293-7539.

    9. How can I obtain a standard NDA or MTA form to send to outside parties?

      Standard agreement forms to send to outside parties are available here:

    10. Who is an authorized signatory for the University? Why can’t I sign it myself?

      An authorized signatory is a representative vested with the powers to commit West Virginia University to a binding agreement. Unless explicitly directed, West Virginia University employees do not have the authority to bind the University in contracts. The WVURC, and more specifically the OTT, is authorized to act on behalf of the University with regard to NDA and MTA.