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The Intellectual Property Process is the roadmap the Office of Technology Transfer uses to help commercialize your invention, starting from your conception to generating revenue for you and the University.
An Invention Disclosure submitted to the West Virginia University (WVU) Office of Technology Transfer (OTT) serves as a record of a potentially patentable invention and is a notice of such to WVU. A submitted Invention Disclosure is not a patent application and is not filed with the U.S. Patent and Trademark Office (USPTO). A submitted Invention Disclosure does not provide any intellectual property protection other than possibly an invention date. The following steps describe the steps the WVU OTT performs when processing an Invention Disclosure submission.
Step 1 – Conception
To be considered eligible for a patent, an invention must be conceived and reduced to practice. Reduction to practice can be an actual reduction to practice, meaning the invention was carried out and found to work for its intended purpose. Alternatively, reduction to practice can be a constructive reduction to practice, meaning it has been sufficiently described in writing for someone with ordinary skill in the art to make or practice the invention. Properly completing the invention disclosure form in Step 2 demonstrates a constructive reduction to practice.
Step 2 – Disclosure Review
Inventors must complete all sections of the WVU OTT invention disclosure and submit a hard copy of it to the OTT with wet-ink signatures where appropriate. The invention disclosure form can be downloaded here. The inventors may send an electronic draft of the Invention Disclosure for the OTT to review prior to formal submission. The OTT will promptly review the invention disclosure to ensure it is properly filled out or communicate its incompleteness to the inventor with specific guidance on how to complete it.
Step 3 – Commercialization Assessment / Prior Art Search
The WVU OTT confidentially submits the Invention Disclosure to a third-party firm to perform a commercial assessment. The assessment is a three to five-page document that typically summarizes the following aspects of the technology:
Market, Trends, and Competitive Landscape
Recommendation on Next Steps
Once the OTT receives the commercialization assessment back from the third-party firm, it is shared with the inventors for their feedback to ensure the technology was properly interpreted and evaluated. The commercialization assessment is important because it provides an initial indication on the revenue generating potential of the technology.
The OTT also oversees a preliminary prior art search of the technology. A preliminary prior art search is important because the technology must exhibit at least one element of novelty to be considered patent eligible. The results of any prior art discovered that may prohibit or limit what can be claimed in a potential patent application on the technology is shared with the inventors for their feedback. This step can take up to thirty days to complete.
Step 4 – Technology Committee Assessment
The WVU Technology Transfer Assessment Committee (TTAC) reviews the invention disclosure, the commercialization assessment, and the prior art search results to determine the next step. TTAC typically meets monthly, so this step can take up to thirty days to complete based on the timing of the previously completed steps. One of three following outcomes occur from this assessment:
WVU Files a Patent Application on the Technology
The OTT will commission a third-party legal firm to confidentially draft a patent application on the technology.
WVU Offers the Technology Back to the Inventors
The OTT may offer the rights of the technology to the inventors if they wish to pursue their own commercialization interests. This typically occurs if the technology is determined to have low commercialization potential. If the inventors wish to own the rights to the technology, the inventors must sign a Technology Release Agreement.
WVU Retains the Technology for Further Development
WVU may retain rights to the technology with the intent for it be further developed so that TTAC can reassess the technology for IP protection at a late date. This typically occurs if the technology is determined to be underdeveloped but have a high commercialization potential.
Step 5 – IP Filing
For technologies that do not have an immediate commercial opportunity, WVU will typically elect to file a U.S. provisional application. For technologies that have an immediate commercial opportunity, WVU will typically elect to file a U.S. nonprovisional and/or an international patent application depending on the invention’s potential in foreign markets. This step can take up to thirty days to complete.
Step 6 – Marketing
The OTT will commission a third-party firm to market the technology. Marketing begins by drafting a one-page, non-confidential disclosure (NCD). Once the draft NCD is approved by the inventors to ensure the technology is properly represented and IP protection has been procured, the NCD is shared with a pre-approved list of external partners for potential revenue generating potential. If marketing has been unsuccessful for three months, the NCD may be revised and a new list of external partners will be solicited for an additional three months.
Step 7 – Revenue Generation
Revenue generation from patented IP can take many forms. Revenue share is typically forty-percent to the inventors, forty-percent to the university, ten-percent to the college, and ten-percent to the department of money made after IP filing costs have been recouped. However, the most common route is by licensing the technology to an industry affiliate who is well-equipped to profit from the invention in the marketplace. Other paths for revenue generation include, but are not limited to, building a business startup around the technology, raising venture capital, partnering with industry for commercial development, or procuring additional research funding.
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