FAQ - General questions about technology transfer
Intellectual Property refers to property rights in ideas that are protected through federal and state laws governing patents, copyrights, and trade secrets. Know-how is sometimes also included in intellectual property licenses, and covers ideas and information that is not protected by patent, copyright or trade secret.
The value of intellectual property (IP) is not only in the original idea, but in how that idea is protected through copyright, patent or trademark rights. To appropriately and diligently protect IP created at the UW, we use a management strategy that provides our licensees with the freedom they need to meet their strategic business needs, while giving the UW enough control to ensure the IP is as robust and broad as possible throughout the entire life cycle of the innovation.
Students own their works developed in lecture-based courses or outside of any direct support from UW. If a student is an employee of the UW, including a graduate student doing funded research, then works created through the student’s employment are subject to the UW IP policy (EO 36). If a student participates in a research lab or in sponsored research, the student’s contributions to IP will be handled consistently with that research portfolio.
At the UW a student’s intellectual property created solely as student works belongs to the student. The UW encourages its students to look for opportunities to have impact. This may be in form of scholarly publication, a career in the arts or in industry, or through entrepreneurship.
There are two common circumstances that may result in IP being assignable to the UW. The first is employment at the UW. As an employee of the UW, a student is subject to the same policies that apply to faculty and staff. A very common form of employment for graduate students is to work on funded research projects.
The second common circumstance is participation in a research group, laboratory, or sponsored project. The management of IP generated under these circumstances must maintain the integrity of the research program, acknowledge the use of public resources, and comply with the terms of the sponsored research contracts. A student’s contributions would have the same IP obligations as other participants in this research group, laboratory, or sponsored project.
80% of the proceeds from a license are shared equally among the inventors (for patent rights) and authors (for copyrights) of the technology (26.67%), their departments and schools (26.67%), and the Provost (26.67%). The Provost, schools, and departments invest in research programs. The remaining 20% goes to fund the patent budget and CoMotion’s commercialization services that provide world-class assistance to UW researchers.
If there are direct costs for the commercialization of an innovation, these are reimbursed before any proceeds are distributed. Typical examples of these direct costs are the costs for patent prosecution, for product prototyping, and for consulting services specific to this project.
The inventors and authors together receive 26.67% of the proceeds. As a default, all inventors and authors receive an equal share. Often this default allocation among the team is modified by an agreement, to reflect significant differences in the levels of contributions across the team.
For proceeds from equity received as part of the license consideration, if any of the inventors or authors hold equity personally in this company as founders, then these inventors and authors are excluded from the division of the team allocation. The remaining inventors and authors receive the 26.67% allocated to the team from the proceeds from the UW equity position.
The departments and schools listed as affiliations by one or more inventors and authors together receive 26.67% of the proceeds, of which 75% goes to the departments and 25% to the schools. The division across departments and across schools reflects the division across the team of inventors and authors.
The Provost receives 26.67% of the proceeds, which is applied toward research programs. The Royalty Research Fund (RRF) is supported in part by these funds. CoMotion receives 20% of the proceeds and invests these in its resources and programs, to provide unparalleled commercialization support for UW researchers.
Project Budgets: The above distribution may be modified by creating a Project Budget to support research that advances this technology. If the team forgoes part of its share in the proceeds, directing this instead to a qualified Project Budget, then the departments and schools match this, as does the Provost.
NOTE: Technologies disclosed before 2003 are subject to an earlier distribution policy.
Commercialization and entrepreneurship is a small but highly visible aspect of the top research universities. Each year UW researchers will publish tens of thousands of scholarly papers and books. Out of these, several hundred will be disclosed to CoMotion as innovations with commercial potential.
The UW wants its research to provide significant benefits regionally, nationally, and globally. Many innovations will only have their full potential realized through product activities taken on in the private sector. Bridging the gap between the research result and a manufactured product requires specialized expertise, committed time, and funding, and to achieve impact the UW must provide the early momentum in support of commercialization. Many faculty and graduate students expect to be entrepreneurs as part of their academic careers.
A disclosed innovation starts out as a potentially valuable research result. Additional translational development within the university must occur to ready that innovation for transfer to the private sector. Moreover, as anyone who has walked the entrepreneurial path can attest, strong technology is not enough; a greater challenge is matching the technology to a significant market opportunity – identifying critical unmet needs, understanding the business landscape for the product, and developing customers in the face of competitors and in the context of existing products and markets.
The university needs to create the opportunity for a team, investors, and our licensees to make this effort by preserving the intellectual property and by supporting university innovators throughout their translational development efforts.
The UW will attract top translational faculty and student researchers by offering world-class resources and programs for technology entrepreneurship.
The UW is at the vanguard of commercialization. Annual metrics for university technology transfer place UW CoMotion in the top tier in the nation. We are amongst the most successful in the nation for the number of licenses and options executed and the technologies placed into use. The UW ranks in the top ten for the number of startups launched.
These impressive numbers mean that CoMotion has one of the highest deal flows in the country, and the staff are expert at customizing licensing terms to meet business needs across industries and technical areas.
FAQ - Material Transfer Agreements
A Material Transfer Agreement (MTAs) is a contract that protects your intellectual property (IP) when you either provide or receive research materials to and from other institutions or corporate entities. Research materials include cell lines, cultures, bacteria, nucleotides, proteins, transgenic animals, pharmaceuticals, or chemicals. Each exchange of research material requires an MTA. For repeated exchanges of the same research material, standardized MTAs can help streamline the process. CoMotion’s Agreements Group can help you efficiently transfer research materials.
Research materials that require MTAs are cell lines, cultures, transgenic animals, and pharmaceuticals, among others.
MTAs are important because they protect UW intellectual property rights, limit UW liability, and fairly credit the developer of the materials.
The Agreements Group within the UW Center for Commercialization manages most MTAs for the UW. If the MTA is embedded in a Sponsored Research Agreement, or is linked to a clinical trial, then the Office of Sponsored Programs (OSP) may be responsible for the MTA. The UW Center for Commercialization and OSP are the only units of the University authorized to review and sign MTAs.
UW researchers should contact the UW CoMotion Agreements Group, either by phone (206-543-3970) or by email. If the MTA is embedded in a Sponsored Research Agreement, is linked to a clinical trial, or is for clinical use or clinical studies in humans, then the Office of Sponsored Programs (OSP) is responsible for the MTA. CoMotion and OSP are the only units of the UW authorized to review and sign MTAs.
FAQ - Confidentiality Agreements
A confidential disclosure agreement (CDA), sometimes called a non-disclosure agreement (NDA), is a legal document for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (such as a university researcher) to another (such as a corporate representative). Otherwise, the transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure. In the worst case, such a disclosure could allow the individual or company to whom this information was disclosed to use or transmit to others your confidential information, thus placing the invention in the public domain. This would preclude the possibility of obtaining intellectual property protection. It is important to contact CoMotion before disclosing to another party any confidential proprietary information about a commercializable innovation. For a confidential disclosure agreement (CDA) please contact the innovation manager at CoMotion who is working with you or email CoMotion to talk to an innovation manager.
FAQ - Licensing Terms - Financial Issues
Licensees benefit from the UW reputation, and usually from federal and state funding, university resources, and commercialization support as well. To assure a balance of interests, the UW, its departments, schools, and inventors should share in successes.
Attorneys or business people unfamiliar with licensing technologies from universities are sometimes surprised that UW CoMotion licenses require financial consideration. In the case of startup companies founded around UW innovations, this includes an equity position in the company. To assure a balance of interests, the UW, its departments, schools, and inventors should share in successes.
The UW contribution goes far beyond the costs of patent prosecution, CoMotion infrastructure and staff. UW researchers, even the most independently innovative, benefit from the UW’s reputation in filing for and winning federal research support. They benefit from UW colleagues, graduate students, and a broad research base. They also benefit from Washington State support of our public university and the 150 years of donor contributions to buildings and programs.
And why equity? Startup companies from the university benefit from the UW reputation, which adds both value and credibility to the new business venture. It is hard to predict how a startup will achieve its success, and an equity position preserves the UW’s opportunity to share in that success.
UW licenses may include an upfront fee, equity, maintenance fees, milestone payments, patent cost reimbursement, a running royalty, minimum annual royalties sublicensing fees, and assignment fees. The terms included will vary depending on the business plans of the licensee.
When a negotiator has not licensed from a university before, they sometimes assume that a license will come with a single financial term – one lump payment, or an all equity deal. This does not ensure all parties benefit from successful commercialization of the technology, due to the variety of business models that may be used to generate revenue. In licensing early-stage technologies, the university uses a balance of financial terms to give the licensee maximum flexibility in its business model. If a licensee is confident that a specific business model will be used to generate revenue, the financial terms can be simplified to reflect the narrower business needs.
An upfront fee is included in all licenses unless it is a startup. The upfront fee is usually lower than the upfront fees you would see in a license agreement between two companies, to reflect the early stage of the technology. The fee is included as partial compensation for the value of the intellectual property being licensed and for the benefits that the licensee receives when seeking resources to develop the technology through the association with the university. The upfront fee can range from $10,000 to $500,000 depending on the value of the intellectual property being licensed, the market opportunity, and the investment of resources required to bring a product to market.
Milestone payments are a mechanism to make multiple, lower payments as the technology is de-risked as opposed to a larger upfront payment.
Milestone payments are a financial term more common in regulated industries and with technologies that will take a long time to reach market. Since the value of early-stage technologies can be unclear at the time of licensing, milestone payments associate a schedule of licensing fees with the regulatory requirements that reflect inflection points in the valuation of the company or technology.
Milestone payments can also be used when the parties choose this mechanism in compensation for lower upfront fees as a mechanism to share value as the technology is proven. This decreases risk to the company by allowing payments for the innovation to be spread over time and to be made only as the innovation proves to be valuable, rather than paying for the technology in the upfront fee.
It is a popular mechanism for sharing value when technologies are early stage and still carry significant risk. The milestones that trigger payments are generally a subset of the milestones used for diligence milestones.
Maintenance fees often occur prior to first sale of a product, and are designed to ensure that the company continues to develop a product based on the licensed technology. The license includes diligence milestone dates that are generally several years apart, and maintenance fees encourage companies to actively consider their plans in the interim as the fee becomes due. These maintenance fees may start immediately upon licensing, or for startups, a couple of years after licensing. Typically these fees end when product sales begin.
Net sales are the basis for calculating royalties. The net sales definition defines any reductions from total revenue for a given product a licensee may take before calculating the royalty due under the license. The deductions allowed are directly related to delivering the finished product to the customer, and do not include commissions, development or marketing expenses. These deductions must be easily verifiable, such as shipping or discounts included on the customer invoice. Many of these are industry standard deductions, and due to the accepted understanding of these terms, modifications to this standard language will not be considered if they create uncertainty in how the company will calculate the royalty to the UW, or include non-standard deductions.
When a product is developed based on technology licensed from UW, the company generally pays a percentage of each sale, or a dollar amount for each sale, to the university as part of the payments under the license. Royalties are most often a percentage of the net sales; net sales are defined as the total sales amount minus agreed-upon deductions. Royalties are the most common mechanism to share success between a licensee and licensor. Royalties are the most effective way to reach a fair balance of value to each of the licensor and licensee given the early stage of university innovations when licensed.
Minimum annual royalties are used to ensure the licensee remains committed to maximizing the dissemination of the innovation, including actively marketing it, for the life of the license.
This is a minimum amount that the company commits to paying each year in running royalties in exchange for the license. It often will start low as the company builds its market size. The goal is to ensure the company continues to appropriately market the product, and does not let the innovation languish following first product introduction.
Sublicensing consideration is the revenue received by the licensee from licensing the UW’s intellectual property to another party to develop, rather than developing, marketing, and selling a product themselves.
Increasingly, companies do not anticipate taking a product all the way to market themselves, but rather expect to transfer the rights they have licensed from UW by entering into a sublicense with another party to finish development. This is a different business model and requires a different level of investment on the part of the company. It requires less investment and derives more of its profits directly from the University-licensed intellectual property, rather than a model that anticipates the company developing and selling products directly. The Sublicensing Consideration paid to the University is a percentage of the total non-royalty income received by the company in return for the sublicense of University intellectual property. This percentage will decrease as value added by the company’s technology development increases. This consideration is separate from the royalties due to the University from sales made by either the company or a sublicensee.
Acquisition consideration is the revenue received by a company for selling its rights in the University intellectual property, or for selling all of its assets. In particular where the university license includes equity, the license consideration will also includes a percentage of the acquisition consideration if the company is sold prior to reaching any milestones or receiving investor funding. This fee is stepped-down as the company adds value to the technology, going to zero once the company achieves substantial operations or when the company has received Series A funding.
Some companies may choose to be sold to an existing company very early in their life, rather than begin the research and development necessary to bring a product to market. While companies need flexibility to make appropriate strategy choices, exiting very early through sale of the company is a different business model requiring less investment than developing a technology through to product introduction. This is particularly problematic where the university could have done a direct license of the technology rather than the start-up acting as a broker. This fee is negotiated to ensure all parties receive appropriate benefit based upon contribution to the total value.
Startups from the university benefit from the UW reputation, which adds both value and credibility to the new business venture. The UW contribution goes far beyond the costs of patent prosecution, CoMotion infrastructure and staff. UW researchers, even the most independently innovative, benefit from the UW’s reputation, its broad research base, and its faculty and graduate students.
It is hard to predict how a startup will achieve its success, and equity preserves the UW’s potential benefit as the startup grows. If the start-up is successful, proceeds from the equity are added to the 150 years of contributions from UW donors and from Washington State to enhance the quality of UW research and entrepreneurship.
FAQ - Licensing Terms - Non-Financial Issues
The UW’s license agreement includes a number of standard non-financial terms that are based on university mission and policies and state or federal law. For background on the philosophy behind university licensing practices, we recommend the Association of University Technology Managers guide Nine Points to Consider in University Licensing and the National Academy guide Managing University Intellectual Property in the Public Interest.
The university designs its license to ensure intellectual property encourages investment in a technology to take it to market while allowing the licensee broad discretion in the steps to accomplish this goal. As standard practice to balance these two goals, universities retain control of the patent prosecution for the university invention, include diligence milestones for the development of the technology, and require the licensee to indemnify the university and to mark products to give notice of any protected intellectual property (patents, copyrights, trademarks) that is included.
The choice of law for any license with the University of Washington will be the laws and courts of Washington State. The UW is a state agency.
As a public university, we also give notice that any confidentiality provisions are limited by the Washington State Public Records Act. If federal funding supported the development of the technology, then there will be additional requirements from the Bayh-Dole Act.
The University has a different mission and role in technology development than a company. The licensing process is greatly facilitated, including reducing legal time and associated expenses, by familiarizing yourself with the terms that are important to the university.
The mission of the University is research and education. University technology licensing is an important channel for producing impact from university research, but it must complement and support the research and educational missions. Technology licenses cannot introduce risks that would potentially consume time and resources beyond the benefits of licensing.
Universities want their licensees to demonstrate that they are actively developing the licensed innovation to move it to the market or to patients. The goal is to deliver impact from university research, and these milestones enable the university to require that licensees are doing that.
University technologies are licensed at a very early stage. If a licensee is tying up rights in a technology, the university needs to be able to verify that the technology is actually being developed. The diligence milestones are based on the licensee’s plan for development. If the licensee stops developing this technology, then the university has an opportunity to seek another partner to commercialize this technology.
Understandably, not every original licensee of a university technology proceeds to develop it into a marketable product. Large companies sometimes decide a licensed innovation is no longer a priority, and start-ups may pivot in response to market feedback or may be daunted by the hurdles of starting and growing a business. The UW usually works with struggling licensees but also considers relicensing the innovation to another company prepared to invest resources and continue development.
If federal funding supported the development of a technology, then there will be additional requirements from the Bayh-Dole Act such as having language in the license to ensure that the licensee is in fact developing the technology.
For unlicensed technologies, the university oversees the filing and prosecution of any patent applications. Once a technology is licensed, CoMotion seeks guidance from its licensees prior to incurring expenses in patent prosecution, and licensees have the opportunity to opt out of participating where they don’t see value. The licensee has the final say in how patent prosecution is managed unless the desired action would compromise the value of the intellectual property. Because the patents are protecting the intellectual property of the University, it is critical that UW ensure applications are not dropped, or prosecuted without sufficient diligence. UW also has reporting obligations where the invention arises from federally funded research.
The UW oversees the protection of its intellectual property, but does so in consultation with its licensees. For startups in particular this provides several benefits.
- Economies of Scale: UW licensees benefit from UW’s billing arrangement with its law firms, and the responsiveness of these law firms given the large quantity of work we do with them. Law firms tend to charge venture capital financed companies more than they charge state universities that have negotiated fixed billing rates.
- Expert oversight: CoMotion’s patent portfolio managers (who are members of the patent bar) and law firm trained paralegals save our licensees significant billable time through their own contributions as well as through expert management of high-quality patent prosecution through law firms. Start-up companies in particular rarely have claim construction expertise or available staff time to actively review billing and quality.
- Leveraging continuity: Since UW remains the client, our licensee benefits from continuity with the patent counsel who in many cases has reviewed prior art, drafted the application after consultation with the inventive team over claim construction, and who were originally chosen because of their deep subject matter expertise and ability to work with university researchers. There is often a considerable cost for new counsel to familiarize themselves with a project; they must study the prior art, interview the inventors, and reconstruct strategy.
The standard language for patent prosecution is as follows: ‘“University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the prosecution of the Licensed Patents, including delivering to Company written and electronic communications from all patent offices and foreign counsel, and University shall consult with the Company on the prosecution of the Licensed Patents. Company’s suggestions and requests regarding patent prosecution will be reasonably considered and included unless detrimental to University’s intellectual property rights.”’
As universities, our core activity is research and education. We do not have the controls, revenues, or insurance needed in order to provide more than very limited representations. We make no warranties, and we require indemnification.
The intellectual property developed at the UW stems from research and educational programs, not from a product development effort. While technology licensing is an important channel for producing impact from research, it cannot compromise the primary mission of research and education.
The University does not have control over what the final product would be. Due to the early stage of the research and the company’s initial business plan, at the time of licensing we may not even have a full description of what the ultimate product is conceived to be. In almost all cases, that vision changes over time as the company proceeds through development and manufacturing.
Thus, the University cannot warrant that the technology licensed is fit for any given purpose, or that the company will not have to acquire additional intellectual property rights to be free from infringement claims. The University makes this lack of representations and warranties explicit, and also requires the company to release the University from any claims.
The University makes this lack of representations and warranties explicit in the following standard disclaimer:
“University disclaims and excludes all warranties, express and implied, concerning licensed intellectual property and each licensed product, including, without limitation, warranties of non-infringement and the implied warranties of merchantability and fitness for a particular purpose. The University expressly disclaims any warranties and makes no representations that any licensed patent(s) will be approved or will issue; concerning the validity or scope of any licensed patent; or that the manufacture, use, sale, lease or other disposition of a Licensed Product will not infringe a third party’s patent or violate a third party’s intellectual property rights.”
“For itself and its employees, Company hereby releases University and its regents, employees, and agents forever from any suits, actions, claims, liabilities, demands, damages, losses, or expenses (including reasonable attorneys’ and investigative expenses) relating to or arising out of (i) the manufacture, use, lease, sale, or other disposition of a Licensed Product; or (ii) the assigning or sublicensing of Company’s rights under this Agreement.”
The standard indemnification language is as follows:
“Throughout the term of this Agreement and thereafter, Company shall indemnify, defend, and hold University and its regents, employees, and agents harmless from all suits, actions, claims, liabilities, demands, damages, losses, or expenses (including reasonable attorneys’ and investigative expenses), relating to or arising out of the manufacture, use, lease, sale, or other disposition of a Licensed Product, including, without limitation, personal injury, property damage, breach of contract and warranty and products-liability claims relating to a Licensed Product and claims brought by a Sublicensee.”
All universities retain the right to continue to make and use any technology for their own internal, non-commercial research and educational purposes to ensure licensing doesn’t interfere with the core mission of the university.
Universities are open collaborative research communities. Although we license the rights for commercial development of a technology, we have to preserve the technology’s role in ongoing research and education. This is critical to maintaining and advancing the University’s mission and to encouraging the development of inventions that serve the public good.
This reservation of rights is expressed in the following standard language:
University reserves all rights not expressly granted to Company under this Agreement. University retains for itself and other not-for-profit organizations an irrevocable, nonexclusive license to make, have made, and use products, processes, and other subject matter covered by the Licensed Patents in the Field of Use for academic research, medical, instructional, or any other academic purpose.
Expressly included within this University reservation of rights is the right (i) to use the Licensed Patents in sponsored research or collaborative research with any Third Party but only to the extent no such Third Party is granted any rights to the Licensed Patents or to commercialize Licensed Products, (ii) to grant material transfer agreements to materials whose composition of matter is covered by the Licensed Patents where the use of such materials is restricted to academic research, medical, instructional, or any other academic purpose, and (iii) to publish any information included in the Licensed Patents or any other information that may result from University’s research.
The University licenses, rather than sells, intellectual property created at the UW. It does not assign ownership in IP to the company. Standard language will include a license to intellectual property created at the UW with rights and obligations included in the license to advance the interests of both parties, including the UW’s interest in ensuring the technology reaches customers or patients.
Consistent with the practices at peer institutions, the University licenses, rather than sells, intellectual property created at the UW. It does not assign ownership in IP to the company.
The UW wants to ensure that the company fulfills its obligations under the license agreement. If the company stops developing and “shelves” the licensed technology, the University wants the technology returned so that it can re-license it and ensure maximal public impact and benefit. If the company does not fulfill its contractual obligations under the license agreement, the University, as the owner of the intellectual property, has far greater ability to enforce these obligations than if the intellectual property had been assigned.
Standard language will include a license to intellectual property created at the UW — not assignment of the intellectual property — with rights and obligations included in the license to ensure the interests of both parties are advanced.
The university reports to its stakeholders that a license has been signed and names the technology and the licensee. We do not provide more specific details in our standard reports, but by law, we may need to release portions of the license agreement if a request is made under the Public Records Act.
As a state agency, the UW’s commitment to confidentiality is qualified by the Public Records Act, as described in the following standard language:
University is an agency of the state of Washington and is subject to the Washington Public Records Act, RCW 42.56 et seq., (“Act”), and no obligation assumed by University under this Agreement shall be deemed to be inconsistent with University’s obligations as defined under the Act and as interpreted by University in its sole discretion. If University receives a request for public records under the Act for documents containing Company Confidential Information, and if University concludes that the documents are not otherwise exempt from public disclosure, University will provide Company notice of the request before releasing such documents. Such notice will be provided in a timely manner to afford Company sufficient time to review such documents and/or seek a protective order, at Company’s expense utilizing the procedures described in RCW 42.56.540. University shall have no obligation to protect Company Confidential Information from disclosure in response to a request for public records.
Public records requests for information that is proprietary to our licensees is rare, and for the few occasions it does happen, the university has processes in place to ensure that information released under a request and does not compromise the licensee’s competitiveness. We want to ensure your information is safeguarded to ensure that the intellectual property licensed from UW has the greatest impact on the public by leading to successful products, treatments, and services.
Yes, all companies licensing from the UW are required to have Comprehensive General Liability insurance, product liability insurance, and as applicable, clinical trial insurance.
To ensure the company can meet its obligations to indemnify the University, the company will be required to hold industry-accepted levels of insurance for the term of the agreement, or for as long as the licensed innovation is in use, whichever is longer. For clinical trial insurance, the term is three years beyond the end of the clinical trial.
FAQ - Copyrights and Trademarks
Copyright rights exist by the creation of “original works of authorship that are fixed in a tangible medium of expression.” To be an “original” work, the work must have a minimum level of creativity (e.g., facts and data are not typically protectable through copyright law). Copyrightable subject matter may include: digital media, software, certain databases, literary works, images/videos, music, etc. Copyright law protects the expression of the work, not the idea (ideas are covered by patent law). A copyright owner has the exclusive right to copy, reproduce, distribute, display, perform, and create derivative works, and the right to license some or all of those rights to others.
Copyright rights exist at the moment the work is created and fixed in a tangible form (even if on your hard drive). Thus, your work does not need to be officially registered with the US Copyright Office to enjoy copyright protection. An official registration provides certain legal presumptions and greater remedies if a third party infringes your work. The UW Center for Commercialization may file a copyright registration application in your work, depending on the circumstances and the type of work. Your Innovation Manager and the Copyright/Trademark Manager can discuss this option with you.
As a general rule, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. For works “made for hire,” e.g. by an employee for her employer, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. Therefore, copyright rights may last many years beyond the term of patent rights if your innovation includes available copyright and patent protection. For more detailed information on copyrights, see http://www.copyright.gov/help/faq.
A trademark is a distinctive combination of words, phrases, symbols, designs, numerals, logos, drawings, or even sounds or smells that identify and distinguish the source of your goods or services from that of another party, such as a competitor. This can include the “look and feel” of a good or service (this is called trade dress). A trademark cannot be a generic name and typically cannot be merely a descriptive name/phrase. A trademark does not protect an idea or the product/service itself. A trademark is not a trade name, although they can comprise the same text (e.g., Coca-Cola Company sells Coca-Cola soft drinks). A carefully selected trademark can be a very valuable asset. It can generate goodwill and instill confidence in your customers as to the quality and source of your products/services, while reducing competition and preventing copy-cats.
- Trade Marks distinguish products or goods.
- Service Marks distinguish a service. A trademark could be a Trade Mark and a Service Mark concurrently.
- Collective Marks distinguish goods or services produced or provided by members of an association or cooperative. The goods or services usually need to meet the specifications defined by the members of the group (collective marks are less common).
- Certification Marks distinguish goods or services that have been certified by a certifying authority as complying with a set of standards and whose certification is not confined to members of a group, such as UL or LEED certifications (certification marks are less common).
Once it is determined that trademark protection is appropriate for your goods and/or services, selecting an available and protectable trademark are important steps. A “clearance search” that looks for existing marks that may conflict with your proposed mark will help avoid possible infringement of another’s trademark and avoid having to change your trademark at a later point, which may adversely affect your business plan. Trademark rights exist when you are “using the trademark in commerce.” Those rights are typically protected through reliance on “common law” rights or “federal registration” rights. Common law rights exist automatically and provide limited geographic protection. Federal rights require the expense of filing for registration and, in the US, provide nationwide protection and presumptions/remedies upon infringement. Foreign trademark rights may also be appropriate depending upon various factors. Your Innovation Manager and the Copyright/Trademark Manager can discuss trademarks and clearance searches with you in more detail.
Whether and when to apply for federal trademark registration is typically based upon: the nature of your product/service, your potential customer base, whether you are using the mark in commerce or intend to shortly use the mark in commerce, your business model/plan, and the timing of spinning-off campus (if you are a startup company). Having a federally registered trademark provides the following advantages:
- Constructive notice to the public of ownership of the mark.
- A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
- The ability to bring an action/suit concerning the mark in federal court.
- The use of the US registration as a basis to obtain registration in foreign countries.
- The ability to file the US registration with the US Customs Service to prevent importation of infringing foreign goods.
To alert the public to your claim to common law rights in a mark, you may (but are not required to) use the “TM” (trade mark) or “SM” (service mark) designation, regardless of whether you have filed an application for federal trademark protection. You may use the federal registration symbol “®” only after the USPTO issues official registration of your mark upon successful prosecution of your trademark application. Asserting trademark rights will not normally affect the ability of others to factually discuss your product/service or research in publications and media. A trademark owner typically can only prevent others from “using the trademark” as a trademark in commerce. Contact your Innovation Manager and the Copyright/Trademark Manager with questions.
FAQ - Patents
A patent is a property right granted by the government for a certain period of time. A patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. Note that a patent does not give the patent holder the right to make, use, sell, offer to sell, or import the invention; it only provides the right to exclude others from doing so. Sometimes the patent holder must license other patents in order to be able make or use the invention. In the U.S., the term of a patent is 20 years from the date on which the patent application was filed or, in certain cases, from the date an earlier related application was filed. Patents are issued by the U.S. Patent and Trademark Office (USPTO) and by similar government offices in foreign countries, and apply only in the territory in which the patent was granted.
Processes, machines, manufactures, and compositions of matter are patentable subject matter, as are any new and useful improvements thereof. Laws of nature, physical phenomena, and abstract ideas are not patentable.
Computer programs and data structures are patentable, to the extent that they are recorded on a computer-readable medium. A patent may also be obtained for other aspects of software, including a process that the software performs, a device on which the software is installed, or a new, non-obvious use for previously existing software.
Within the above categories of patentable subject matter (processes, machines, manufactures, and compositions of matter), an invention is patentable if it is new (it provides the public with something it did not previously possess); useful (it has a useful purpose and is operative to perform its intended purpose); and non-obvious (it would not have been obvious to a person “of ordinary skill in the art”).
Patenting an invention resulting from UW research has many benefits. A patent secures the UW’s ability to market the invention to corporate or non-profit entities that may further invest in the development, manufacture, and distribution of the invention. A patent may encourage commercialization of an invention by providing the licensee with an exclusive period (e.g., 20 years from the date of filing) of ownership rights in the invention. In addition, a patent can benefit researchers by (1) demonstrating that their work is innovative; (2) returning revenue to researchers and their departments, schools, and colleges; (3) providing an asset around which researchers may build a company; and (4) providing the satisfaction of contributing new information to society, which may in turn lead to new or improved goods and services.
The decision to file a patent application is made by UW CoMotion, in consultation with the inventor(s). The determination is made based on the scope of the invention, its likely patentability, and its commercial potential. Only innovations that meet the criteria for patentability and marketability are considered for patent protection. UW CoMotion does not pursue patent protection for all innovations disclosed to the office. Even if an invention is patentable, obtaining a patent may not be the most effective intellectual property strategy for a particular invention. For example, a patent may not be pursued if other forms of intellectual property (e.g., copyright) are more suitable for protection, if it would be easy for someone to design around the patent, if the patent might be unenforceable, or if further development of the innovation would lead to stronger patent protection.
The patenting process at UW begins when you report your innovation or discovery. To report your innovation, fill out a Record of Invention (ROI) form on the UW CoMotion website. (See Reporting an Innovation FAQs for additional information on the ROI process.) Once we receive your ROI, an innovation manager will be assigned to your case and will meet with you to learn more about your innovation. Together with a patent agent, your technology manager will evaluate both the commercial potential and likely patentability of your innovation. If it is determined that a patent should be part of the intellectual property strategy for your innovation, UW CoMotion will work with you to file a patent application. A patent application may be as simple as filing a copy of your recent manuscript, or it may involve meeting with a UW CoMotion patent agent and outside counsel to discuss your innovation in preparation for drafting a full patent application.
As a condition of employment, all UW employees agree to assign to the UW all inventions and discoveries in which the UW has an interest. Students who are also employees, students working on a sponsored project, and students who have used University resources also agree to assign all such inventions and discoveries to the UW. (See the UW Intellectual Property Policy for more information.) Upon disclosing an innovation to the UW CoMotion (by submitting a Record of Invention (ROI) form), the inventors assign their rights in the innovation to the UW. Each inventor is also required to sign an assignment document for submission with the patent application.
If you create an innovation with someone from another institution or company, the UW CoMotion will work with that other institution or company to determine who owns the invention and any resulting intellectual property. If the invention is jointly owned with the other institution or company, the joint owners may choose to combine their ownership rights through an inter-institutional agreement and license their rights together. Alternatively, at least in the U.S., joint owners may separately pursue licensing and commercialization opportunities. The UW CoMotion and the other institution or company will evaluate these strategies and pursue an appropriate option for the particular innovation.
When a patent application is filed with the USPTO, it is routed to a patent examiner with an appropriate scientific background. It may be one or more years before the examiner begins review of the application. Once the examiner begins review, he or she evaluates the application for conformance with the patent laws and regulations, in addition to determining whether the application is distinct from the “prior art” (i.e., earlier patents and publications). The examiner may, and often does, reject most or all of the patent claims in the first review. A CoMotion patent agent or outside counsel responds to the examiner’s comments, often after obtaining input from the inventors. In general, several rounds of patent examiner review and UW CoMotion response are required before a patent is granted or finally rejected.
It can take at least two to six years from the date of application for a patent to issue.
A provisional patent application is a low-cost, informal patent application that is not examined by the USPTO. It is a placeholder that establishes an earlier filing date for a later filed non-provisional (i.e., full, formal) patent application. Such a non-provisional application must be filed within one year of the filing date of the provisional application. Your manuscript, poster, presentation slides, and other materials can form the basis for a provisional application. A provisional application is often filed before a publication, presentation, or discussions with a potential commercial partner, to protect the materials prior to disclosure of the innovation. Provisional applications allow researchers more time to develop an innovation before a full patent application is filed, and allow UW CoMotion additional time to evaluate the patentability of and market for the innovation. If a corresponding non-provisional application is not filed within one year, the provisional application simply becomes abandoned. Provisional applications are not published by the USPTO unless a corresponding non-provisional application is filed.
Public disclosure of an innovation is any public written or oral communication that describes the innovation in detail. Publications that are “enabling” (i.e., would allow one of ordinary skill in the art to arrive at the same invention without undue experimentation) can disqualify one from receiving a patent. The term “publication” is broadly interpreted to include journal articles, posters, slides, talks, conference proceedings, abstracts on the Web, theses and dissertations that are available to the public, and discussions with corporate researchers and company personnel. Research group meetings that are not open to the public, non-public communications with a grant agency, and confidential discussions (including those with the UW CoMotion) are not public disclosures.
In the U.S., there is a one-year grace period for filing a patent application. That is, a patent application can be filed up to one year after an enabling public disclosure; after that, patent protection is unavailable. In most foreign countries, however, there is no grace period; once an innovation is publicly disclosed, patent protection is lost. Therefore, before publicly disclosing any innovation or discovery, researchers should first discuss intellectual property issues with the UW CoMotion.
Only individuals who made an inventive contribution to the subject matter claimed in the patent application are considered inventors. Individuals who have made other contributions, such as gathering essential data or constructing a practical embodiment of the invention, are not inventors unless they also made an inventive contribution. Similarly, a project supervisor is not entitled to inventor status simply because of his or her supervisory role; an inventive contribution is the singular criterion. The claims of the patent application legally determine who is and who is not an inventor. The patent claims should be used as a guideline for determining inventorship. For this reason, inventorship can change during prosecution of the patent application, as the claims are amended. Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent.
Authorship on a scientific publication is not the same as inventorship. Authorship and inventorship have different criteria; simply being an author on a publication does not necessarily qualify an individual as an inventor. An inventor must have made an inventive contribution to the subject matter claimed in the patent application.
The order of the inventors listed on a patent has no legal significance, nor does it have any relationship to the individuals’ contribution to the invention.
According to the UW Intellectual Property Policy, employees and students are required to do everything reasonably required to assist the UW in obtaining, protecting, and maintaining patent or other proprietary rights. This generally includes being available for a disclosure meeting to discuss your invention, reviewing a draft of the patent application, and responding to questions as they arise during patent drafting and prosecution.
Obtaining and managing patent rights for an invention is very expensive. For example, a U.S. patent can cost a total of $30,000 to $50,000 over its 20 year life. When a commercial partner is identified early (e.g., before a patent application is filed), that commercial partner often pays the patenting costs. However, even if a commercial partner has not been identified, the UW CoMotion may incur the patenting costs if there is a reasonable likelihood that those costs can be recovered from a commercial partner later.
Provisional patent filings are supported whenever there is a reasonable belief that there is an intellectual property position and either a discussion with a licensee/investor or a public disclosure is imminent. While filing a provisional patent application in the US is relatively inexpensive in dollars, these filings utilize significant resources from the inventors and from CoMotion’s internal staff and are less valuable if filed before sufficient support for the invention is included. Please reach out to CoMotion for advice on the best timing to protect an invention.
Within one year of filing a provisional application, a non-provisional patent filing must be made to continue protection. CoMotion aims to support these patent expenses when there is an engaged inventor team, an ongoing strong intellectual property position, and evidence of significant market traction such that a license is likely within four years of filing a provisional patent application. Typical support includes normal expenses associated with a US patent through to issuance of the first patent in a family and the first US maintenance fee for that patent due 3.5 years after issuance. Cost-effective management of patent activities is also provided, which can be a significant benefit to the ultimate licensee as patent filing legal costs can escalate quickly.
Alternative sources of funding (such as from another university source or a prospective license) will be needed for additional costs such as maintenance fees due 7.5 and 11.5 years after issuance, additional filings in the same family, foreign filing costs, or new filings where the inventor(s) already have a large unlicensed portfolio.
See this page on Navigating IP Policy for a list of contacts at UW CoMotion who can answer your patent questions.
For more information on patents, visit the U.S. Patent and Trademark Office website at www.uspto.gov.
FAQ - UW Patent Assignment Agreement
The Faculty Senate’s Special Committee on Intellectual Property and Commercialization (SCIPC) and the President’s Intellectual Property Management Advisory Committee (IPMAC) President’s Intellectual Property Management Advisory Committee (IPMAC) have recommended improvements to the process of requesting and receiving prior approval for outside work for compensation. The resulting recommendations were accepted and incorporated into the Form 1460 – Outside Work for Compensation Form 1460 – Outside Work for Compensation by the Office of Research, which has the responsibility and authority for administering the Outside Work process on behalf of the Provost.
The Committees also recommended a separate assignment of intellectual property, limiting the scope of the present assignment. Only when the outside work is likely to involve inventive participation will the faculty member need a completed Patent Assignment Agreement. This agreement balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement. This present assignment of patentable inventions is signed electronically via DocuSign.
For each faculty member, a single completed Patent Assignment Agreement covers all inventive participation in outside work. This agreement only needs to be executed once.
The Form 1460 itself is still available for downloading and completion as a Word document, but it has been reformatted and the order and wording of some of the questions have been changed. No significant new information is being requested, but it is hoped that the reformatting and the re-wording and re-ordering of some of the questions will make the Form easier to complete and review. The assignment of intellectual property has been removed from Form 1460. Instead, Form 1460 includes a few questions that assess whether or not a present assignment is appropriate for this engagement.
The approval process (routing to your Department Chair and Dean’s Office, then the Office of Research) has not changed. Questions and comments about the Outside Work Policy (Executive Order 57) or the Form 1460 may be addressed to email@example.com.
Only when the outside work is likely to involve inventive participation (as evidenced by responses to the intellectual property questions on the Form 1460) will the faculty member need a completed Patent Assignment Agreement . This agreement limits the scope of the present assignment and balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement.
For each faculty member, a single completed Patent Assignment Agreement covers all inventive participation in outside work. This agreement only needs to be executed once, electronically, via DocuSign.
If initially submitted as part of a request for outside work, then this Patent Assignment Agreement will be contingent on the approval of that request. This agreement will remain in effect only if the associated request for outside work is approved.
Questions and comments about the Patent Assignment Agreement or electronic signature using DocuSign may be addressed to firstname.lastname@example.org.
FAQ - Record Keeping
Until March 16, 2013, the U.S. has a “first to invent” patent system. That is, if two or more patent applications are filed for the same invention, any patent on that invention is awarded to the applicant who can show the earliest date of invention. Proof of invention must be in the form of documentary evidence, and the best form of this evidence is a laboratory notebook. The purpose of a lab notebook is to document how and when inventions occur, and to show what steps are taken and by whom. A lack of documentation can result in the loss of patent rights if the date of an invention is challenged, or if the inclusion or exclusion of a particular inventor is disputed. For these reasons, the UW CoMotion advises researchers to develop good record keeping practices.
A lab notebook should include a description of the research problem and the solutions or hypotheses under consideration. It is particularly important to record the conception of any idea that may be new, such as an important scientific breakthrough. Conception occurs when an inventor has a complete idea of a solution to a problem. The concept should be fully described in the lab notebook, in sufficient detail such that someone of ordinary skill in your field could understand the concept. Lab notebooks should also contain experimental results and data that support your solutions or hypotheses. Each entry in the lab notebook should be complete, dated, and signed by an investigator and a witness. In addition, the title of the research project, the name of each investigator, and information about relevant funding sources should be documented on the first page of the lab notebook. For more information, watch How to Keep a Lab Notebook, a 2-minute tutorial featuring Jesse Kindra, CoMotion’s Director of IP Management.