Academic technology transfer involves the transfer of a wide variety of outputs from research projects to industry for commercial development. In 1980, the passage of the Bayh-Dole Act encouraged universities to take a more active role in technology transfer. The provisions of the Act mandate that universities report all inventions arising from federally supported research and agree to diligently pursue intellectual property protection and commercialization for new technologies that are commercially promising.

The technology transfer process varies depending on the nature of the innovation and the goals of the innovator. Below is a general work flow:

1. The technology transfer process begins when a researcher contacts UW TechTransfer and asks for a consultation with our licensing professionals or discloses an innovation (invention, research material, software, digital media) to our office.
2. We set up a meeting with the researcher to discuss the innovation in the context of their research program’s goals.  UW TechTransfer helps assess the innovation’s suitability for transfer outside UW which may include an assessment of commercial viability and patentability.
3. With the participation of the research team, UW TechTransfer may use a variety of intellectual property management tools (patent, copyright, and trademark) to support a technology transfer plan that aligns with the researcher’s goals.
4. The technology transfer process may result in licensing the technology and associated intellectual property rights to other researchers, end-users, established companies, or startup companies spun out of the UW for further development.  Our licenses provide for attribution to the UW and the researcher, diligence, reservation of the UW’s publication and research rights, and a transfer of commercial risk to industry partners.
5. A licensee may receive a license to simply use the innovation or the license may be a contract for further development and commercialization of the innovation resulting in the creation of new goods and services for the public and licensing revenue back to UW.
6. Some innovations are market-ready and can be licensed to end-users.  UW TechTransfer expedites the commercialization by offering multiple channels for end-user licenses.

The tech transfer process can take from six months to several years. Many factors affect the process, including development stage of the technology, time for patent prosecution, the availability of suitable licensees, demand for the potential product or service, and the health of the local and regional economy.

As a UW researcher, you can facilitate the technology transfer process by:

• Reporting your technology to UW TechTransfer as soon as you think you have an invention.
• Indicating any and all companies and contacts you believe may be interested in licensing the invention.
• Promptly responding to UW TechTransfer and patent counsel requests.
• Keeping UW TechTransfer informed of upcoming presentations, publications and interactions with companies that relate to your invention.
• Contacting UW TechTransfer with any questions or concerns.

A patent for an invention is the grant of a property right by the government, which allows the patent holder to exclude others from working the invention. Patents are issued by the U.S. Patent and Trademark Office (USPTO) and by similar government offices in foreign countries.

In legal language, what is granted is “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 right is not granted to make, use, sell, offer to sell, or import the invention--only the right to exclude others from doing so.  Sometimes the patent holder must license other patents in order to be able practice their invention.

An invention is considered by the USPTO to be patentable if it is new (it provides the public with something it did not previously possess); useful (it must have the effect claimed, and that effect must be useful to society, at least in principle); and non-obvious (it must be something that another person “of ordinary skill in the art” would not have been able to easily deduce; this can be subjective and is sometimes difficult to prove).

Sometimes an invention is patentable, but obtaining a patent is not the most effective intellectual property strategy for a particular invention. The market potential and commercialization strategy must also be considered in order to determine if it is appropriate to apply for a patent.

Patenting a UW-based innovation has many benefits. One important benefit is that a patent secures the UW’s ability to market the idea to corporate or non-profit entities that further invest in its development, manufacture, and distribution. The period of exclusivity provided by the patent is an incentive to commercial development since it allows for a return on the investment a licensee makes in developing the technology. Transfer of the technology into the marketplace benefits the public by providing new goods and services.

Patenting benefits researchers by (1) demonstrating the uniqueness and value of their innovative work; (2) returning revenue to researchers and their departments, colleges, and schools; (3) helping researchers start companies around their innovations; and (4) providing the satisfaction of knowing they have benefited society by contributing new information that may lead to new or improved goods and services.

The decision to file a patent application is made by UW TechTransfer, in consultation with the inventor(s). The determination is based on the scope of the invention, its patentability, and its commercial merit, and whether a patent is the appropriate intellectual property protection strategy given the commercial potential.

The patenting process at the UW begins with reporting your unique innovation or discovery. Once you have determined that you have a unique innovation or discovery as a result of your research, the next step on the road to obtaining a patent is to read and fill out a Record of Invention (ROI) form (see Reporting an Innovation FAQs ). Once UW TechTransfer receives your ROI information, a technology manager assigned to your case will meet with you to learn more about your innovation.

The technology manager will evaluate your innovation for both the commercial potential and patentability, and whether seeking a patent is the appropriate intellectual property strategy.

If the technology manager determines that the invention is patentable and has market potential, you and the manager will work together with a patent attorney to draft a patent application.

When a patent application is filed with the USPTO, it is routed to a patent examiner with the appropriate scientific background for review. The examiner reviews the application in light of patent law and “prior art” (previous work in the field) to determine whether the claims made in the patent are allowable. The examiner may, and often does, reject most or all of the claims in the first review. The patent attorney, working with the researcher, responds to the examiner’s comments. Often several rounds of patent examiner review and attorney response are required, extending over two years or more, before a patent is allowed to issue or is finally rejected.

From the date a patent application is filed to the date a patent is issued can take two to six years or more.

UW TechTransfer does not pursue patent protection for all innovations disclosed to the office. Only innovations that meet the criteria for patentability and are marketability are considered for patent protection. Other factors that argue against pursuing a patent include: (1) it would be easy for someone to work around the patent; (2) a patent would be unenforceable; or (3) more significant patentable material will result from developing the invention further.

Public disclosure of an innovation can be any public written or oral discourse that describes the innovation in detail. Publications that are “enabling” (allow one with ordinary skill in the art to arrive at the same invention without due experimentation) can disqualify one from receiving a patent.

Legally, “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, communications with one’s granting agency that are not made public, and confidential discussions, including disclosing your innovation to UW TechTransfer, are not deemed to be public disclosure.

In the U.S., there is a one-year grace period after an enabling public disclosure during which an innovation is still eligible for patent protection. In most foreign countries, however, there is no grace period; if the innovation was made publicly known before a patent was applied for, the patent protection is lost. Thus, before publicly disclosing any innovation or discovery, researchers should first discuss intellectual property issues with UW TechTransfer.

As a condition of employment at the University of Washington, all employees agree to assign inventions made in the normal course of their work to the University. Inventors execute an Invention Assignment to the University upon disclosing their innovation to UW TechTransfer. When an invention is commercialized, the UW then arranges for royalty distributions to the inventor(s).

UW TechTransfer will work with the other institution to determine ownership of the invention and resulting intellectual property, including any materials that were developed.  The co-owners may choose to amalgamate their rights through an inter-institutional agreement and license co-owned rights together, or in the US, co-owners also have the ability to separately pursue commercialization opportunities.  The co-owners will evaluate these options, and pursue the one that makes sense for each individual technology.

Anyone who intellectually contributed to the conception of an inventive idea and/or the reduction to practice of the invention must be included as an inventor. A person who merely carried out the inventor's instructions during the reduction to practice stage, or acted only as a pair of hands does not qualify as an inventor. Similarly, the inventor's supervisor (e.g., lab director) does not become a co-inventor merely because he or she is responsible for the lab. Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent.

UW TechTransfer does not make this determination. It is the patent attorney who prepares the application who assists with determining inventorship. It is important to clarify inventorship before a patent application is filed.

A Memorandum of Understanding for Royalty Distribution is a legal document in which multiple inventors on a patent agree among themselves to a particular distribution of royalty revenue obtained by licensing intellectual property.

Obtaining and managing patent rights for an invention is very expensive; a U.S. patent can cost $30,000 to $50,000 over its 20 year life. Thus, universities are reluctant to pursue patenting unless cost recovery can be reasonably assured from a licensee. In almost all cases, the UW goes ahead with patenting when a commercial partner has been identified to pay the patenting costs. When there is no commercial partner, UW may choose to incur the costs with the goal of recouping them from licensees as part of a commercialization agreement.

Under UW Intellectual Property Policy, UW inventors are required to assign the rights to any patents on inventions made using UW resources to the University. In exchange, the University manages and licenses the patent on the inventor’s behalf, and pays inventors a share of the royalties earned from commercialization of the patented technology.

Researchers can expect to see revenue from the licensing of a patented technology when a licensee (such as an established company) commercializes the patented technology and returns revenue to the UW in the form of licensing fees paid and royalties earned from the sale of the technology. This can be a long process, taking from two to 10 years or more. Distributions to all parties are made in December following the close of the fiscal year in which UW TechTransfer receives payment from a licensee. See the UW Distribution Policy for more details.

The amount of revenue received from a patented and commercialized technology depends upon the current market for the technology, the conditions set forth in the licensing agreement, the type of technology being commercialized, and many other factors. The amount of revenue received by each party (the inventor(s), the college, school, and department, UW research funds, and so on) is determined by the UW Distribution Policy.

A provisional patent application was designed by the USPTO to provide a lower-cost first patent filing.  It provides the means to establish an early effective filing date in a later-filed non-provisional patent application. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Information disclosed in the provisional application would be evaluated as though filed on the earlier provisional application filing date.  It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.

Thus provisional patents are often used as a place holder to establish first filing date and/or to allow more time to evaluate a new technology for marketability. A provisional application can be a useful tool for universities because once filed, any subsequent public description of the invention does not negate the newness of an invention established at the provisional filing date.   It can also be used to increase patent terms by one year, however it also delays the start of prosecution of the patent by a year.  If the corresponding non-provisional application is not filed within one year of filing a provisional patent it automatically becomes abandoned.

Software by itself is not patentable. However, there are many instances where patents may be obtained for various aspects of the software’s context, which can have much the same result as patenting the software:

• The process the software performs or embodies
• A device the software emulates or helps create
• A device of which the software is an integral part (such as an innovative media product)
• A new, non-obvious use for previously existing software

Who do I contact to discuss intellectual property or patenting questions or concerns? Call or email UW TechTransfer and we will connect you with the appropriate person with whom to discuss your IP questions.

For more information on patenting or trademarks, visit the U.S. Patent and Trademark Office website at www.uspto.gov. For more information on copyright, visit the U.S. Copyright Office Website: http://www.copyright.gov.

Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship that are fixed in a tangible medium of expression. Digital media, software, databases, content, and images are all eligible for copyright protection.

Although your software or digital innovation is under copyright protection the moment it is created and fixed in a tangible form, UW TechTransfer may suggest that copyright be registered for your work. Your technology manager will discuss this option with you.

Taking the additional step of registering a copyright with the Copyright Office may be useful because:

• Registration allows the copyright owner to sue for infringement and receive the statutory protection and compensation for damages and legal fees under the Copyright Act.
• Registration notifies the world of the copyright and helps ensure author attribution to the copyrighted work.
• Registration helps to define the duration of the copyright.

A trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party (such as a manufacturer or seller) from those of others.” In short, a trademark is a brand name.

Trademarks can help you establish your product in the eyes of a consumer.  Trademarks help consumers know and recognize your product or service.  Trademarks can be registered at the state and federal level.

Trademarks can be registered at the state and federal level.  Thus it is possible to have parallel protection for a trademark at the state and federal level.  State laws generally do not require registration, but have very limited protection.  Federal law required registration, but grants trademark protection on a national level.

Registering a federal trademark is a good idea as it establishes rights in a mark based on legitimate use of a mark.  Owning a federal trademark registration on the Principal Register, the list on which distinctive trademarks and service marks approved for federal regulation are placed,  provides several advantages:

• Constructive notice to the public of the registrant’s claim of ownership of the mark.
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
• The ability to being an action concerning the mark in federal court.
• The use of the U.S. registration as a basis to obtain registration in foreign countries.
• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.  However you may use the federal registration symbol “®” only after the USPTO actually registers a mark and not while an application is pending.

Material Transfer Agreements (MTAs) are contracts that cover the transfer of specific research materials into, or out of, the UW. Typically UW researchers exchange research materials with other institutions or corporate researchers.

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 UW TechTransfer Invention Licensing 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.  UW TechTransfer and OSP are the only units of the University authorized to review and sign MTAs.

Contact a representative of the Agreements Group within UW TechTransfer Invention Licensing for help transferring research materials. Also see Material Transfer 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 and would even violate federal regulations.

It is important to contact UW TechTransfer before disclosing any confidential proprietary information to another party. For confidentiality agreements CDA/NDAs contact the case manager in UW TechTransfer who is working with you or email UW TechTransfer to talk to a case manager.

For CDA/NDAs that are used for Transferring Materials, see the Material Transfer Agreements section.

The U.S. has a “first to invent” patent system, meaning that if two or more patent applications are filed on the same invention, the patent is awarded to the applicant who can show the earliest date of invention. Proof must be in the form of documentary evidence, and the best form of this evidence is the laboratory notebook. The purpose of the lab notebook is to document how and when inventions occurred and to show what steps were taken and by whom. A lack of documentation can result in the loss of a patent if the date of invention or inventorship is challenged. UW TechTransfer advises researchers to develop good record keeping practices.

The lab notebook should include a description of the research problem and the research approach, as well as any initial ideas or approaches being considered. It is particularly important to record the conception of an idea that may be new or may be 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 sufficient detail that someone skilled in the field could understand it.

Notebooks should also contain experimental results and data. The names of all investigators involved, the title of the project, and information about funding should be on the first page of the notebook. Ensure that each entry is complete, signed, dated, and witnessed. For details, see Best Practices for Laboratory Notebooks.