OC releases standard patenting procedures and expectations

The WSU Office of Commercialization (OC) has engaged in discussions with the leadership of the colleges over the past year to develop an invention management process that encourages more faculty and researcher participation that promotes industrial engagement. OC has begun implementing this process in the past few months and is now sharing this process with the inventors when a patent application is filed. This article provides an outline of that standard process and the associated expectations.

Initial steps when OC receives an invention disclosure:

• OC will file a placeholder Provisional Patent Application (PPA) in an effort to preserve rights if public disclosure is imminent and there is no time for full assessment (OC recommends disclosure to OC well before planned public disclosure, to maximize potential scope of protection).
• OC will immediately send the inventors a copy of the PPA and a flowchart showing expectations for researcher engagement within the 12-month duration of a PPA.
• OC will make a “Go-No Go” decision between 6-9 months after the PPA filing to allow for needed follow-up including timely reporting to the federal government on federally funded inventions, and drafting and filing of a fully prepared patent application.

1-6 months after disclosure – Assessment, interim IP protection, marketing and licensing:

• OC will:
  • Conduct patentability and market analysis, and share information with researchers;
  • Time the PPA filing based on results of deliberate assessment and planned public disclosure;
  • Assist researchers in identifying and contacting industry partners for licensing or possible sponsored research support;
  • Negotiate appropriate agreements with industry partners (including start-up companies);
  • Manage appropriate process for copyright, trademark, or patent protection.

• Researchers should:
  • Provide OC within 30 days after disclosure or PPA filing, as appropriate, the development plan for the technology for the 12-month period after PPA filing;
  • Participate and provide the OC with any needed feedback and data for IP protection in a timely manner as patenting deadlines are time sensitive;
  • Identify and contact potential industry partners that may have an interest in moving the technology to market;
  • Communicate the industry interest to OC technology manager and participate in discussions with interested industry partners.

Absent industry interest:

• OC will not convert a PPA to a non-provisional application because –
  • Full patent protection is costly, not guaranteed to succeed.
  • Pursuit of patents unlikely to generate revenue does not advance the WSU mission.
• OC can, however –
  • Release inventions to researchers who desire to pursue them on their own, where appropriate;
  • Provide support in patenting inventions with no industry interest in cases where it is in the college’s strategic interest and where researchers and/or colleges financially support the patenting costs AND upon submission of a signed commitment letter to OC.