Commonly Asked Questions:
Why are Confidential Disclosure Agreements Necessary?
Confidential Disclosure Agreement, sometimes called a Non-Disclosure Agreement, 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 might even violate federal regulations. It is important to contact us before disclosing any confidential proprietary information to another party.
What share of royalties do inventors get?
Information about royalties is covered in the Faculty Manual.
How do I find out about a particular technology?
You can search available technologies on our site. You may also contact our office at (509)335-5526 to be directed to the appropriate technology licensing manager for more information. Another good place to look is our page for startup companies.
How do you enter into a license agreement?
You can find information about licensing on the licensing overview page or the agreements page on our site.
Does WSU offer access to technologies via agreements other than a license?
Yes. we offer research use access via Research use licenses to for-profit entities. Option Agreements are also possible when the partner needs time to evaluate a particular technology. Research Development is possible via Sponsored Project Agreements. Contact email@example.com for more information.
Does the Research Park offer lab and.or office space to WSU start-up companies
Yes. For more information, please visit our Research Park page.
Does WSU Research Park offer space to outside entities?
Yes. For more information, please visit our Research Park page.
How can I assist in the marketing of my invention?
As the principal researcher, many times, you are in the best position of knowing the market niche. You can assist the Office of Commercialization by including the potential markets and contacts in the invention disclosure or by directly sending the information to our office.
Invention Disclosure FAQ’s
What is an invention disclosure
An Invention Disclosure is a form we use to create a record of the invention, the inventor(s) involved, related sponsorship of the work, and any public disclosures and publications.
When do I submit a disclosure?
There are no hard and fast rules for when an invention disclosure should be submitted. However, following these two guidelines will avoid the submission of a late invention disclosure in most situations and will aid in the protection of the intellectual property in a timely manner:
- Submit your invention disclosure well in advance of any publications; and
- Submit your invention disclosure when you have conceived the idea of the invention and have either proven the concept, or determined how it can be accomplished (preliminary data indicating utility and/or an actual reduction to practice is most helpful, but the disclosure need not wait for the data in some situations).
Is disclosing an invention mandatory?
The Faculty Manual requires that all potentially patentable inventions conceived or reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources be disclosed on a timely basis to the University. Title to such inventions is assigned to the University, regardless of the source of funding, if any. If you have any questions please contact us.
I am writing a book, do I need to disclose it to the Office of Commercialization?
WSU copyright policy states that if significant University resources are used or if a work is created within the scope of your employment, then the University has ownership rights to the created work. More information on the WSU copyright policies can be found in Subsection H of Section IV of the WSU Faculty manual
What is the benefit of disclosing an invention to the Office of Commercialization?
Disclosing your invention to us is an important part of protecting the rights to your discovery. One of the most important benefits may be the commercialization of your technology through our efforts in patent and licensing of the discovery. Other benefits through our marketing efforts include new contacts with industry or industry-sponsored research in your laboratory.
If I invent something at the university, does it belong to the university?
Usually, if you are a university employee and the invention is in your area of expertise, WSU does have ownership. For example, if you are a WSU professor and you invent something clearly in your field of teaching and research, then WSU owns your invention.
In most cases, it is obvious that WSU owns the invention. However, there are exceptions to this. WSU’s ownership of your invention may be contingent upon the specifics of your employment status and what University resources you used in its invention and development. For example, what if you are not a WSU employee but a student or a volunteer? What if you are a WSU faculty member but your invention is not in your field? What if you used your computer and your office but not much else? To determine ownership in these situations, our office will need to do some fact gathering and analysis. It is important that you discuss the situation with us as soon as you think you may have an invention. Not only will the office help to clarify the situation, its involvement may lead to the process of protecting and commercializing your invention and starting you, your department, and WSU on the road to personal and institutional financial rewards.
What about my inventions prior to joining the university?
The University does not claim ownership of such inventions. However, any developments or improvements of these inventions that your make while at WSU may be owned by the University and should be disclosed to us.
Material Transfer Agreement (MTA):
Why are Material Transfer Agreements Necessary?
A (MTA) is a legal document for the protection of tangible research materials created by researchers that may be useful to others for research or for commercial development. It is important to contact us prior to receiving or sending out any research materials so that appropriate MTAs can be developed to protect you and the institution.
Whom do I contact when I want to transfer research material?
A typical template MTA form can be downloaded here, please contact us for assistance in tailoring an agreement to your specific needs. Outgoing MTAs are handled by our office. For more information, contact our office at (509) 335-5526. If you are transferring materials into your program from somewhere else, please contact WSU’s Office of Grant and Research Development at (509) 335-9661 for arranging an incoming MTA.
I have some materials that my colleague at another university/company want to use. Can I simply mail them?
Am I required to have an agreement set up?
All the materials that go out of the University need to have an out-going materials transfer agreement attached to them. These MTAs specify the rights and limitations for using these materials and are meant to protect the rights of WSU researchers. In addition, these also serve the purpose of complying with export regulations between the United States and a foreign country. Outgoing MTAs are handled by the our office. For more information, contact our office at (509) 335-5526.
I have biological materials a company wants to use. Can they be given to the company?
Corporate entities can have access to materials developed by WSU researchers. This type of transfer is facilitated via a research use license/MTA with that entity. The research use licenses are handled by the our office. For more information, contact our office at (509) 335-5526.
A company wants to fund research in my lab. I need to disclose an confidential and proprietary information. What should I do?
WSU’s Office of Grant and Research Development enters into a non-disclosure agreement (NDA) to facilitate exchange of confidential information with an industry sponsor to protect the rights of its researchers. NDAs allow the disclosure of confidential information prior to, for example, a research proposal submission. For more information, contact OGRD at (509) 335-9661.
I want to use materials developed by my colleague s another institution. Can I go ahead and have him/her send me the materials?
All the materials that come into the University need to have an in-coming materials transfer agreement attached to them. These MTAs specify the rights and limitations for using these materials and are meant to protect the rights of WSU researchers. The incoming MTAs are handled by WSU’s Office of Grant and Research Development. For more information, contact OGRD at (509) 335-9661.
I have developed methods and other information (“know-how”) that I have not published? A company wants to have access to this information. How can they obtain access to this information?
Know-how and information that is not patented or patentable can be made available to an industry partner under a know-how license. Know-how licenses are negotiated by the our office. For more information, contact our office at (509) 335-5526.
Who are inventors?
Inventors are those who conceived the invention. In some very rare circumstances those who intellectually contributed to the process of reduction to practice can be considered inventors.
What is the difference between inventorship and ownership, and how is ownership determined?
Inventorship resides with the person(s) who have created the work–designed or written software, produced a video piece, crafted a tutorial tool, or discovered an improved manufacturing process, for example.
Ownership refers to the legal possession of a patent granted by the U.S. Patent and Trademark Office or of a copyright registered with the U.S. Copyright Office.
The determination of copyright or patent ownership is based on the extent to which University resources, facilities, or other support or contracts were involved in the development of the work or whether the material was created within the scope of employment duties. If the work’s creation is dependent upon University involvement, most likely the ownership will go to the University.
University ownership, however, does not diminish the primary role of the author or inventor of a work. Inventors maintain creative control of the development, enhancement, or presentation of the work. They are entitled to receive a share of royalties which may accrue, they are free to use the work for their own personal or professional purposes; and their wishes are considered in any decisions for public distribution or use.
Does public disclosure interfere with patenting?
Most foreign patent rights are lost immediately upon public disclosure. In the U.S., you have one year from the date of the public disclosure to file a patent application.
To protect the patentability rights to your invention, it is important that you contact us as early as possible prior to public disclosure. Public disclosure, includes but is not limited to journal articles, publication on the web, conference abstracts, oral presentation or poster presentations and published grant proposals or abstracts of awarded grants and progress reports.
I’m thinking of starting a business using technology I developed at WSU, what are the relevant university policies?
The University is supportive of faculty interested in forming companies, while aware of potential conflicts which may arise. A good starting point would be to look through WSU’s Executive Policy 27, which outlines many of the relevant topics, including Conflict of Interest issues, as well as the Conflict of Interest page on the University’s website.
Do you have an incubator?
The Research and Technology Park has incubator space available; moreover our office can provide funding for further development of “near market” University technologies. Research Park