Frequently Asked Questions (FAQ)—Software Protection and Commercialization Overview for Programmers at WSU
Is my software application owned by WSU? Can I share code written at WSU? How does WSU protect code or related IP? Is software patentable? How can I take my code to market or use it to fund further research? Do I need to talk to the Office of Commercialization (OC) about a planned, ongoing, or completed software project?
The following general guidance is intended to help members of the WSU community determine whether they need to reach out to the OC, make a formal technology disclosure through our Inventor Portal, or focus inquiries and development. Answers to these questions are interrelated and dependent on specific circumstances. Please feel free to contact us at any time to help you navigate appropriate options and clarify how these issues apply to your situation.
N.B.: No one at the OC is legal counsel to WSU or any individuals at WSU, but we administer and field questions on WSU Executive Policy 38 (EP38), which details University Policies on Intellectual Property, Technology Transfer, and Commercialization.
What types of intellectual property (IP) can protect a software application?
Software can involve all forms of IP (i.e., patent, copyright, trademark, trade secret) and related intellectual capital (i.e., data, know-how). There is potential in each of these categories for licensing value (e.g., royalty payments), which might support further research, help get research innovations to market, and reward contributors. IP may exist at each of several layers of a software product or service, such as elements of product packaging, user interfaces, code, underlying methodology, collected data, and integration with other systems.
A single product might incorporate patentable methods along with trade secrets (i.e., certain valuable undisclosed aspects which are reasonably protected from public knowledge). Copyright protection automatically attaches to human-authored code as well as sound, graphic, and textual elements of user interfaces and associated documentation. Trademarks might be used in packaging as well as within the user interface. Software can also draw from and feed data sets, which in turn might be used to train machine learning elements. Know-how includes other non-public information which does not qualify under other IP categories, such as variations of a machine or process which do not work, or internal testing methods, can inform commercial development and maintenance of a product or service. For those interested in more general background on IP and licensing, a short technology transfer primer course and related resources are available here.
Does WSU own IP associated with a software application?
Under EP38, and as described in the Faculty Manual, WSU does not claim ownership to all copyrighted works authored at WSU, but WSU does generally own patentable inventions conceived at WSU and works created by WSU employees which result from substantial use of WSU resources (e.g., paid time, facilities, equipment, data) or from terms of written agreements or grants to WSU. Works can be classified as “for hire” by WSU if created within the scope of employment or if specifically commissioned. This ownership reflects public investment in research programs along with the employment relationship, and WSU must consider the public interest in protection and commercialization of its technologies. In contrast, employees own IP they develop wholly on their own time without WSU resources.
Employees have an ongoing obligation to assign rights to WSU-owned IP, which facilitates protection, licensing, and ultimately revenue sharing incentives.
Students who are not WSU employees usually retain ownership to IP they develop, but there are exceptions such as with specific IP agreements related to participation in research beyond what is ordinarily incorporated into course work. In some situations involving joint ownership between WSU and students, students may choose to voluntarily assign ownership to WSU and receive the same benefits (e.g., royalty share) as WSU inventors/creators. Unified IP ownership can be more attractive to potential licensees.
Does a software application need to be disclosed to WSU, and when?
Under WSU policy for IP disclosure, there is a distinction between types of IP. For WSU-owned patentable inventions, disclosure through the OC’s Inventor Portal is mandatory. WSU has Federal reporting requirements under the Bayh-Dole Act for subject inventions defined as those “conceived or first actually reduced to practice in the performance of work” under Federal grants. For copyrighted works (e.g., software code) not involving a patentable invention, unless there is a sponsored research agreement requiring disclosure and/or licensing to a partner entity, disclosure is encouraged under WSU policy for works (and other IP) suitable for commercialization. WSU employees and students are welcome to contact OC staff to discuss projects before making disclosures. Also feel free to reach out even if you have not yet created IP or do not have immediate plans to commercialize a creative work. Research efforts and derivative products or services may involve more than one form of IP; a software application, for example (and as described above), might involve all forms of traditional IP along with other valuable intellectual capital in the form of data and know-how.
As discussed below, public knowledge of innovations impacts patentability, so disclosures of patentable inventions should ideally be disclosed to the OC after proof of concept and ahead of any enabling publication. Innovations not involving a patentable invention can be made later, depending on project status and market readiness, but early engagement with OC staff can help preserve options on various commercialization paths as well as input on brainstorming (e.g., trademark selection ahead of use).
Does WSU-owned IP need to be marked?
For WSU-owned works, default copyright marking is required by EP38: “© Washington State University. 20**. All Rights Reserved.” Marking IP is not otherwise legally required to preserve basic rights but does provide notification that there is an assertion of rights.
“Patent pending” may be noted when there is an active application filed, though before marketing a good or service using a technology licensed from WSU, licensees are advised to assess whether other IP needs to be licensed (i.e., freedom to operate analysis).
Trademarks and service marks should be denoted in relation to goods and services to help establish and prove use of a mark (e.g., ___TM (brand) widget or service). The ® symbol may only be used after a mark is fully registered with the United States Patent and Trademark Office (USPTO). There are numerous issues with trademark selection and use, which should be discussed with the OC for WSU-owned IP, including within software, associated documentation, and webpages describing availability of a product or service.
What financial incentives does WSU provide for innovation?
EP38 provides inventors (and contributors) approximately a fifty percent (50%) share of net income for licensed WSU patents. Inventorship is based on participation in conception of an invention, but WSU disclosures also allow “contributors” to be listed who were indispensable to creation of IP and merit a portion of inventors’ share of revenue from licensed WSU-owned patents. Individual creators of other WSU IP, including copyrighted works deemed to be authored “for hire” by WSU can receive similar shares of royalties. Additional and updated policy information is available within EP38 as linked above, and through the OC staff.
Can we publish, present, or discuss a project with non-WSU personnel?
Collaboration with outside researchers and other partners can accelerate innovation, but premature publication or other uncontrolled public disclosure can preclude or complicate patenting or reduce market value of an innovation. Upon receiving invention disclosures, the OC takes some time to assess and protect suitable IP, such as by filing a provisional patent application, but will not unreasonably delay academic publications describing WSU inventions. In cases where patenting is appropriate and desirable, provisional applications should be filed prior to publication of enabling information (i.e., information sufficient to teach a colleague how to work invention without undue experimentation). Researchers are not discouraged from making industry contacts or providing non-enabling summaries of their work; often inventors are the best marketers for their innovations and can introduce potential licensing partners to OC licensing managers for assistance on negotiating and formalizing partnerships.
Non-Disclosure Agreements (NDAs)/Confidential Disclosure Agreements (CDAs). The OC can assist with NDAs for technologies disclosed to the OC to enable detailed technical discussions. Pre-disclosure, researchers can request NDAs with external colleagues and partners through the Office of Research Support Operations (ORSO). For discussions with outside parties, such as potential commercialization partners, academic conferences, and even WSU events open to the public, WSU research teams should coordinate with their supervising principal investigator prior to discussion or publication (e.g., journal article, poster, conference presentation).
Inter-Institutional Agreements (IIAs). For inventions created in collaboration with outside researchers, the OC works with other institutions to negotiate IIAs, which clarify IP ownership, responsibilities for IP protection, and revenue/cost sharing.
Is my software application patentable?
Patents related to software are regularly granted, and regularly rejected, and the decision to apply for a patent can be complex. A patentable invention is a useful, novel, and nonobvious process, machine, composition of matter, or manufacture (i.e., tangible human- or machine-made article), enabled by a detailed disclosure. While software can be patentable, specific software applications have also been regularly rejected as ineligible for patenting based on a determination that claims are little more than abstract ideas, laws of nature, or mathematical algorithms and formulas.
| Patent Eligibility of Software Claims | |
| Not Patentable or Less Patentable | Abstract idea/algorithm without tangible elements; Passive collection of data, describing the world, or diagnosing a problem; Implementation of known human thought processes or practices; Innovations unrelated to computer science; and Use of generic components or general purpose computer |
| More Patentable | Improvements of computer functionality; Manipulations of the physical world to address a tangible problem; Significant tangible additions to abstract idea; Focus on particular application, means, methods; and Integration with particular hardware components. |
Beyond patent eligibility, novelty and obviousness are measured by prior art, or known information worldwide to include other patent applications, journal articles, and any other recorded knowledge. Patent examiners conduct their own prior art searches and assessments, and will declare claims obvious if they can piece together all elements from prior art references. No one can guarantee whether or not a claim will result in a patent, and even after patents have been granted by the United States Patent and Trademark Office (USPTO) or other patent offices, courts have sometimes invalidated inventions due to ineligibility.
Among other services, the OC assists inventors by conducting initial patentability assessments and discussing case specific patentability risks.
How does WSU protect IP?
Patenting, in appropriate cases. The OC files provisional patent applications with the USPTO to establish a priority date to inventions enabled by the contents of those application, based largely on manuscripts disclosed by WSU inventors. The OC drafts these applications after discussing the technology and plans with inventors and/or authors and based on preliminary assessments of patentability and market potential. If disclosures to the OC lack sufficient support and detail to teach the innovation to others, we will ask for additional information, often through an updated manuscript before filing. Provisional applications expire after twelve months, providing inventors assisted by the OC an opportunity to do additional testing and development and confirm market potential by finding a licensing partner in a startup or established company. Once it is determined that a non-provisional application is the appropriate path forward, the OC works with outside patent lawyers, and legal costs and fees are sufficiently costly that WSU looks for assurances that patenting costs will be reimbursed, usually from licensees.
Non-patent IP. Unlike patents, other types of IP provide automatic protection based on creation of tangible works (copyright), use in the market (trademark), or protection of valuable information (trade secret). This can be narrower protection than a method patent. Whereas patent claims can protect useful methods which might be programmed various ways, copyright only protects the expression, such as source code which implements a method in one way and language of many possible options. Finalized works can be registered at an appropriate later stage of commercialization to confer additional protections in case of infringement. Trademarks can be established with use in commerce, but registration provides benefits including putting others on official notice of use or intended use of a mark. Trade secrets are not registered, but where applicable require taking extra security measures to preserve. This can be a particular challenge for research originating in an open academic environment, and failure to secure intended confidential information early in process can mean that trade secret protection is not an option.
What is “open source”?
Open sourcing means to make publicly available for use, redistribution, and possible modification. However, open source is not the same as forfeiting copyright to the public domain, and compiled code (undecipherable) versions might still be used to maintain trade secret or other proprietary information. Unlike public domain works, which may be modified and used without restriction under IP laws, open sourcing includes a spectrum of simplified licenses, a few of which are summarized here:
| Creative Commons (CC) https://chooser-beta.creativecommons.org/ The CC family includes relatively restrictive versions requiring attribution, noncommercial, and share-alike, which can potentially preserve more commercialization potential for traditional licensees, allowing interested commercial partners to negotiate other terms. |
| GNU General Public License (GPL) https://www.gnu.org/licenses/licenses.html#GPL This is modifiable within described limits and may include a fee for copies. Copyleft seeks to grant freedoms with respect to copies while requiring preservation of the same freedoms in derivative works. In part because of requirement to preserve notices, it is seen as more protective than permissive. The OC does not recommend this for any WSU IP, as version 3.0 grants royalty-free patent rights to related claims held by contributors. |
| MIT License https://opensource.org/license/mit This is a very simple and permissive license which allows modification and distribution, including sales, essentially only requiring that the copyright and permission notice be included in copies. Derivatives may be used in proprietary projects and licensed under non-open source terms. |
| Apache https://www.apache.org/licenses/LICENSE-2.0 Akin to MIT, this is permissive, but requires preservation of both notices and change lists. The OC does not recommend this choice for any WSU IP, as it grants a royalty-free patent rights to related claims held by contributors. |
Can I open source WSU-owned software?
Public disclosure through open sourcing may foreclose patenting or reduce incentives to pursue costly patent prosecution and maintenance. A choice to open source WSU-owned code should be informed by requirements/restrictions of applicable research agreements (Federal grants or industry-sponsored), rights of interested third parties (e.g., sources of embedded modules), and a thorough internal discussion with stakeholders on pros and cons with respect to related future work and marketability. Open source models can accelerate network building and development of products, but the decision to open source may also irreversibly narrow opportunities for later development funding and investment in commercialization. Various business and noncommercial models do support open sourcing code, meaning making the code publicly available subject to a simplified license. A few are summarized in the following table:
| Example Open Source Business and Non-Revenue Models | |
| Reputation & Community Building | Getting software out quickly can help build a network of users along with reputation within academic field and market segment, to leverage for future research funding and commercialization of related technologies. |
| Data Collection | In some cases, data can be more valuable than software IP both for data licensing as well as direct use in ongoing research. |
| Loss Leader/Service Enabler/Widget Frosting | Free distribution of software can be used to build customer relationships for or add value to related products or services (e.g., consultation). A company might offer enterprise support and warranty of free software which is otherwise freely distributed. Widget frosting describes software provided by hardware-focused companies to increase sales. |
| Multi-Licensing/Freemium | Advanced features and updates might be reserved for a premium version for paying subscribers or community members willing to actively support development. |
| Donations/Volunteer Developers | Enterprises such as Wikipedia have successfully implemented this model to build brand and reach. Use by a lab at WSU would require close review of ethical and legal issues. |
If there is a licensing prospect such as a software vendor which might better develop, distribute, and support a product, open sourcing could in some cases inhibit exposure to a larger market. Potential licensees may favor projects which are not available for independent development by competitors. Academic programmers are often not positioned to ensure ongoing support and regulatory compliance of software products, but commercialization can include minimal models such as licensing IP to a WSU service center to cover on-going program costs. Graduate students or other researchers are also sometimes motivated to create a startup companies, and may be the most energetic advocates for emerging technologies.
WSU creators should review ownership, patentability, and disclosure requirements summarized above, but if software does not involve a patentable invention requiring mandatory disclosure, researchers and their departments have discretion to make code available. For non-patentable software for which there is no intent to ever commercialize related software products or services, authors may choose to publicly post the software code with an open source license. OC consultation is encouraged, but not required. Recognizing taxpayer investments in research, WSU should not disclaim rights where there is a known better path to commercialization. “For hire” authors of WSU-owned IP (as described above and in EP38) should not expect to get around revenue sharing policy by open sourcing WSU-owned software. For researchers with financial ties to private enterprise, information on conflicts of interest (COIs) is available here: https://research.wsu.edu/guidelines-policies/conflict-of-interest.
Upon deciding to open source, the default copyright marking requirement above should be modified within source code headers to reflect the chosen license, for example: “Copyright © 2024 Washington State University (WSU). This software is licensed under Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International (https://creativecommons.org/licenses/by-nc-sa/4.0/). Additional license options available through [https://commercialization.wsu.edu/ if the OC is managing technology, or website/contact info for other WSU unit managing copyright]. CODE IS OFFERED “AS IS” AND WSU MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO USE OR OTHER DISPOSITION BY LICENSEE, ITS SUBLICENSEE(S) OR THEIR VENDEES OR OTHER TRANSFEREES OF PRODUCT INCORPORATING OR MADE BY USE OF INNOVATIONS LICENSED UNDER THIS LICENSE.”
What if my WSU-owned software creation employs IP not owned by WSU?
Incorporating IP owned by others complicates protection and licensing, but should not deter disclosure to the OC. Software which uses libraries and modules, or interfaces with other products or services, or external data sets can have independent licensing value but would potentially require licensees to acquire rights to the other necessary IP. A granted patent application allows owners to exclude others from practicing the issued claims, but does not guarantee that goods or services using the patent would not infringe on other IP. Licensees anticipating large investments in developing a good or service for the market should consider a freedom to operate (FTO) analysis, which is a costly form of legal due diligence beyond the scope of the OC, but available from private law firms or consultants.
What about generative artificial intelligence (AI) used in the creation of a work/invention?
In short, use of AI in creating a software product must be described in an invention disclosure, and may need to be disclosed in registering a copyright or applying for a patent. This can implicate validity of at least portions of IP, as both inventorship and authorship require substantial human contributions. Creators at WSU should also be aware of WSU guidance, to include System Data Policies under Executive Policy 8, which is understood to prohibit “the inclusion of legally protected or regulated data (e.g., proprietary, personally identifiable information, HIPAA, FERPA) in queries provided to generative AI platforms like ChatGPT.”