Intellectual Property Management and Commercialization

FAQ


Frequently asked questions

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What is Intellectual Property (IP)?

    The principal rights governing the ownership and disposition of new technologies and discoveries are known as "intellectual property" (IP) rights, which are derived primarily from legislation and common law granting patent, copyright, trademark, trade secret, and integrated circuit mask work protections.

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What are WMU's policies regarding IP?

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What is a patent?

    A patent is a grant issued by the United States Patent and Trademark Office giving an inventor the right to exclude all others from making, using, or selling the invention within the United States, its territories and possessions, for a period of 20 years from the effective U.S. Filing Date of the patent application. The period of 20 years is exclusive of certain regulatory delays such as those sometimes imposed by the Food and Drug Administration and the patent grant process itself. The US government grants this 20 year limited monopoly protection in exchange for the inventor(s) teaching their discovery to the public, "to promote the progress of science and the useful arts." Further, many people recognize that a modern economy cannot function without intellectual property protections (McMillan,2002. Reinventing the Bazaar: A Natural History of Markets). Patents may also be granted in foreign countries; procedures for filing, regulations for patentability, and term of patent grant vary considerably from country to country.

    To be patentable in most countries, an invention must be new, useful, and nonobvious. In the United States, a grace period of 12 months from the first written public disclosure of an invention is allowed to file a patent application. In most foreign countries, an invention is unpatentable unless the application is filed before public disclosure (written or oral). However, if one has filed in the United States prior to disclosure, the applicant has 12 months from the U.S. filing date to file in most non-U.S. countries without losing patent filing rights.

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What is a copyright?

    laptop As provided in copyright law, a copyright owner has the exclusive right to reproduce the work, prepare derivative works, distribute by sale or otherwise, and display or perform the work publicly. Under federal copyright law, copyright subsists in "original works of authorship: which have been fixed in any tangible medium of expression from which they can be perceived, reproduced, or other wise communicated, either directly or with the aid of a machine or device.

    For an individual author, copyright protection of a work extends for the author's life plus 70 years. For employers, copyright protection of a work extends for 95 years from the date of publication. In contrast to a patent which protects the reduction to practice of an "idea," copyright covers the "artistic expression" in the particular literary work, musical work, computer program, video or motion picture or sound recording, photograph, sculpture, and so forth, in which the "expression" is embodied, illustrated, or explained, but does not protect the "idea."

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What are the benefits and rewards of inventorship and participation in IP commercialization at WMU?

    1. Professional recognition and career enhancement.
    2. Potential to open up new funding sources for a faculty member's research - the corporate sector.
    3. Become more competitve for landing government grants. The government wants to see a track record of generating IP.
    4. Opportunity for personal financial gain, which can be significant.
    5. Opportunity for bringing more resources back to your college and department to support further research activities.
    6. Compliance- disclosing IP is mandatory for complying with the terms of most, if not all, sponsored research and with WMU policy.
    7. Contribution to public welfare and economic growth through improved products, processes, and services.
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What is the process for commercializing IP?

    1. Research - Begins the process of discovery or of "Proving the Concept" for a new technology.
    2. IP/Technology Disclosure - After the concept has been proven, the researcher needs to officially "disclose" the discovery to OVPR via the IP/Technology Disclosure Form
    3. Technology Assessment - OVPR reviews disclosure for patentability, practiceability, market potential, and the need for IP rights.
    4. Filing for Intellectual Property protection - Typically patent, copyright, and sometimes trademark protection. This is usually out-sourced to a patent law firm who will work directly with the inventors to prepare a patent application or an application for other types of IP protection.
    5. Commercialization - OVPR helps find investors or corporate partners interested in the new IP. This may require WMU negotiating commercialization contracts such as license agreements.

    Also be aware that dissemination of certain IP and/or research materials may require negotiating material transfer agreements.

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What is the role of the Office of the Vice President for Research in the process?

    OVPR will work together to provide advice on general issues related to patents, copyrights, and commercialization (licensing of technology). The OVPR will conduct an internal evaluation of the IP/Technology Disclosure and, when appropriate, obtain the advice of legal counsel regarding the patentability of the invention. OVPR will usually meet with the inventor(s) as a first step in the evaluation. In some cases, industry feedback is sought as part of the evaluation process. If OVPRagrees that IP protection is appropriate, OVPR will usually provide for legal expenses and subsequent maintenance fees. Finally, the OVPR can assist the inventors in licensing and other commercialization efforts.

    The OVPR incurs an ongoing expense and possible legal risks whenever patent applications are filed. Consequently the OVPR is interested in filing patents that are likely to result in revenue to the inventor and the University. This revenue may come in the form of additional research sponsorship, licensing fees, royalties, and possibly equity interest in new companies established using university Intellectual Property.

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Things for the inventor to remember

    1. Keep excellent records of your invention (dated laboratory notebooks, etc.) This information is sometimes critical in the legal determination of who invented something first.
    2. Do not disclose your invention publicly until after the patent is filed or until you have talked to the Intellectual Property/Commercialization group. Public disclosure includes oral presentations at scientific meetings, external seminars, publication as a thesis or dissertation, as well as publication in a scientific journal. In the United States, there is a 12-month grace period after public disclosure during which a domestic patent application can be filed. This does not apply in other countries. The ability to patent your invention outside of the United States is lost after a public disclosure. Loss of international patent rights can substantially reduce the commercial value of an invention and may negatively affect the ability to commercialize.
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Office of the Vice President for Research
Western Michigan University
210 W Walwood Hall
Kalamazoo, MI 49008-5456 USA
(269) 387-8298 | (269) 387-8276 Fax