University inventors and all investigators working on sponsored projects are responsible for disclosing all inventions developed prior to and while employed by the University. (RCW 49.44.150) Investigators working on WSU-funded research are responsible for disclosing inventions developed during the research.
Disclosure is required for the purpose of determining the rights of employees, other contributors, and the University. See the disclosure procedure below.
For purposes of this policy an "inventor" can be a person receiving compensation for service, any person with a faculty appointment whether compensated or uncompensated, any student working as an investigator on sponsored research, or any person volunteering services for the benefit of the University.
NOTE: Volunteers are not required to disclose all inventions developed prior to University service.
In most cases WSU owns inventions produced by WSU inventors. Address questions concerning ownership to the Office of Intellectual Property Administration; telephone 335-5526.
The University's Office of Intellectual Property Administration (OIPA) is responsible for determining ownership of intellectual property produced by University personnel. OIPA uses the criteria in the table below and on the following page when determining ownership rights to inventions or trade secrets produced by University employees.
|WSU||Produced by WSU inventor within the scope of employee duties.|
|WSU||Produced with WSU equipment, supplies, utilized WSU facilities, or arising from research funded by grants to or funds of the University. (Minor or incidental use may not constitute WSU ownership. Ownership determination is made by the Intellectual Property Committee in such cases.) See also 30.15.|
|WSU||Produced by WSU inventor. The invention relates directly to University business or to WSU's actual or demonstrably anticipated research or development.|
|WSU||Produced by WSU inventor using WSU confidential or research trade secret information.|
|WSU||Ownership rights released to WSU by an inventor or outside party by written agreement.|
|Split||Produced by WSU inventor partially or wholly with WSU equipment, supplies, facilities, or trade secret information and the Intellectual Property Committee has determined that it would be unfair to determine that the property is wholly owned by either WSU or the inventor.|
|Student||Produced by WSU student and none of the above criteria apply to invention development.|
|Employee||Produced by WSU employee on own time and none of the above criteria apply to invention development. (RCW 49.44.140)|
|Employee||Ownership rights released to WSU employee by WSU or extramural sponsor by written agreement.|
|Outside Party||For outside party ownership rights, see the Faculty Manual, Section IV.G.2: Patent Policy--Sponsored Research.|
Timely invention disclosure permits accurate determination of ownership rights and assures that patent rights are not lost by the University, its employees and sponsors.
At the time of employment, report prior inventions by memorandum. Route the memorandum to the Office of Intellectual Property Administration (OIPA). It is not necessary to complete an Invention Disclosure to report prior inventions.
NOTE: This requirement is not applicable to volunteers.
Inventions While Employed or Acting for Benefit of WSU
Use the Invention Disclosure form to report the details of inventions developed while employed by or acting for the benefit of the University.
Obtain copies of the Invention Disclosure form from OIPA or the Washington State University Research Foundation (WSURF), in the Research and Technology Park, or obtain a copy of the form from the WSURF website at:
Select For Inventors.
Directions for completing the form are available from OIPA.
Route a completed invention disclosure form to OIPA.
OIPA examines each invention disclosure form to determine if a prior right exists by the terms of a sponsored grant or contract. Compliance with the terms of an agreement may include disclosure of the invention to the sponsor.
If OIPA determines that the invention disclosure is incomplete, OIPA returns the disclosure to the inventor specifying what additional information or action is necessary.
Appeals of Ownership Determination
The inventor has 30 days from the mailing date of the ownership determination notification to appeal OIPA's decision. The researcher must direct the appeal to the Intellectual Property Committee.
The Intellectual Property Committee must initiate review of the appeal within 20 days of receiving notice of the appeal.
The Intellectual Property Committee must issue the decision on the appeal within 30 days of the deadline for submitting materials relating to the appeal.
WAIVER OF RIGHTS
If the University or its assignee is determined to be the owner, the inventor signs documents assigning his or her interest in the invention to the University or its assignee. The inventor is also responsible for assisting in obtaining, protecting, and maintaining patent rights.
If it is determined that the University owns the invention OIPA reviews the novelty, usefulness, and potential marketability of the invention.
Possible actions include, but are not limited to:
Transmittal to WSURF
Transmittal of the invention to the Washington State University Research Foundation (WSURF) with a copy to the inventor.
Apply for Legal Protection of Invention
University application for a patent without transmitting the invention to WSURF.
Return to Inventor
Return of the invention to the inventor with a written explanation stating why the invention does not warrant other action by the University.
This releases the inventor from any obligation to assign ownership of the invention to the University; however, the University retains the right to use the invention in its normal teaching, research and service operations. The University waives its right to realize income from invention commercialization.
Depending upon invention characteristics and marketing possibilities WSURF may:
Directly supervise the development of the invention, or
Assign development responsibility to another development organization, e.g., Research Corporation, Battelle Development Corporation, or Washington Research Corporation.
OIPA evaluates the potential patentability of the invention, working closely with the inventor. OIPA may then:
- Proceed with the patent application,
- Request more information with the inventor,
- Work with the inventor to determine an alternative to patenting, or
- Return the technology to the inventor or funding source, if applicable.
OIPA may also assign the technology to WSURF at any time before, during, or after the patenting procedure; in such circumstances WSURF assumes responsibility for patenting.
See 35.53 for information regarding invention income distribution.