Disclosure, Licensing, & Patenting
The disclosure process begins with the inventors contacting the OTC for an informal review of the circumstances and subject matter of the invention. It is important to contact the OTC as early as possible after an invention is made and before it is described outside the group of inventors, as there may be substantial consequences in public disclosure for the legal rights involved.
If a determination is made that the invention may be patentable, the OTC will request the inventor to submit the WPI Invention Disclosure Form (Word) and to complete (often with OTC assistance) any other necessary initial disclosures that may be required, e.g. notification of joint institutional partners or sponsors with rights in the invention.
A carefully completed WPI Invention Disclosure Form allows the OTC to begin an effective evaluation of the invention's potential value as an intellectual property asset of the university and to initiate the patenting process if indicated. If the university does proceed, the OTC will maintain dialogue with the inventor and a patent attorney to develop a patent application. Patent issuance can take anywhere from 18-26 months, during which time the OTC will initiate marketing efforts typically in coordination with other university centers and institutes to commercialize the invention.
Various commercialization paths may be pursued, but all involve some type of licensing of patent rights. Licensing technologies is a challenging step in the process of technology transfer. Inventors are highly encouraged to build relevant industry networks, publish articles about the technology, and attend conferences and tradeshows to promote the technology. Remember—disclose to OTC first.
Establishing rights to intellectual property (IP)—such as inventions and copyrights, data, formulae, computer software specifications, processes, patents, or other technical or product information—is important to both the University and the inventor(s), regardless of whether the inventor is a faculty member, staff member, or student. The WPI Intellectual Property Policy was developed for the purpose of setting forth rights and obligations of the University and its employees when IP is created.
The University's ownership rights to the IP it creates or reduces to practice under federal funding is protected by law under most federally sponsored agreements. The government usually maintains a non-exclusive, royalty-free license for government purposes. However, the ownership and commercial rights to inventions developed under external, non-federal sponsorship are negotiated as part of the sponsorship agreement.
While the circumstances vary widely, in most cases the university retains ownership of the IP it develops with the sponsor, retaining an option to a commercial license for inventions developed. Responsibility for IP protection expenses are usually a significant aspect of the sponsorship agreement negotiations on commercial rights.
At a minimum, the University will insist on maintaining the ability to use the IP for internal research and educational purposes. The University and the inventors also retain financial interest in any financial consideration received as a result of licensing (including royalties).
Students are encouraged to be a part of this process, and the IP Policy was re-written in 2016 to facilitate and encourage student innovation. The grid and FAQ below was written by students and tested with students to make sure they understand what their rights are for their innovations. WPI would like to be totally flexible so that a student never feels that WPI is hindering their ability to exert their freedom to innovate.
It is really simple: you invent something all on your own, it is yours. You work on something as part of a course and you use significant WPI resources, it still can be your own. We ask that you disclose so that we can help you with protecting your idea and suggest resources to help you move the idea forward. You can choose to own 100% of the invention, even if you used significant WPI resources (as long as the invention wasn’t funded by a grant or with a faculty member). We can direct you to IP attorneys, most of which are WPI graduates, who can help keep the initial patent costs down. The main point is to stay in touch so WPI can help you achieve the maximum ability for success.