Patent and Copyright
Research Innovation
Intellectual Property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by, for example, patents, copyright and trademarks. Patents grant a right to exclude others from making, using, or selling the invention, process, or design, and copyrights provide similar benefits for written and artistic work.
Intellectual Property at WWU
All IP-related activities at WWU are managed by the Office of the Vice Provost for Research (VPR), including initial assessment, protection, and development through licensing and other third-party agreements. WWU faculty and other employees who believe they may have produced IP with potential value should disclose their inventions to us as early in the innovation process as possible.
According to WWU's patent and copyright policy and Faculty Collective Bargaining Agreement, the University has the right to own any discovery or invention created using university facilities, equipment, or funds controlled or administered by Western. Additionally, Western may be required by state and federal statutes, industrial research agreements, and other obligations to manage the IP that results from the university's research programs.
Conversely, WWU claims no vested interest in inventions resulting from personal or private research developed without expense to, or use of facilities, equipment or staff of the University, though such inventions may be voluntarily offered to the University. Furthermore, except for works produced or written for hire, any publishable material produced by a member of the faculty or staff of the University is also the exclusive literary property of the author.
Patent and Copyright Projects at Western
WWU engineering team led by Sura Al-Qudah patents new surgical device
The device will help doctors perform quicker, safer operations to mend broken legs. In order to fix a broken tibia or fibula, surgeons use an intramedullary nail, also known as a tibia nail, to stabilize the fracture. These nails are made of titanium and are inserted into the leg before being affixed to the bone with screws, but surgeons can have a hard time locating the nail’s pilot holes, especially in the distal side — the side farthest from the surgical site — of the leg.
Greg O’Neil and graduate students invented a bottle adapter that makes researchers safer in the lab
WWU is in the process of fully patenting the bottle adapter while O'Neil's team moves forward with commercialization. The team went through a variety of prototypes before finding the ideal size and material for the bottle adapter that is flexible enough to work with bottles of various sizes.
Pictured: WWU grad students Hunter Peterson, Kaden Hekker and Adam Jones in the lab holding bottle adapters they invented (left to right)
US 10,406,509 B2 (2019) Nanoscale nickel phosphide catalyst for hydrotreatment. M. Bussell.
US 9,970,034 B2 (2018) Use of marine algae for co-producing alkenones, alkenone derivatives, and co-products. C.M. Reddy, G.W. O'Neil, S.R. Lindell.
US 9,964,680 B2 (2018) Photoluminescent semiconductor nanocrystal-based luminescent solar concentrators. D.L. Patrick, J. Gilbertson, S. McDowall, D.L. Gameling, L. Bradshaw, E.J. Mclaurin, K.E. Knowles.
US 9,879,288 B2 (2018) Use of marine algae for producing polymers. S.R. Lindell, C.M. Reddy, G.W. O'Neil.
Technology Transfer Process Overview
WWU researchers often work together on innovative projects, some of which are supported by governmental grants or through industry/business support. The VPR Office and Research and Sponsored Programs (RSP) facilitates obtaining and administrating grant applications and other contracts. The Principal Investigator (PI), usually a faculty member, manages contractual obligations on behalf of the team. Sometimes, the project is not done under a contract. In all cases, confidentiality should be maintained and documented using non-disclosure agreements if patenting is a project goal. Any public disclosures (such as abstracts, posters, presentations, journal articles) or public uses (including sales, demonstrations, online fundraising, donations) may harm patent rights. Liberal use of non-disclosure agreements is the norm.
After WWU researchers design the first prototypes or obtain preliminary data, that is the time to consider whether the innovation might be patentable. Online patentability searching is helpful to refine understanding of the improvement over similar technologies.
Per the procedure of POL-U4520.03, the Patent and Copyright Committee will review the rough prototype and/or preliminary data and provide an initial patentability and commercial applicability assessment.
Keep in mind: To be patentable, patent laws require that the innovation be novel, unobvious (different "enough" in structure or function than previously available technology), and described with sufficient detail to allow others to recreate the innovation once the patent expires.
If WWU decides that the innovation is highly patentable and highly commercially feasible, WWU may decide to move forward with patenting. Ownership of the patent rights is determined by the WWU Patent and Copyright Policy and agreements between the inventors and WWU. After the ownership issues are determined, WWU will hire a patent attorney who has scientific training that aligns with the invention. The team - inventors, Vice Provost for Research, and the attorney - will work together to draft a patent application.
The patent application process is lengthy, complicated, and expensive. WWU expects significant input from the inventors. Even when the team proceeds with measured caution, some patent applications fail to result in issued patents or commercialization.
Even before a patent application is filed, inventors, the VPR office, and other mentors will work together to find potential licensing or start-up partners for the innovation. Sometimes, further research or validation is needed, and the team works together toward partnering with organizations who can help. The inventors' network of colleagues and industry partners is often the best source for commercialization partners. Once a potential partnership is identified, conversations should proceed with a mutual understanding of confidentiality to preserve future patent rights. Non-disclosure agreements are usually a part of those conversations.
In the event that a company is interested in licensing a WWU innovation, the VPR office will draft an agreement that includes milestones for commercialization as well as a compensation. The company and WWU will use the agreement to negotiate either an option agreement (a first right to license an innovation) or a licensing agreement.
Each licensing agreement is different. Most include a requirement that the company reimburse WWU for all patent-related costs (attorney and government fees). In addition, an up-front payment is common, along with royalty fees based on the particular business model and expectations of how the innovation will be used. Revenue received after the patent fees are reimbursed are shared between the inventors and WWU, according to the WWU Patent and Copyright Policy and a written agreement.
Trademarks, Patents, and Coprights
According to the US Patent and Trademark Office, trademarks, copyrights, and patents are different types of intellectual property. The USPTO grants patents and registers trademarks. The U.S. Copyright Office at the Library of Congress registers copyrights.
- Copyrights: Protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. Copyrights may be federally registered with the Library of Congress through the U.S. Copyright Office.
- Patents: A property right granted by the government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted.
- Intellectual Property: Creations of the mind—creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property: patents, trademarks, copyrights, and/or trade secrets.
Use the IP Identifier to learn what kind of intellectual property you have.
- Trademark: A word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.
- Copyright: Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
- Patent: Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.
- Trademark: Protects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.
- Copyright: Protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.
- Patent: Safeguards inventions and processes from other parties copying, making, using, or selling the invention without the inventor’s consent.
Patents
A U.S. patent gives you, the inventor, the right to “exclude others from making, using, offering for sale, or selling” an invention or “importing” it into the U.S. A plant patent gives you additional rights on the “parts” of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety). What is granted is not the right to make, use, offer for sale, sell or import the invention, but the right to stop others from doing so. If someone infringes on your patent, you may initiate legal action. U.S. patents are effective only within the U.S. and its territories and possessions. Types of patents include: utility patents (for inventing a new or improved and useful process, machine, article of manufacture, or composition of matter), design patents (for inventing a new, original, and ornamental design for an article of manufacture), and plant patents (for inventing or discovering and asexually reproducing any distinct and new variety of plant).
- Frequently Asked Questions about Patents from the US Patent and Trademark Office website.
- The US Patent and Trademark Office suggests "a six-step strategy for preliminary searches of U.S. patents and published applications, using free online resources from us and our international partners. The Patent Public Search tool and Inventor Search Assistant are web-based search tools."
Provisional Patents
Most WWU patents start at the provisional patent process. A provisional patent application (PPA) is often the starting point towards obtaining full utility or plant patent protection of your work. After a PPA is filed, the invention is "patent pending" for one year from the date of the PPA filing, allowing public disclosure of the material included in the application, time to continue research and development, and time to evaluate commercial opportunities. Keep in mind that the United States is a "first inventor to file country" so it is important to get your PPA submitted before any presentations, offers for sale, or publication. All PPA and patent applications must exit the university through the VPR office.
Read more about the PPA process on the US Patent and Trademark Office website.
PPA Timeline and Guidance from WWU
Contact Research and Sponsored Programs (RSP) for an initial consultation about your proposed PPA. We will work with you to craft your written statement and other materials for the Patent and Copyright Committee (PCC).
Please be ready to share some of the following with us: manuscript, presentation, manual/brochure, figures, flow charts, data graphs, photographs. We suggest thinking of this information as gathering enough sources to teach another person in your discipline how to make or perform your innovation.
Per the section "Procedure for Reporting Inventions" of WWU PRO-U4520.03A inventors should report and disclose their innovation to the PCC at the earliest opportunity. After your initital consultation with RSP you will work with us to submit a report to the PCC certifying the potentially patentable invention or discovery was the result of private research done independently of any contractual obligations to the University and without using University equipment, staff, facilities or funds, or whether it was the product of research done with the benefit of such assistance or with the aid of any outside research sponsor.
- During steps 2-4 of "Procedure for Reporting Inventions" (PRO-U4520.03A) the inventor should continue to prepare materials for the potential PPA. To help the patent attorney prepare a PPA please be ready to provide some of the following materials: manuscript, presentation, manual/brochure, figures, flow charts, data graphs, photographs. We suggest thinking of this information as gathering enough sources to teach another person in your discipline how to make or perform your innovation.
- If the PCC determines that innovation should proceed to provisional patenting, the inventor along with the VPR will meet with the patent attorney to being preparing a set of claims. Claims are legal sentence that set legal parameters or boundaries for the innovation that memorializes the innovation at the time of PPA filing.
- WWU's patent attorney will file the PPA on behalf of the inventor and WWU.
Keep in mind! It can take a variable amount of time to prepare a PPA depending on the data and information available and planned public disclosures.
The inventor’s role is to:
- Continue doing research to generate more data on invention features and confirm additional uses
- Improve prototypes
- Provide detailed information on how the invention functions, etc. All supportive data must be available at the time of conversion to a full patent application
- Share industry contacts that may be interested in the technology with the VPR office.
Around month 10 of the 12-month provisional patent period, the VPR office in conversation with the inventor will decide whether to convert the PPA to a full application based on patentability, marketing feedback and technical progress.
If WWU does not file a full patent application, we encourage researchers to disclose improvements, which may lead to a new patent or commercial opportunity.