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How to Disclose Your Invention to WiSys
The first step in disclosing your discovery -- whether it is a patentable invention, technique and know-how, a biological material or another form of intellectual property -- is to fill out an invention disclosure report (IDR) form (below). The form may be downloaded and submitted electronically through our secure email page, or printed and sent through the U.S. mail.
After we receive your form, an intellectual property manager will contact you to set up a disclosure meeting (see below for a description of this meeting).
Note: If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact an intellectual property manager in your area of scientific expertise immediately. Guidance on who to contact may be found through our staff page.
UW System Invention Disclosure Report (IDR) Form
The IDR asks you to provide information on the time of the discovery, any preexisting technologies and any pending or already-published articles on your new technology. This information is used by the UW System and WiSys to review funding sources and obligations for notification requirements and other rights. It also aids WiSys in determining whether the invention will meet the U.S. Patent Office's criteria of novelty, utility, and non-obviousness or, if not, whether the invention can be protected by a means other than patenting. (For further information on these criteria, see the section Types of Intellectual Property Protection). It is important to have this information on record as early as possible, in case a patent is obtained and later challenged.
Print or download the IDR form
Invention Disclosure Tips
Every year, WiSys reviews approximately 20 inventions made by UW System researchers. Currently about one-third of these discoveries are accepted for patenting (or other intellectual property protection) and licensing. Some cannot be accepted because further research is needed before a patent application can be filed. Others, as meritorious as they may be on a technical basis, simply have a very limited commercial market. In such situations, patenting and licensing may not be practical.
A critical part of the disclosure process involves helping WiSys to make the best possible commercial evaluation of your invention. You know your technology better than anyone else and are likely to be in the best position to define your invention's economic and commercial advantages. Before your disclosure meeting, please think about and list the commercial advantages and applications of your discovery on the IDR form.
- Commercial advantages: Improved performance, operating and/or purchase cost savings, etc. No matter how good technically, an idea can't be effectively licensed without such advantages.
- Key benefits over existing products:
What are the benefits over existing products to the buyer or user? To the manufacturer? These advantages must be great enough for a company to take the risk and commit the resources necessary to commercialize the invention.
- List companies that may be interested in a license:
However, DON'T disclose your technology to anyone prior to the filing of a patent application as this could affect WiSys's ability to obtain a patent both in the U.S. and internationally.
The Disclosure Interview
The disclosure interview gives you an opportunity to explain your invention to WiSys' staff. It is the first step in the process by which WiSys decides whether an invention should be accepted for patenting. The disclosure meeting will be held with your assigned intellectual property manager. At times, one or more of WiSys' licensing managers may also attend the meeting to ask questions relating to commercial matters.
If possible, please send a completed IDR form or some other brief, written summary of the invention (comparable to an abstract) to your intellectual property manager prior to the meeting. In addition, please bring any publications, abstracts, theses, etc. that relate to the invention, including draft manuscripts. Publications and patents describing closely related prior technologies are also valuable, so please bring copies of these items to your disclosure meeting as well.
The disclosure interview is an informal oral presentation. Expect to be asked what is new in your invention and how it can be applied for practical use. Your comments concerning the invention's likely commercial value, possible categories of potential licensees, and individual companies that may have licensing interest are very valuable and increase the likelihood that WiSys will accept your technology for patenting and licensing.
Inventorship
It is a good idea for as many of the inventors to attend the disclosure interview as possible. Who qualifies as an inventor is a matter of legal definition and is also linked to the exact way the invention is ultimately defined. The attorney who eventually drafts a patent application on your invention will review the facts and list the actual inventors in accordance with U.S. Patent Office requirements.
As a first, rough determination of inventorship, assume that the list of inventors includes people who have worked on the invention by conceiving or elaborating on the idea, designing experiments, or evaluating experimental results; who have contributed patentable functional features while first building a device or performing a method; or who otherwise have directly contributed to the invention itself. Individuals who perform routine lab analyses, who assemble prototypes from detailed drawings, or who otherwise provide only entirely directed labor are in most cases not considered to be inventors.
WiSys' Decision Making Process
In many ways, bringing an invention to WiSys is like submitting a paper for publication or applying for a federal grant. Each invention is weighed against other inventions brought to WiSys and is evaluated for its appropriateness to WiSys' licensing program. WiSys' Patents and Licensing Department meets monthly to review the disclosures received since the previous meeting.
WiSys' decisions are based on an evaluation of the type of patent claims likely to be obtained, the availability of foreign equivalent patents, whether a patent could be effectively licensed and enforced, estimated potential income, the timing of that income, and the existence of any administrative problems that would complicate handling the invention. Patents are expensive, typically costing approximately $20,000 for a U.S. patent alone. A ten-patent foreign portfolio might add $100,000 to this cost. In addition, governments charge maintenance fees during the life of the patent.
Please remember that WiSys is obligated to evaluate new inventions not only on their technical merit, but also on their commercial potential and the enforceability of patent rights. Most technologies brought to WiSys represent very significant technological advancements. But unless a reasonably sized, enforceable market exists or is expected to develop, these technologies unfortunately cannot be accepted for patenting and licensing.
If WiSys Accepts an Invention
If WiSys accepts an invention, WiSys applies for a patent and begins the processes of marketing and licensing. WiSys pays all patent and licensing costs; there are no costs to UW System inventors or authors for this service.
Memorandum Agreement
Once an invention has been accepted by WiSys, the inventors (or authors) and WiSys enter into a short contract, called a Memorandum Agreement, in which the inventors assign the invention to WiSys. In return, WiSys grants the right back to the inventor group to receive a share of the royalty income in accordance with its policies and the policies of the UW System.
Once all WiSys and university processing of a new and independent invention are complete, the inventors have signed all of the necessary WiSys documents and a complete utility patent application has been filed, WiSys pays the inventor group a $1,500 assignment fee. This payment does not apply to provisional or design patents, copyrights, biological materials or know-how.
Realistic Expectations
It is important to have a realistic sense of the chances for economic success of any given invention. Typically it takes 60 to 100 disclosures from an industrial research and development program to yield one successful product that returns income substantially greater than the costs incurred.
The odds of successful licensing can be improved substantially by your contributions of knowledge about the marketplace, likely commercial applications of your work, and specific companies that are possible licensees. WiSys' licensing efforts are also enhanced by your availability to talk to licensees along with WiSys personnel, and your willingness to provide follow-up information, samples of materials, and similar assistance.
If WiSys Must Decline an Invention
If WiSys must decline an invention for one of the reasons discussed above, the inventors are free to deal with the invention as they please, subject to the rules governing federally-funded inventions and to any contracts that the inventors have signed, such as with a commercial funder of the research.
Under federal rules, the federal funding agency has the next right to take title to an invention WiSys has not accepted. However, inventors interested in seeking a patent on their own may petition the federal funding agency for the right to do so. WiSys is willing to help direct inventors to the correct contact people in federal agencies. Such inventor petitions are usually granted.
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