Washington State University
BUSINESS POLICIES AND PROCEDURES MANUAL

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Invention Ownership and Disclosure

University employees are responsible for disclosing all inventions developed prior to and while employed by the University. (RCW 49.44.150)

Disclosure is required for the purpose of determining the rights of employees and the University. See the disclosure procedure below.

Employees are not held liable for failing to recognize potentially patentable inventions.

For purposes of this policy "employee" is defined as any person receiving compensation for service, 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 employees. Address questions concerning ownership to the Intellectual Property Administration Office; telephone 335-5526.

The University's Intellectual Property Committee is responsible for determining ownership of intellectual property produced by University personnel. The committee 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.

Produced by WSU employee within the scope of employee duties.

Produced with WSU equipment, supplies, or utilized WSU facilities. (Minor or incidental use may not constitute WSU ownership. Ownership determination is made by the Intellectual Property Committee in such cases.)

Produced by WSU employee. The invention relates directly to University business or to WSU's actual or demonstrably anticipated research or development.

Produced by WSU employee using WSU trade secret information.

Ownership rights released to WSU by an employee or outside party by written agreement.

Produced by WSU employee 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 employee.

Produced by WSU employee on own time and none of the above criteria apply to invention development. (RCW 49.44.140)

Ownership rights released to WSU employee by WSU or extramural sponsor by written agreement.

Written agreement or sponsoring agency regulations specify that ownership vests in outside party, e.g., an extramural sponsor.

NOTE: The rights of the University, the employee, or outside party may be conditioned by federal law when federal funds are involved. Generally, the federal government retains royalty-free rights to use a patent. There are instances where the federal government may retain ownership. See 35 U.S.C. section 202.

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 Intellectual Property Administration Office. It is not necessary to complete an Invention Disclosure to report prior inventions.

Use the Invention Disclosure (Engineering), the Invention Disclosure (Software), or the Invention Disclosure forms to report the details of inventions developed while employed by the University.

Obtain copies of the invention disclosure forms from the Intellectual Property Administration Office, Research and Technology Park or make a copy or print from the following BPPM pages:

• 35.50.5-9: Invention Disclosure,
• 35.50.10-14: Invention Disclosure (Engineering), and
• 35.50.15-20: Invention Disclosure (Software).

Directions for completing the forms are available from the Intellectual Property Administration Office.

Route a completed invention disclosure form to the Intellectual Property Administration Office.

The Intellectual Property Administration Office examines all invention disclosure forms before they are presented to the Intellectual Property Committee.

The Intellectual Property Administration Office 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 sponsoring agency.

The Intellectual Property Committee must make a determination of ownership or request additional time within 45 days of submittal of a completed invention disclosure form to the Intellectual Property Officer.

If the committee requests additional time, it must make a determination within 35 days of the date of the request for additional time.

The committee is responsible for notifying the employee within five days of making the determination.

If the committee does not notify the employee within the prescribed time limits, any University rights to the patentable property automatically become the property of the employee.

If the committee determines that the invention disclosure is incomplete, the committee returns the disclosure to the employee specifying what additional information or action is necessary.

The employee has 30 days from the mailing date of the notification to appeal the committee's decision. The employee directs the appeal to the Executive Vice President and Provost or designee.

The Executive Vice President and Provost or designee must hear the appeal within 20 days of receiving notice of the appeal.

The Executive Vice President and Provost must issue the decision on the appeal within 30 days of the deadline for submitting materials relating to the appeal.

If the University or its assignee is determined to be the owner, the employee signs documents assigning his or her interest in the invention to the University or its assignee. The employee is also responsible for assisting in obtaining, protecting, and maintaining patent rights.

If it is determined that the University owns the invention the committee reviews the novelty, usefulness, and potential marketability of the invention.

Possible actions include, but are not limited to:

Transmittal of the invention disclosure form to Washington State University Research Foundation (WSURF) with a copy to the inventor.

Return of the invention disclosure form 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 the University regarding that invention; 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.

The WSURF or another development organization evaluates the potential patentability of the invention and assumes the responsibility of initiating the patent search.

The development organization may proceed with a patent application.

The development organization, after consultation with the inventor, may return the invention disclosure form to the Intellectual Property Committee. Returned invention disclosure forms are re-evaluated by the committee and may be returned to the inventor.

See 35.53 for information regarding invention income distribution.