IP Process

General Information

An Invention Disclosure Form (IDF) submitted to the West Virginia University (WVU) Office of Innovation and Commercialization (OIC) serves as a record of a potentially patentable invention and is a notice of such to WVU. A submitted IDF is not a patent application and is not filed with the U.S. Patent and Trademark Office (USPTO). A submitted IDF does not provide any Intellectual Property (IP) protection other than possibly an invention date. The following steps describe the steps the OIC performs when processing an IDF submission. A similar process is performed when the OIC receives a Copyright Disclosure Form (CDF) submission

Timeline graphic text version.

Step 1 – Conception

To be considered eligible for a patent, an invention must be conceived and reduced to practice. Reduction to practice can be an actual reduction to practice, meaning the invention was carried out and found to work for its intended purpose. Alternatively, reduction to practice can be a constructive reduction to practice, meaning it has been sufficiently described in writing for someone with ordinary skill in the art to make or practice the invention. Properly completing an IDF demonstrates a constructive reduction to practice. 

Step 2 – Disclosure Review

Inventors must complete all sections of the IDF and submit a copy of it to the OIC with signatures where appropriate. The IDF can be downloaded here. The inventors may send an electronic draft of the IDF for review prior to formal submission. The IDF will be promptly reviewed to ensure it is properly filled out, or OIC will communicate its incompleteness to the inventor with specific guidance on how to complete it.

Step 3 – Commercialization Assessment

The OIC reviews the IDF based on the following six criteria to assess its commercialization potential:

· IP Protectability

· Technology Readiness

· Technology Development Outlook

· Market Outlook

· Clearance

· Creator Engagement

The assessment provides an initial indication of the technology’s revenue generating potential. As part of this assessment, a preliminary prior art search of the technology is performed to help determine IP protectability. A prior art search is important because the technology must exhibit at least one element of novelty to be considered patent eligible. The results of any prior art discovered may prohibit or limit what can be claimed in a potential patent application.

Assessment findings are documented in a Technology Review Form (TRF). The TRF along with any relevant prior art is shared with the inventors for their feedback to ensure the IDF was properly interpreted and evaluated.

This step can take up to thirty days to complete 

Step 4 – Executive Review

A WVU Executive Review Committee reviews the IDF, TRF, and any other relevant information to determine the next step. One of the three following outcomes typically occur:

1. WVU Files a Patent Application on the Technology

The OIC may commission a third-party legal firm to confidentially draft and file a patent application on the technology.

2. WVU Offers the Technology Back to the Inventors

The OIC may offer the rights of the technology to the inventors if they wish to pursue their own commercialization interests. This typically occurs if the technology is determined to have low commercialization potential. If the inventors wish to own the rights to the technology, the inventors must sign a Technology Release Agreement (TRA).

3. WVU Retains the Technology for Further Development

WVU may retain rights to the technology with the intent for it be further developed so that the technology can be reassessed for IP protection at a late date. This typically occurs if the technology is determined to be underdeveloped but may have a high commercialization potential.

Step 5 – IP Filing

For technologies that do not have an immediate commercial opportunity, WVU will typically elect to file a U.S. provisional patent application. For technologies that have an immediate commercial opportunity, WVU will typically elect to file a U.S. nonprovisional and/or an international patent application depending on the invention’s potential in foreign markets. This step can take up to thirty days to complete. 

Step 6 – Marketing

The OIC will utilize a network comprised of WVU Corporate Relations along with internal and external partners to market the technology. Marketing begins by drafting a one-page, non-confidential disclosure (NCD). Once the draft NCD is approved by the inventors to ensure the technology is properly represented and IP protection has been procured, the NCD is shared with WVU’s network for marketing.

Step 7 – Revenue Generation

Revenue generation from patented IP can take many forms. As detailed in WVU Board of Governance Rule 1.5, Intellectual Property, revenue share is forty-percent to the inventors, forty-percent to the university, ten-percent to the college, and ten-percent to the department of money made after expenses incurred by OIC have been recouped. The most common route of revenue generation is by licensing the technology to an industry affiliate who is well-equipped to profit from the invention in the marketplace. Other paths for revenue generation include, but are not limited to, building a business startup around the technology, raising venture capital, partnering with industry for commercial development, or procuring additional research funding.

IP process graphic text version.