WVU Innovate Express

A clearer path from research to market.

WVU Innovate Express provides industry sponsors two pre-paid licensing pathways to choose from to secure patentable inventions resulting from sponsored research at WVU. The program is designed to reduce business uncertainty and provide an accelerated approach to commercialization. The traditional sponsored research agreement model remains available at WVU in addition to WVU Innovate Express.

Eligibility and requirements for WVU Innovate Express:

1. Only new projects with no alterations to the scope of work or budget following execution.
2. The industry sponsor must agree to:
   1. Fully funded entire scope of work according to a budget mutually agreed by the WVU Principal Investigator (PI).
   2. Pay F&A calculated at WVU’s federally negotiated rate.
   3. Serve as the sole sponsor, without involvement of any federal or state funding.
3. The WVU PI must concur with the arrangement obligating to-be-determined patentable results of the research prior to commencing the research project.
4. The Office of Innovation and Commercialization (OIC) will confirm no separate, patented or patent pending WVU background IP is involved in the project elected for a pre-paid WVU Innovate Express license.
5. The industry sponsor pre-pays the non-refundable fee associated with the express, pre-paid license to receive the benefit of pre-determined financial terms for a commercial use license to patentable inventions resulting from the sponsored research.

Choose your express path:

WVU Express 1 Designed for sponsors who want early access with future flexibility.

WVU Express 2 Built for sponsors seeking long-term competitive advantage.

Nonexclusive license for five-year term Prepay greater of $10,000 or 5% of total budget (applies if budget exceeds $200,000) No royalties or annual minimum royalties No sublicensing Reimbursement of patent protection fees and expenses Option to negotiate either (i) renewal to a five-year nonexclusive license for a second one-time fee or (ii) an exclusive royalty-bearing license, as mutually agreed during the six-month window prior to termination of the initial five-year license

Exclusive worldwide license for life of patent rights Prepay greater of $15,000 or 10% of total budget (applies if budget exceeds $150,000) 1.5% royalty on net sales Sublicensable (pass-through royalty) Royalty increases from 1.5% to 2.5% if sales exceed $20 million per year Reimbursement of patent protection fees and expenses

• Sponsor pre-pays license fee prior to or simultaneous to signing SRA in order to secure Express License 1 or 2.
• Sponsor reimburses WVURC it's documented external patent fees and outside patent counsel expenses (no mark-up) to protect the patentable research results during the term of the SRA and the express license.
• Sponsor has perpetual right for internal use of data from SRA.
• Pre-payment non-refundable; invention disclosure/patent application not guaranteed.

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Traditional sponsored research agreement model is also available:

The ability to negotiate a traditional SRA, exclusive option, and royalty bearing license, all remain available. The traditional framework provides the industry sponsor with a time-limited option to negotiate a royalty/fee bearing license to WVU inventions resulting from the sponsored research agreement. Under the traditional approach, the option provided in the sponsored research agreement has no upfront fee. The traditional sponsored research option enables the University and Industry to negotiate financial arrangements for a commercial use license to the intellectual property resulting from the sponsored research at the time the University discloses the results of its sponsored research.

Under the traditional SRA, the sponsor receives a time limited option with no up-front fee to negotiate a royalty and fee bearing license to the results of the sponsored research, commencing upon the date the results are delivered under the SRA, concluding six-month following disclosure.