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9.11 / Patent Management

The following patent procedures are preceded by the Wichita State University Intellectual Property Policy (hereinafter “IP Policy”), which should be consulted by those who are or may be developing patentable subject matter. The guidelines presented below must be used in the management of patentable discoveries at Wichita State University.

1.  Initiation by Inventor(s)

The inventor(s) shall initiate the determination of ownership and rights to a patentable idea in a written disclosure statement to the Wichita State University Patent Officer (hereinafter “Patent Officer”), who is located in the Office of Research and Technology Transfer (hereinafter “RTT”). In the disclosure statement, the inventor(s) will declare that a potentially patentable product or process has been developed, describe the nature and promise of the idea, outline the use of University equipment, facilities, and other support in the development of the invention, and identify parties who contributed to the development and to what extent. The Patent Officer will immediately notify the Vice President for Research and Technology Transfer that an invention disclosure has been received. If an agency or foundation sponsored the research leading to the invention, RTT will provide notification to the sponsor if required.

2.  Determination of Ownership

(a)  If the inventor(s) and the Patent Officer agree that the invention is not a work-for-hire and/or that the University did not provide “significant use” in its development, as defined in the IP Policy, and that the inventor(s) are clearly the owner(s) of the rights to the patent, then the Patent Officer will provide the inventor(s) with a written statement to that effect within thirty (30) calendar days of receipt of the disclosure by the inventor(s). Inventor(s) may then pursue a patent on their own or they may negotiate with the Patent Officer in seeking University support in developing their idea and in seeking a patent. If a determination of ownership and a division of net royalties cannot be agreed upon by the inventor(s) and the Patent Officer in this time frame, then the statement submitted by the inventor(s) and any unresolved questions about it will be sent to the Faculty Support Committee (hereinafter “FSC”).

(b)  If the significance of University support is unclear, in dispute, or clearly known to have occurred, the FSC will review the application and determine: (1) whether the University provided significant use of University support in the development of the idea, (2) which faculty, staff, and students participated in the development and the extent of their contribution, and (3) a fair division of the net royalties should any result. The FSC will prepare a report of its findings and recommendations, and will provide copies to the Patent Officer and all identified participants in the patent development. This review process should normally be completed within forty-five (45) calendar days, but the committee can request an extension from the Patent Officer of thirty (30) days.

(c)  If it is determined by the FSC that the University did not provide significant use of support and that the inventor(s) are clearly the owner(s) of the rights to the patent, then the Patent Officer will issue a written statement to that effect to all parties within fifteen (15) days of receipt of the report from the FSC.

3.  Invention Evaluation

(a)  If it is determined that the university has ownership rights, or if the inventor(s) request, then the Patent Officer may enter into an invention evaluation and patent assignment agreement with an organization created for the purpose of obtaining patents and developing and marketing intellectual property (hereinafter “the Organization”). The cost of this evaluation will be borne by the University or the Organization. Normally, this process will take up to ninety (90) days, but is subject to the terms of agreement with the Organization. The Patent Officer will inform the inventor(s) of the status of pending evaluation agreements in a timely manner.

(b)  If it is decided that the University does not have an ownership claim, or does have a claim but elects not to pursue a patent, the inventor(s) may still request that the University have the product or process evaluated and file for the patent if the evaluation indicates the invention has commercial viability or supports ongoing research. In these cases, the inventor(s) and the University can negotiate an agreeable distribution of royalties.

(c)  The Patent Officer will review the evaluation made by the Organization and determine whether a patent should be sought by the University or rights to the invention should be released to the inventor(s). The Patent Officer is free to consult with any internal or external parties in this decision. This review process should not take more than fifteen (15) working days. The Patent Officer will inform the inventor(s) of the decision and the rationale for it. Appropriate confidentiality will be maintained. The University is under no obligation to pursue a particular patent.

4.  Disposition

Should a patent be issued and the patent be marketed or licensed, the University must recoup its investment in the patent before any royalties are distributed to the inventor(s). The resulting net royalties shall be distributed on a regular basis to the University and the inventor(s), at least once a year. If there is more than one inventor, the University shall disburse the inventors’ share in proportion to the relative extent that each inventor contributed to the invention development as determined by agreement of the inventor(s) and the Patent Officer or by the FSC. In addition, the University will provide the inventor(s) with information on the use of the patent, sales resulting from the patent, and the payments of the appropriate share of the actual revenue.

Effective Date:
April 5, 2001

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