Intellectual Property

The principal rights governing the ownership and disposition of new technologies and discoveries are known as "intellectual property" rights, which are derived primarily from legislation and common law granting patent, copyright, trademark, trade secret and integrated circuit mask work protections.

Technology transfer and commercialization

A substantial amount of research is being conducted at Western Michigan University resulting in new findings, developments and discoveries that can benefit society. The transfer of these discoveries to the commercial sector is coordinated through Technology and Innovation Advancement, the "technology transfer" function at WMU, and the Western Michigan University Research Foundation. The Office of the Vice President for Research oversees management of WMU's intellectual property and its commercialization through the research foundation.

Contact Dr. D. Clark Bennett, director of Technology and Innovation Advancement, regarding research discoveries that may have commercial value, for securing IP rights (e.g., patents, copyrights) for such discoveries, and for IP commercialization strategies. Technology and Innovation Advancement also provides consulting on how to work with corporations regarding IP issues and sponsored research, and how to maximize research impact by combining publications with IP rights

Benefits of inventorship and IP commercialization

There are several benefits and rewards of inventorship and participation in IP commercialization at WMU. Among them are:

  • Professional recognition and career enhancement.
  • Potential to open up new funding sources for a faculty member's research—the corporate sector.
  • A chance to become more competitive for landing government grants. The government wants to see a track record of generating IP.
  • Opportunity for personal financial gain, which can be significant.
  • Opportunity for bringing more resources back to WMU colleges and departments to support further research activities.
  • Compliance—disclosing IP is mandatory for complying with the terms of most, if not all, sponsored research and with WMU policy.
  • Contribution to public welfare and economic growth through improved products, processes and services.

Commercialization process

  1. Research—Begins the process of discovery or of "proving the concept" for a new technology.
  2. IP/technology disclosure—After the concept has been proven, the researcher needs to officially "disclose" the discovery to Technology and Innovation Advancement via the IP/Technology Disclosure Form.
  3. Technology assessment—Technology and Innovation Advancement reviews disclosure for patentability, practicability, market potential and the need for IP rights.
  4. Filing for intellectual property protection—Typically patent, copyright and sometimes trademark protection.
  5. Commercialization—The Technology and Innovation Advancement group helps find investors or corporate partners interested in the new IP. This may require WMU negotiating commercialization contracts such as license agreements.

Also be aware that dissemination of certain IP or research materials may require negotiating material transfer agreements.

The role of Technology and Innovation Advancement

WMU Technology and Innovation Advancement will provide advice on general issues related to patents, copyrights, and commercialization or licensing of technology. It will conduct an internal evaluation of the IP/Technology Disclosure Form and, when appropriate, obtain the advice of outside legal counsel regarding the patentability of the invention. Technology and Innovation Advancement will usually meet with the inventors as a first step in the evaluation. In some cases, industry feedback is sought as part of the evaluation process. If Technology and Innovation Advancement agrees that IP protection is appropriate, it will usually provide for legal expenses and subsequent maintenance fees for IP protection. Finally, Technology and Innovation Advancement can assist the inventors in licensing and other commercialization efforts.

Technology and Innovation Advancement incurs an ongoing expense and possible legal risks whenever patent applications are filed. Consequently, it is interested in filing patents that are likely to result in revenue to the inventor and the University. This revenue may come in the form of additional research sponsorship, licensing fees, royalties, and possibly equity interest in new companies established using the University’s intellectual property. 

Things for the inventor to remember

  • Keep excellent records of all ideas, concepts and strategies for development and implementation. This information is sometimes critical in the legal determination of inventorship.
  • Inventions should not be disclosed publicly until after the patent is filed or until a meeting has taken place with the Technology and Innovation Advancement group. Public disclosure includes oral presentations at scientific meetings, external seminars, publication as a thesis or dissertation, as well as publication in a scientific journal. In the United States, there is a 12-month grace period after public disclosure during which a domestic patent application can be filed. This does not apply in other countries. The ability to patent an invention outside of the United States is lost after a public disclosure. Loss of international patent rights can substantially reduce the commercial value of an invention and may negatively affect the ability to commercialize.

IP policies

Printable WMU IP policies

IP and technology transfer forms

Confidential disclosure agreements

Mutual agreement

One-way agreement, WMU

One-way agreement, company

Material transfer agreements

Incoming Material Transfer Agreements, non-UBMTA—Contact the research contracts administrator.

Outgoing Material Transfer Agreements, non-UBMTA

Uniform Biological Material Transfer Agreements—For biological materials, WMU is a signatory to the UBMTA.

Other

Intellectual Property Disclosure Instructions and Form

Non-Disclosure Agreement Terms Acceptance Form

Waiver of WMU Ownership Rights—No significant use of WMU facilities or funds.

Technology development fund

The WMU Research Foundation supports commercialization efforts at WMU through the Technology Development Fund.

Technologies at WMU

Federal government information

Contact

D. Clark Bennett
(269) 387-8218
Director of Technology and Innovation Advancement