Steps and Payment Responsibilities in the Typical Patent Process at MWU

Steps and Payment Responsibilities in the Typical Patent Process at MWU

Step # / Description / Payment
1 / A faculty member files an Invention Disclosure form with the ORSP. The ORSP reviews the form, follows up with questions for the faculty member, and often involves an attorney or outside consultant to assess whether it appears sufficiently complete to move forward with a review. An Assignment Agreement will follow. / If an attorney or outside consultant is involved, this will be covered by the ORSP or the CFO’s budget.
2 / When deemed necessary, an Ad Hoc Patent Committee meeting will be called to review the technology, to make a recommendation to MWU’s President. In addition to the scientific background, the faculty member is expected to present the commercial value of the invention. A writtenCommercial Assessment is typically developed using an outside consultant, prior to the Ad Hoc Patent Committee meeting. / MWU’s ORSP typically covers all costs associated with thedevelopment of a Commercial Assessment.
3 / When MWU decides to support an invention, the faculty member and their college are delegated the authority by MWU to work towards filing a provisional or non-provisional patent, as approved by MWU’s President. Since the ORSP is not directly involved, the college/faculty member should keep the ORSP informed of progress. If an Inter-Institutional Agreement (IIA) is necessary between co-inventors at another institution, the ORSP and consultant IP attorneys will negotiate the terms of the agreement. / The faculty member’s college is responsible for covering allassociated costs of filing a provisional or non-provisional patent. The ORSP is responsible for all attorney fees associated with negotiating an IIA.
4 / When a provisional patent was originally filed, it is up to the college dean to decide whether to support a subsequent non-provisional or PCT application. This decision should consider scientific progress, the likelihood of identifying a licensing partner, and cost. The ORSP should be apprised of progress, but does not directly participate in the process. / The faculty member’s college is responsible for covering all associated costs.
5 / Once a provisional or non-provisional patent application is filed, Marketing Materials should be Developed for the technology. The ORSP will typically use an outside consultant to develop “market-appropriate” materials, and the ORSP and faculty member will approve all materials prior to public disclosure. / MWU’s ORSP typically covers all costs associated with the Development of Marketing Materials.
6 / After marketing materials are approved, the technology should be Marketed to Prospective Commercialization Partners with a specified timeline. A succinct Marketing Plan is typicallyDevelopedby an outside consultant, describing the approach and reason for targeting specific markets. MWU’s ORSP and faculty member will approve the Marketing Plan. / MWU’s ORSP typically covers all costs associated with the Development of a Marketing Plan and Prospective Commercialization Partners.
7 / If MWU or a faculty member is successful in identifying a licensing partner who is willing to move the patent forward and cover the associated costs, MWU will enter into a Licensing Agreement. The ORSP and CFO will be directly involved in negotiating the terms of this step, typically using outside consulting IP attorneys. / Costs associated with review of the agreement by MWU patent attorneys will be covered by the ORSP or CFO.