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Technology transfer and commercialization

A substantial amount of research is being conducted at Western ¾ÅÒ»Â鶹ÖÆƬ³§ 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 Commercialization, the "technology transfer" function at WMU. The Office of Research and Innovation oversees management of WMU's intellectual property and its commercialization. Contact ORI regarding research discoveries that may have commercial value, for securing IP rights (e.g., patents, copyrights) for such discoveries, and for IP commercialization strategies. ORI 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 commercialization

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

• Professional recognition and career enhancement.
• Potential to open up new funding sources for 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—The process of discovery and "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 Commercialization via the IP/Technology Disclosure Form.
3. Technology assessment—Technology and Commercialization 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 Commercialization 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 Commercialization

WMU Technology and Commercialization 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 outside advice regarding the patentability of the invention. Technology and Commercialization 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 Commercialization agrees that IP protection is appropriate, it will usually provide for legal expenses and subsequent maintenance fees for IP protection. Finally, Technology and Commercialization can assist inventors in licensing and other commercialization efforts.

Technology and Commercialization 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 sponsorships, 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 Commercialization 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.

Technology development fund

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

Startup Launch Fund 

The Office of Research and Innovation supports WMU tech startup company launches through the Startup Launch Fund. This year's competition is complete; future opportunities will be posted as available.

Contact

ORI Intellectual Property