Guidelines for Wistar Inventors

Roles in Technology Transfer
Patent and Licensing Process
What is Patentable Invention?
How to Disclose an Invention?


Wistar Policies and Procedures

Patent Policy
Ownership of Inventions
Revenue Sharing Policy
U.S. Government-Funded Inventions

Patent Policy

All Wistar faculty and staff (including student employees) are obligated to promptly disclose to Wistar all inventions that are either conceived or developed, alone or jointly with others, during their employment at Wistar. This disclosure may be made by contacting the Office of Business Development. Title to any such inventions will be assigned to Wistar.

If you believe that the results of your research may have led to an invention, which may or may not be patentable (see What is a Patentable Invention and Patenting and Licensing Process), you should contact the Office of Business Development. Go to How to Disclose an Invention for more information about the process.

It is important that you do this PRIOR to any public disclosure of your discovery because premature public disclosure could result in loss of patent rights.

When should you report an invention to be sure it can be protected before public disclosure?

• You have written a manuscript and are about to submit it for publication. We should file a patent application before the manuscript is published.
  
  
• You will present your work at a public meeting (including any seminar that will be presented to individuals outside of Wistar). In this case we should file a patent application before the publication of the meeting abstract or before the presentation, which ever comes first.
  
  
• You are awarded a grant from NIH for this work and the invention is described in the grant abstract, which is published on the Internet. We should submit a patent application as soon as you know that the grant will be awarde, since the abstract will be published by NIH very shortly thereafter.
  
  
• While it is possible, when absolutely necessary, to prepare a patent application in a few days, the Office of Business Development should have at least two weeks, preferably a month, to work with our patent counsel to prepare a quality patent application. Therefore, you are urged to submit the invention disclosure as soon as you are aware that any of the above events will occur.

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Ownership of Inventions

As a condition of your employment with Wistar, you are obligated to assign to Wistar any rights, title and interest in all inventions that are conceived or first developed during your term of employment at Wistar.

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Revenue Sharing Policy

Pursuant to Wistar's present policy on revenue sharing, the Wistar inventors will collectively receive a portion of any proceeds (such as license and option fees, royalties, milestone payments) from the commercialization of an invention. The inventors' share of these revenues are:
* 30% of the first $25,000 in annual revenues,
* 25% of next $25,000 in annual revenues, and
* 15% of all revenues in excess of $50,000 per year.
* 20% of any equity (stock) that is received as payment.

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U.S. Government-Funded Inventions

Wistar, as other nonprofit research institutions and universities who receive research funding from federal agencies, must comply with the Bayh-Dole Act (P.L. 96-517 and 98-620 as amended), which governs inventions made with federal funds. The law provides that nonprofit organizations and small businesses may elect to retain title to inventions conceived or first actually reduced to practice in the performance of work under a federal funding agreement. Wistar must disclose each such invention in a timely manner and comply with other regulatory actions. In addition, we must grant the U.S. Government a royalty-free, nonexclusive license for governmental purposes, give preference to U.S. manufacturers, give preference to small businesses, and share royalties with inventors. We must periodically report our licensing activity to the government.

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