Frequently Asked Questions (FAQs)

      Invention Disclosures           Licensing           Patents and Patenting    

                               Public Disclosure            Sponsored Research 

FAQs  - Invention Disclosures

How do I obtain an Invention Disclosure Form?

Click here to obtain the Invention Disclosure Form.

How does this Invention Disclosure Form get me research money?

The submission of an Invention Disclosure Form is related to commercialization of the technology, not to directly securing additional research funding. However, it may lead to research money for your laboratory in multiple ways.  One way is through the execution of a license agreement. Wake Forest shares a portion of revenue from licensed inventions with both in individual inventor and with the inventor’s department. The inventor can always divert their funds to their laboratory and may be able to request that their department do the same.  Another way is through the execution of a Sponsored Research Agreement with a corporate sponsor.  Sometimes a company wishes to both license the invention and also sponsor additional research in the laboratory.

I submitted an Invention Disclosure Form two months ago; when does my patent issue?

An Invention Disclosure Form is not a patent application. It is a disclosure of your invention to OTAM.  OTAM may decide to file a patent application on the technology, but submission of an Invention Disclosure Form is not a patent application.  After submission of your Invention Disclosure Form to OTAM, a case manager who will keep you informed of all major decisions regarding your file.  If OTAM decides to file a patent application on your invention, you will hear from OTAM and the patent attorney frequently. Being involved in a patent application can be time consuming for the inventor. Currently, patent applications (if successful) can take 3-5 years to be issued by the United States Patent & Trademark Office.

FAQs  – Licensing

I have a great relationship with a sales representative from XYZ Corp. May I negotiate a license agreement for my technology with him?

No.  Wake Forest is the owner of all intellectual property that is developed at Wake Forest, and only OTAM may negotiate licenses.  However, inventors can and do play a key role in the licensing process by contributing their knowledge of the field and commercial contacts.  If you think a certain company may have an interest in licensing your invention, contact OTAM.

If my invention was licensed for a fee of $100,000, how much do I get?

Under Wake Forest University’s and Wake Forest School of Medicine's Invention and Patent Policies (WFU Inventions and Patent Policy and WFSM Inventions and Patent Policy) that were adopted by the board of trustees in February 1999, inventors receive 35% of gross licensing revenues. So, in this case, the inventor(s) would receive $35,000. Most other universities recoup all of their patenting and licensing expenses before sharing with inventors.

My technology has been exclusively licensed to a company. Does that mean that it may not be licensed to any other company?

Technology that has been exclusively licensed to a company for a particular use may not be licensed to any other company for that same use.  There are occasions when a technology has utility in more than one field such that it has multiple possible uses.  In that situation, it may be licensed exclusively to one company to be used for purpose X, and licensed to another company to be used for purpose Y.  The field of use outlined in the license agreement determines whether or not an exclusively licensed technology may be licensed to another company.

Why does Wake Forest need my social security number?

Your SSN is used to process royalty payments that are generated from your inventions.  The process for distributing royalty payments is governed by the US tax provisions and it covers both Wake Forest and the inventor.

FAQs  – Patents and Patenting

I gave a talk last year on this; can we file a patent?

Public disclosure of an invention more than one year before a patent application is filed serves as an absolute bar to a patent.  Any public disclosure prior to filing a US patent application serves as a bar to patent protection in all foreign countries.

I have a good idea, but haven't done any lab work on it. Can we patent it?

To be eligible for patent protection, an invention must meet certain criteria including the following:

• It must be more than an idea; it must relate to a process, machine, manufacture, composition of matter, or new use of any of these.
• It must be novel; the inventor must be the first person in the world to invent the invention.
• It must be non-obvious; the invention must not be obvious to a person of reasonable skill and knowledge in the art to which the invention relates.
• It must be useful; the invention must have some utility.

However, a provisional patent application may be filed on inventions that have not yet been reduced to practice.

What is a provisional patent application?

A provisional patent application is one that is used to establish an early effective filing date with the US Patent and Trademark Office (USPTO).  The use of a provisional patent application allows the inventor up to one full year to further develop the invention, determine whether it is marketable, secure any necessary funding sources, or seek a corporate sponsor to license the invention, before Wake Forest undertakes the major expense of a regular patent application filing.

A provisional patent application will contain a complete description of the invention, any drawings that are necessary, and all specifications.  It need not include any of the requisite formal drawings or claims of conventional patent applications as it will not be searched or examined on its merits by the USPTO. Therefore, a provisional patent application will never become a patent and does not start the patent term running. Essentially, a provisional application extends patent protection for up to one year.

Prior to one year after filing the provisional application, the applicant must file a non-provisional patent application claiming priority from the provisional application or the provisional application will be considered abandoned by the operation of law.  When the non-provisional application is filed claiming priority from the provisional application, the applicant may include additional subject matter to supplement the original provisional application.

If Wake Forest decides not to file for a patent for my invention, can I pursue patenting on my own?

Perhaps, this practice is known as releasing an invention.  If OTAM decides not to patent an invention after receiving an Invention Disclosure Form, OTAM may release the invention to the inventors, who may then file for a patent on their own. After the invention has been released, it is important to remember that additional work done on the invention (e.g. later data) will likely be owned by Wake Forest. Therefore, it is important that the inventor works on a released invention away from Wake Forest and not use Wake Forest staff, equipment or funds for further work. 

May I call the patent attorney to talk with her directly about this application?

Questions about a patent application should be directed to the case manager for your invention in OTAM.  When a patent application is being prepared by an attorney, you may be contacted by the attorney to clarify issues and to ensure that the application adequately protects the inventions.  During this preliminary phase of the patent application, dialog between the attorney and the inventor is encouraged.

Administrative inquiries should be directed to your OTAM contact.  Additionally, please remember that all telephone calls to the attorney cost Wake Forest (and therefore the inventors) money. 

My graduate student was very helpful in executing the experiments for this invention; should she be listed on the patent?

Inventor ship is a legal determination that is made by the patent attorney. Only inventors are listed on patents. Inventor ship is very different than authorship. An inventor is the person(s) who conceived the invention.  So, if your graduate student did not contribute to the conception of the invention, she is not an inventor.  Who actually conducted the experiment is usually irrelevant in determining inventor ship for patent purposes. However, if your graduate student, in executing the experiment, substantially altered the invention or improved the invention, she may eligible to be included as a co-inventor.  Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.

If you would like to reward significant but non-inventive contribution to an invention, you may list co-contributors on a separate sheet of paper signed by all of the inventors granting some of the inventors' share of any income generated by the invention. 

Can we change the order of the names on our patent? I feel I was the "lead inventor"!

The order of names on a patent, unlike on a scholarly publication, is not significant.  The order of names may be changed on a patent application prior to issuance. However, once a patent has issued and assuming that it is a valid patent, the USPTO will only correct minor typographical errors made by the applicant or its own clerical errors.

FAQs  – Public Disclosure

What is considered "public disclosure"?

Public disclosure is any unrestricted disclosure to any person who is not bound by a confidentiality agreement or who does not work for Wake Forest. 

In the US, publication is considered public disclosure.  Please note that slides that are shown at meetings and poster sessions may be considered publications.  Other examples of public disclosure can include abstracts, online publications, a published thesis, and public commercial use.  Essentially, if a document or invention is available to the public, it is a public disclosure.

Does talking with OTAM about my invention constitute a public disclosure?

No. You may speak openly with OTAM without creating a public disclosure that could limit patenting of your invention.

Now that I've filed my Invention Disclosure Form, can I give a talk on my research?

While universities are dedicated to teaching, research, and the dissemination of knowledge, premature disclosure of information relating to inventions can sometimes be problematic from a patent application standpoint. The best rule of thumb is to move forward with your professional publication objective, but to MAKE SURE that OTAM is aware of upcoming publications, presentations, abstracts, etc.

Public disclosure of an invention prior to the filing of a patent application will operate as a bar for filing a patent application in most foreign countries.  It will also initiate the one year grace period offered by the United State Patent and Trademark Office (USPTO) to file your patent application after public disclosure.

Should OTAM decide not to purse patent protection of your disclosed invention, then public disclosure is not a problem (unless you or a co-inventor decides to file a patent); but, when in doubt, please do not hesitate to consult with your OTAM contact person. 

When does a journal article become public?

A journal article is considered to be public once it leaves the printer's office or once the journal places it online, whichever happens first. Practices for online publication vary greatly among journals and meetings. Some journals will e-publish a manuscript as soon as it is accepted. Others do not e-publish at all. Most meetings will put abstracts online several weeks before the meeting, but many will delay e-publication if the author requests a delay.

FAQs  – Sponsored Research

If a company sponsors my research, is it automatically able to license any resulting inventions?

Whenever Wake Forest accepts sponsored research funds from a company, there is a sponsored research agreement (SRA) that discusses what rights, if any, the company has to inventions created. Those rights are negotiated by the Office of Research before the company sponsors the research. When you submit the Invention Disclosure Form, it is important to inform OTAM of the sponsor for the research so that OTAM can determine what rights the sponsor has. The sponsor is almost always owed a report. Sponsors also usually have an exclusive option to obtain an exclusive license. This means that OTAM has to negotiate with the research sponsor first. Sponsors sometimes can have much more exclusive rights to inventions which may make it very difficult to move the technology to market. The best way to avoid the sponsor getting very broad rights to your inventions under the SRA is to let the Office of Research know that you don’t want the sponsor to have broad rights at the time the Office of Research is negotiating the SRA.

I have a manuscript prepared on results from a project that was funded by XYZ Co.; why can't I submit this paper for publication?

If you prepare any publication based on results from research covered by a Sponsored Research Agreement (SRA), the SRA usually stipulates that the sponsor may delay publication for a predetermined amount of time if the manuscript discloses information on a patentable subject matter that requires protection.  This gives the company time to take appropriate action to protect intellectual property that might result from the research that the company helped fund.  Even under SRAs, companies should not be able to postpone publication indefinitely. A delay of 60 days is not uncommon.