Intellectual Property and Technology Transfer at WSU

Eric Wannamaker: I am Eric Wannamaker. I’m with the Office of Commercialization, which is part of the Office of Research within the Lighty Building. I appreciate Emily setting this up and the ORAP doing their outreach thing. So I’m going to be talking about the things on the slide today. Basically, just what is the Office of Commercialization? What is some basic WSU policy?

Eric Wannamaker: I’m not going to dig too deep into it, but I’m going to give a few slides on the basics of WSU IP policy. Then I’m going to just do a summary of the IP types and talk about some entrepreneurship resources at WSU as well, and then hopefully we’ll have some time at the end. It’s a lot of different material in here, but I’m hoping to have a few minutes for questions at the end as well, and you’re always welcome to put notes into the chat or questions into the chat.

Eric Wannamaker: I put my email address and the Office of Commercialization website into the chat so that you guys have those available. All the contact information for members of of the Office of Commercialization are on our website as well. So I encourage you to to use that. The idea is that we have resources available and we have a mission to to try to get the products of research out to the world.

Eric Wannamaker: And the Office of Commercialization is one of your your tools. We can help you with that along the way. That being said, entrepreneurship is sometimes getting technology out of the world really requires a lot of effort from the researcher themselves as their own advocate. And I encourage faculty members to to look for graduate students that have that spirit as well, because a lot of times the graduate students are the ones that can maybe form a startup company or have a little bit more enthusiasm to work with the corporate world as well.

Eric Wannamaker: So that’s it for the title slide. We’ll see if I can advance this. There we go. So I don’t think I’m going to bring up my my live stream here, at least not right away. This is a snapshot of the homepage for the Office of Commercialization. On the left, you’ve got the different different tabs that are available. One that I’ve highlighted, there’s Resources within Resources.

Eric Wannamaker: We have a CITI program on tech transfer that’s about 3 hours for anyone that’s interested in, in digging a little bit deeper into intellectual property and technology transfer at universities. And then the Let’s Connect tab is where we have our contact information that I was mentioning for myself and my colleagues. I have been a technology licensing associate that recently transitioned to be a part of the patent portfolio management team. Disclose Inventions: there,

Eric Wannamaker: The light bulb on the home page for the Office of Commercialization is very important. That’s that’s the way that disclosures are actually made to our office and beyond being here as a resource to help people get their technology out to the world. We have a compliance function because when federal agencies fund research at WSU, we have to then report the product of that research back to the federal agencies along the way, both the initial disclosure and then as we utilize that technology, we have to let the agencies know when we license that and when we are when we’re making money off that, if we get any royalties back from it.

“Eric Wannamaker: So Disclose Invention is…

 – [Emily Brashear] Quick question.”

Emily Brashear: Sorry, don’t mean to interrupt, but do… If somebody invents something, do they have to contact your office?

Eric Wannamaker: Yes, I have that in the following slides. There’s a must disclose provision within Executive Policy 38, which is the intellectual property policy for WSU. And I’ll I’ll get to that in a little bit more detail in a few minutes. But but, yes, there’s generally an obligation for certain types of intellectual property. It’s it’s a little bit looser, though, and I talk about that as well as we go through here.

Eric Wannamaker: So Bayh-Dole is the federal law that essentially said that federal agencies that have a mandate to do research have to they have to spend some money on small business, but they also do a lot of that research through academic institutions, obviously. So back in the sixties and seventies, there was the perception that the research wasn’t actually getting back out to the public.

Eric Wannamaker: So therefore they allowed the institutions to own that intellectual property. So that’s why technology transfer offices exist, such as what we’ve got at WSU. And the Office of Commercialization is just a different name for technology transfer office for those who might be familiar with other institutions that use different terminology. I’m not going to talk too much more about the Office of Commercialization right now.

Eric Wannamaker: It’s a process, though. So we take the disclosure. We have a compliance function to report that. We evaluate the disclosure, to say, “Hey, is is this is there something patentable here and is it worth patenting?” So we do some market assessment as well as the patentability. And then we we work to protect the IP as appropriate and then and then help the, the invention team or the research team find a a licensee, either a startup company that might license that technology from WSU or existing industry.

Eric Wannamaker: And I think that’s that’s going to be fine for for that. So WSU EP 38 disclosure requirements I know this is a busy slide, but basically got four different sections on it. At the top there. It talks about people that are that have done a lot of research and other institutions might already have patents in their portfolio that they’re inventors for.

Eric Wannamaker: So there’s actually a requirement: I don’t know how often we see this, but people can send a memo to our office through their their college saying, “Hey, here’s my list of IP that kind of preexisted my time at WSU.” The second main blurb there goes to what Emily was asking about primarily, which is for patentable inventions. There’s a must disclose requirement to our office, and that’s also within Washington state law.

Eric Wannamaker: And those are done through the inventor portal that I pointed out on the previous page. For publication, we talk a little bit about confidentiality, so we want you to disclose patentable inventions to our office before you you talk about them at conferences or out to audiences that might be from outside WSU because patent rights can be affected or limited or nullified by prior disclosures, depending on the jurisdiction. And then for copyright and other forms of intellectual property.

Eric Wannamaker: It’s not a must disclose really. Authors are encouraged to disclose to and work with the OC on copyrightable works, which are suitable for commercialization. If those works are owned by WSU. Which brings up the separate question of of ownership, which I’m going to get to in the next couple of slides. But, but the bottom line is that colleges and departments may actually have programs that they’ve they’ve essentially run either as service centers or on the way to being a service center or or kind of forming a business or an enterprise.

Eric Wannamaker: And they may have a trademark that they’ve formed. They may have copyrighted materials, written materials, graphics, that sort of thing. Those don’t have to be automatically disclosed to commercialization unless there’s a desire to to pursue commercialization on them. That’s assuming that there’s not a related patentable invention. So sometimes we get something like a a software, a piece of software that has copyright that attaches to it.

Eric Wannamaker: If that software is clearly implementing something that would be a patentable invention, then there is…you still would have to disclose it to our office. But what I’m saying is there’s sometimes copyright that’s unrelated to an actual invention. And again, this is just an introductory presentation. So I encourage anyone who’s got questions like digging into this that doesn’t want to dig into the policy themselves, that you can reach out to me or other people in my office if you’ve got questions.

Eric Wannamaker: Part of the OC’s mission as well is to, is to kind of manage the IP policy and provide advice and counsel on IP policy, even though I should also say that we are not counsel for WSU, even if some of us have law degrees, we’re not acting as lawyers in our WSU capacity. And unfortunately, I have to say that just because I’ve got ethical requirements to do so.

Eric Wannamaker: Okay, so is it WSU IP? Generally patentable inventions that are created by researchers at WSU are going to be owned by WSU in some manner. So essentially, I think of it as being kind of a default to WSU ownership for patentable inventions. That doesn’t mean that someone can’t be inventing stuff in their garage completely on their own time, but it seems unlikely if someone’s doing work in their own fields, thinking about it in their office, writing on their computer, doing research on the computer, using lab resources.

Eric Wannamaker: It’s most likely going to be patentable or it’s most likely going to be owned by WSU. It’s kind of the opposite presumption, or for purely copyrighten works. So if a researcher at WSU is writing a book in their fields of teaching or research at WSU, unless they’re using substantial WSU resources, unless they are doing that pursuant to a commission or they’re doing that directly supporting a federal grant, it’s probably going to be owned by the professor or the researcher themselves.

Eric Wannamaker: So they can they can shop that book out as they see fit. They don’t come through the commercialization for that. Similar with artworks, recordings, that sort of thing. Creative works are generally going to be owned by the by the individual, even though they’re employed by WSU. But that’s that’s just the general rule. Each situation is different and, and sometimes people stop at that first paragraph and they don’t go on.

Eric Wannamaker: So the multiple paragraphs after that to talk about the caveats. So I just have a short excerpt here on the bottom right of your screen where it says, “The university shall not assert ownership in various types of of copyright works.” And then it continues unless and then what you don’t see here is there’s like a couple of pages of of explanation of the caveats.

Eric Wannamaker: So and departments and colleges actually have something that to do with with whether they’re going to interpret the use of resources as substantial use of WSU resources such as can you use your computer, can you use software that’s that’s bought by WSU to do your own private work? Generally at WSU for professors, they’re kind of expected to have 20% of their time that they can they can pursue individual contracting consulting that sort of thing.

Eric Wannamaker: So you can do your own private business, but you also need to be careful with conflicts of interest. And there’s a separate a separate contact with an Office of Research that I can point you to. Four for conflicts of interest. If you if you are going to start your own business, such as a consulting business or something a little bit more substantial to actually put a tech into work and license something from WSU or develop your own IP.

Eric Wannamaker: So that’s for, that’s for employees. So, so research assistants, full professors, staff members, all, they all have some obligation to disclose and to at least at least evaluate or let us help you evaluate whether whether the actual IP is is yours outright or WSU’s. For undergraduates: generally the the assumption is that are the default is that they’re going to own their IP outright.

Eric Wannamaker: They’re they’re most likely not employed by WSU as researchers unless they’ve got some sort of special standing agreement that they’ve signed up to be part of a research project, part of a lab. They’re probably going to own outright that being said, we will we will potentially propose if a if a project of an invention has multiple inventors and some of them are WSU employees and one of them or two of them are undergrads, we may we may give them the option to assign it to WSU, which is completely voluntary in their part. The reason why that would make sense for a student to do is because that that gives unity of ownership, which allows

Eric Wannamaker: for easier licensing, makes it more attractive to a business partner to then license that so they don’t have to then say, well, I got this IP, but I’m not sure because that student might might go in and give it away on their own. For example. So the invention is one thing. The other thing is a student that’s listed as an inventor.

Eric Wannamaker: If they assign that to WSU, they can still get the share of royalties, the same as the other inventors on the project. The only thing that I would point out that sometimes faculty members are are too generous on is the idea of what is an inventor. So if even a grad student, if if a professor has been working on something for five or ten years and a graduate student comes along and is really helpful to them, sometimes the professor wants to say, okay, they’re part of the and they’re part of the inventor team on this.

Eric Wannamaker: That’s sometimes appropriate. But but sometimes it’s not. Sometimes that person should just be listed as a contributor. If the faculty member thinks they should get a share of the royalties, but they weren’t necessarily part of the conception, which for the U.S. Patent and Trademark Office, the USPTO conception is is the key to inventorship. And then I had a couple of notes at the bottom of the slide that were kind of focused on, on students, because some of these slides I include within student presentation.

Eric Wannamaker: So I’m not going to focus on that right now. Just wanted to let you know that there is this guidance available on the EP 38 and then the faculty manual is actually referred to within the the IP policy manual as well and has some additional… In fact the excerpts on the previous slide were from a faculty manual talking about copyright ownership or the presumption that WSU would not take — sorry about that — would not take ownership. OK. IP royalty sharing: again, there’s a lot of material and the policy on this, but in general WSU is going to share IP royalty fifty-fifty with the inventor team.

Eric Wannamaker: So if there’s four inventors, they’re each going to get one-eighth share and then WSU is going to get half of the share. And I think that’s sufficient for today’s introduction, but we can dig into that further. If anyone wants to do that after after the fact. So talk a little bit about policy. We’ll talk a little bit about IP.

Eric Wannamaker: I’m not going to go into it very deeply. It’s mostly kind of an introduction or view. What is IP? The World Intellectual Property Organization has a pretty good definition: “creations of the minds,” but it’s not just ideas. It needs to be an idea plus something else. So for copyright, it’s its creative expression that’s fixed in a tangible format.

Eric Wannamaker: For an invention, it’s it’s actually explaining how to do this, this new useful non-obvious thing for trademarks. It’s actually you’re using this mark, the service mark or this trademark in commerce. And that the reason I have the quote from the Constitution at the bottom of the slide is because I think that helps people understand IP better.

Eric Wannamaker: So the the patent and copyright clause within the US Constitution is one of the enumerated powers for the for the Congress, and it’s “To promote the progress of science and useful arts, by securing for limited time to the authors and inventors the exclusive right to their respective writings and discoveries.” So there’s a bargain there. You put your information out to the world. You let the government know in the case of patent how to do the particular thing. And then you get a a specific term where you can then exclude others from doing the same thing.

Eric Wannamaker: In the case of copyright, it’s a bundle of rights. So so publishing, making, derivative works, performing might be included there. For for a patent, it’s actually practicing that patent, but it’s not a monopoly to do that thing because for a patent you may actually have to license other people’s patents in order to make your patent work, in order to put it into a product or service, it’s going to do work

Eric Wannamaker: IP value to the market: top left of this slide is is just pointing out that multiple forms of intellectual property can be in one particular product or service. So I think one of the easiest examples for this is to think of a of a piece of software there might be hidden things in that software that the user never sees because they’re in the source code.

Eric Wannamaker: Those might be trade secrets if they’re properly guarded. They also that that source code may also have automatic… In fact, it does have automatic copyright that attaches to it, assuming there’s some minimal level level of creativity. There’s also copyright and what’s presented to the user on the screen. And then there’s going to be usually there’s going to be some sort of trademark involved.

Eric Wannamaker: And in the the graphic s and the colors that are used in the user interface as well as the name for the product, there might be patentable methods that are used in that, in that in that software as well. So lots of different forms of intellectual property in one thing. On the right side of this slide, it’s just pointing out that 50 years ago most of the value in US corporations, actually corporations around the world was was tangible property.

Eric Wannamaker: It was either it was real estate, it was buildings, it was tooling on the on the factory floor. Over time, when we get to the present day, most of the value in the in the market is the intellectual property or the intellectual capital. And the reason I distinguish intellectual property from intellectual capital is there are things like data that don’t actually fit within the traditional categories of intellectual property but still have value.

Eric Wannamaker: And that’s something that our our office would be… we’re still learning about, but we’d be happy to work with researchers on on trying to use their data, protect their data, make it feed the research enterprise, or bring in bring in money. Those are valuable things. So but but yeah, businesses are looking for intellectual property. It helps them get initial funding, but it also helps them secure the value of their business.

Eric Wannamaker: So one of the types of intellectual property that I think is under under thought about is trademark. Trademark can can last as long as the businesses continue to use it. So after the patent is expired, after the copyrights have expired, there’s still value in that mark. So Disney is an example of this where Disney has their initial Mickey Mouse cartoon going out of copyright next year.

Eric Wannamaker: So Steamboat, the Steamboat Willie version of of Mickey Mouse will be public domain at that point, but Disney will continue to do fine. They’ve got a lot of other copyrighted works but they also have a name that that’s that that people associate with with certain types of entertainment. So one thing I didn’t put in the slideshow is Elon Musk has had some some interesting interviews within the last couple of years on on intellectual property.

Eric Wannamaker: One of the things he said, I think to Jay Leno was that patents are for the weak and you kind of pooh poohed patents. Obviously, Tesla and SpaceX have done some interesting things with patents. Tesla has patents, but they’ve essentially said that other people can use them as long as they they are operating in good faith. So if another car company sues Tesla, well then Tesla is probably going to sue them back for infringement.

Eric Wannamaker: SpaceX in the context of SpaceX, one of Musk’s points was that if you if you have a patent, then you’re actually giving the recipe to potential adversaries. So if you’re if you’re making ballistic missiles or orbital missiles, then if you have foreign adversaries that could use that technology, maybe you don’t want to put everything down on paper in a patent that also it’s kind of that bargain idea that I mentioned a few minutes ago also is a good thing to remember, because sometimes we get faculty members that come to our office and they say, “Well, I want to get a patent, but I don’t want to explain how to do everything.”

Eric Wannamaker: “I don’t want to give away all the secrets.” So that betrays kind of a fundamental misunderstanding of what a patent is. In order to get a patent, you have to say how you do something. You have to tell the government, you have to tell the world how to do it. And that’s that’s when you get that that return from the government.

Eric Wannamaker: It’s got to be an exchange of value. Yeah. So, so on patents being for losers or whatever. I think that’s also coming from the perspective someone who has forgotten what it’s like to be a startup that needs initial funding because having IP is how people are going to convince investors, banks to actually give them money to pursue this enterprise because an investor doesn’t want to give money to someone when another entity can run in at the end after everything’s been developed and just copy it and get it out there.

Eric Wannamaker: So just a summary: we’re actually going to today, we’re going to go in reverse order here. I’ve already talked a little bit about data being not traditional IP down at the bottom. We’re going to talk about trade secrets which can last forever. And they don’t they’re not registered in any way with the government. Trademark doesn’t have to be registered with the government, although there’s good reasons to put it on the on the USPTO registry.

Eric Wannamaker: And again that can last forever. And I’ve got a slide, at least one slide on each of these as well. Copyright can last. Seems like it lasts longer than a lifetime, so it seems like forever from a human perspective. But life plus or seventy or for corporations like Disney, it’s 95 from from the time it was published, 120 creation if for some reason they didn’t publish it right away.

Eric Wannamaker: Patents are generally 20 years. Although design patents are 15. Design patents are are considered a workaround. It’s a cheaper way to get a patent, but it actually doesn’t go to any of the functionality. It’s just the esthetic elements. And then patents are the most expensive to secure the IP protection because you don’t get it automatically. It has to be examined.

Eric Wannamaker: That is a really costly process. But once you get it, the term from your from your filing date is 20 years. We do something called a provisional patent, which is just placeholder. It’s not examined, but that gives us a year before we then have to can file the other. And the reason for the provisional is is multifold. But one reason is it allows you to then publish afterwards, but you’re already in the patent system, so you’re not going to lose patent rights.

Eric Wannamaker: And that’s also a cheaper way to get your your foot in the door on the on the patent system. And we’ll talk a little bit more about that in a few minutes. Trade secrets. So again, a wordy slide. The keys there are in italics that so you get a trade secret. You have to take reasonable measures to keep it a secret.

Eric Wannamaker: You have to limit the number of people that have access to that secret. You have to maybe do nondisclosure agreements for the few people that are involved. You have to maybe put formula under lock and key and a safe. And then you also have to you have to make sure that it’s not something that people can reverse engineer.

Eric Wannamaker: And that’s that’s why we the only examples I have of this are really food, because even though modern chemistry can figure out a lot about the food, there’s there’s things that change in the in the particular process. So if you if you have a certain heating process for a duration, a certain temperature, it’s not going to be as clear how to reverse engineer that as it is the basic ingredients of a mixture.

Eric Wannamaker: For example, I should also say that I had the patent and copyright clause from the Constitution up earlier for trademarks and trade secrets. It’s actually under the Commerce clause. So and for trade secret, the the enforcement is not just infringement, but it can actually be criminal prosecution that’s under 18 U.S.C., which is the criminal code of the United States.

Eric Wannamaker: Most of the IP infringement actions are going to be civil cases. Trademark is is identifying the source of goods or services. So they allow you to build up brands, thus that you’re not going to be able to get a trademark on a generic. So if you if you named your gas station gasoline, then it’s not serving any function to identify you versus the other businesses that can use that generic name.

Eric Wannamaker: That also raises the issue of genericide. So a company that’s that’s selling a product called Kleenex as a tissue, if they allow Kleenex to become a generic word used by by the public, then they may lose their ability to enforce that trademark. And so they may take measures, information campaigns or or actively, you know, look at competitors there that are maybe using their their mark as a generic word or a descriptive word.

Eric Wannamaker: The best trademarks are going to be made up words or arbitrary usage. So I think of Apple Computer before Apple Computer built that brand, there was nothing to suggest that an Apple has anything to do with a computing system. So that’s an arbitrary use of the word. And really what they’re trying to do is they’re trying to protect consumers on the market so consumers can know to rely on on a particular company as their source of goods.

Eric Wannamaker: And it helps the companies to because they can build their reputation. The circle are as per registered trademarks, but if you start a company, you can even go ahead and start using the term or ask them for service. Mark right away. Just to let someone know that you consider that a trademark. So there’s there’s built in protections. I mean, I kind of mentioned this in passing earlier for copyright and trademark.

Eric Wannamaker: There’s there’s built in protections you don’t have to register right away both in the federal government and foreign jurisdictions. And states are going to have their own rules on on protection of trademarks and copyrights as well. Copyright is is a bundle of rights, as I mentioned, that’s on the top right there. And it goes to the the creative expression, though not the underlying facts or ideas.

Eric Wannamaker: So anyone here could write a story and publish a story that talks about a being from another planet that comes to the Earth and is able to have superpowers and do good deeds and save the world over and over again. And that’s fine. That’s no infringement on anyone. The basic story ideas is not copywritten. And once you assign a certain color suit with a little S on the chest and you talk about kryptonite, kryptonite being the the allergen for that super-being and you talk about that character being called Superman, well, then you’ve you’ve infringed on someone else’s intellectual property.

Eric Wannamaker: For WSU Copyright within EP 38. I didn’t update this to 2023. I’m sorry. We are supposed to mark it down. “Washington State University 2023.” All rights reserved. As I mentioned earlier, before you do that, though, I would I would consider whether it’s actually WSU IP and if you’ve got any questions come to the Office of Commercialization because that that doesn’t necessarily apply. That being said, departments and colleges may also develop programs where they want to have WSU IP that’s being built on their web page or whatever.

Eric Wannamaker: It’s, it’s published. It’s it’s a project that’s kind of going beyond any one person. And it makes perfect sense to have have the copyright on that for for WSU. And again, that doesn’t have to come to our office until there’s a decision that, maybe we need to license this out or pursue commercialization in some other manner.

Eric Wannamaker: Fair use, public domain: there’s there’s a whole nother discussion we could have on fair use a lot of people in the academic environment are are somewhat familiar with that already. The idea that you can take little pieces and as long as you’re not taking away someone’s market share by your use, in a lot of cases, that’s going to be okay. Patents has to be a certain subject matter has to be a thing or process a composition of matter that’s not found in nature.

Eric Wannamaker: It has to be something that’s useful, has to be something that’s new, that that that the patent examiners can’t find a single reference, a single prior patent or a single journal article that’s going to reveal everything about the claims that you’ve made that’s that’s related to obviousness. So for obviousness, if the patent examiner finds two or three different references and you can combine those references, they get all the elements of what you’ve claimed in yours, then they might say, that’s obvious.

Eric Wannamaker: And then our office or our outside counsel that that do the patent prosecution would then argue against that to say, “No, that’s not obvious because no one’s combined it that way before and here’s why they wouldn’t combine it that way. Here’s where some of those those pieces of prior art talk away from from the particular combination or or the improvement that was being made.”

Eric Wannamaker: The enablement requirement for patents is, I think, one of the most important ones. It’s the idea that you’ve completely talked to someone else in your fields, you’ve given a description, you’ve given diagrams, pictures that allow someone to go ahead and do the same thing, to replicate what you’re doing judicially. Judicially recognized exceptions. So e=mc^2. Brilliant idea, was never patentable.

Eric Wannamaker: It wasn’t specific to an application. Now there might be applications that came out of that where people were able to make inventions that were that were using that law of nature in some way. But they were specific applications that were that that were then patentable, that the natural law itself is not patentable or the abstract idea without an application is not patentable.

Eric Wannamaker: So you may be doing great research work, but until you so you think of it in the context of the market or a particular application that’s probably not right to come to our office or more importantly, to go to the USPTO’s office. And I said something earlier about the placeholder provisional patent application that’s about $150. We do that in-house without outside counsel, so that’s our cheap way to get our foot in the door. When we pursue a non-provisional patent application that may cost five to ten thousand dollars for outside counsel to prepare and file it for us.

Eric Wannamaker: And then it could cost ten, twenty more thousand dollars to prosecute it along the way to deal with office actions back and forth with the patent examiners. So we don’t pursue that. We don’t generally pursue a non provisional patent application. And so we have a pretty good idea that that we’ve got a license in the works. So we’ve got a business that’s going to agree to pay for that patent as part of the licensing because the taxpayers in Washington don’t want us to pay for a bunch of patents that are just speculative, that have no market because there’s there’s a patent.

Eric Wannamaker: If you narrow the claims enough, you can get a patent on lots of things. But if you narrow the claims enough, then businesses can go around those claims and do something that’s related, but it’s not technically infringing your patent. So we try to determine what is and what is a valuable patent versus what is patentable along the way to deciding whether to do a non provisional patent application.

Eric Wannamaker: Other other exceptions to patenting would be things like if you invents a new nuclear bomb, there are statutory restrictions on that. So you could put a patent application and but the federal government is going to come to you and say, “Let’s go into this little room here and we’re going to make you a deal. You can’t refuse.” “You can’t get a patent, but maybe we’ll figure out a way to compensate you in some way for that. Good work, deed done.”

Eric Wannamaker: I don’t want you to worry too much about the, the patent cooperation treaty system here. The two branches of the international system. But I do want to say that that the US Patent and Trademark Office is your foot in the door to foreign applications as well. So when we the provisional end that allows you to start talking about your work or publishing after that fact, or if you if you know that your your paper is up to be published soon and you say, well, that that journal is going to make a decision in a couple of months and then we think we’ve got a good shot of being published, you

Eric Wannamaker: know, shortly after that comes to our office and let us know what that timeline is so we can potentially put in a patent application before it’s published that gives us more options down the line. The US has a one year grace period. A lot of foreign jurisdictions have either shorter grace periods or no grace periods. So in a lot of the European Union, for example, as soon as you publish, you’re foreclosed from getting a patent in that in that jurisdiction.

Eric Wannamaker: But if you’ve got a provisional patent application in the US and then you convert that to either a US only application or a PCT application, which is just kind of the foreign equivalent still through the USPTO initially, then then your publication won’t be used as prior art against you. Prior art can be anything in the world, whether it’s in English or not, whether it’s in the US or not.

Eric Wannamaker: And the note on the bottom left of the slide US is now first-inventor-to-file vice first-to-invent. It used to be in the US 30 years ago that there would be fights over, “Okay, I put an application in, but someone else says that they actually had this working in the lab, you know, a few months or a year before me.”

Eric Wannamaker: Then you’d have to have a technical discussion, very fact specific on who actually invented it first. 15 years ago, the US joined the rest of the world essentially, the rest of the world, and going the first-to-file jurisdiction. So its first inventor to file, you resolve a lot of those ambiguities by just saying, okay, if, if they got the patent application in first, then they win the race.

Eric Wannamaker: Okay, I think that’s good enough for now. I already mentioned this, right to exclude others. So that’s the main gist of this slide. When I talk to students, I usually have an example patent that I show to them as well, just to show them how complex it is. And I also encourage students, and I might as well encourage other researchers as well.

Eric Wannamaker: So when you’re doing background research on a project, go ahead and pull a few patents. There’s there’s great search tools now that do English language search around the world, including Google patents. Works great for as far as I’ve seen in the last year or so. So go ahead and do that and you start to see how the patents are written as far as their background and how they how they enable the invention with the specification of a description.

Eric Wannamaker: And that can help you for future works too. So draft papers so that they not only are good papers for for academic journal purposes, but they also form the good core of a patent application and that will make the that will allow the lawyers to to serve you even better, to have a powerful patent application that’s going to withstand scrutiny.

Eric Wannamaker: But a patent application is going to have the background, it’s going to have figures. It’s going to have some other extraneous information in the header, It’s going to have a lot of description of of how it works. And then what it ends with is a set of claims. So a claim is one sentence. Although, it may be a sentence that stretches over half a page of different clauses.

Eric Wannamaker: And it’s a it’s something like a device that includes element one element to element three, connected element one configured to do a certain thing, or it would have a method which is gathering this information and processing this material in this way, etc. The simplest claims are actually going to be a lot of the chemical and biological compositions and sequences, because for a for a biologic not found in nature, for example, part of your your enabling disclosure, part of your specification would probably be a sequence listing these days.

Eric Wannamaker: And then within the claims you would simply say, I claim this organism defined by sequence A or with 95% similarity to sequence, sequnce A so. Yeah, use Google patents as part of your basic research. I don’t expect that to be the core of your research. Obviously academics are going to focus on academic works, but there’s a lot of good information to be found in patents and that can also you can pull a Chinese patent, you can pull a patent from India through Google patents or the EPO Espacenet is the European Patent Office. Espacenet is a good search engine as well.

Eric Wannamaker: The other thing is if you pull a few patents, you start to see the class codes on them and you can feed those into the search engines. So narrow your search to a particular field and you’ll get better results that way as well. And there’s certain ways that that academic papers sometimes differ from patents, like you might have some you express a lot of uncertainty or you some very narrow constraints.

Eric Wannamaker: And for patent purposes, you kind of need to avoid both of those extremes. So I’ve talked a little bit about, okay, I’ve talked a little bit about WSU policy and and intellectual property categories. The last most of the rest of the slides have to do with resources at WSU to help research teams that are interested in getting their their technology out there or or learning more about entrepreneurship and starting a company.

Eric Wannamaker: So one of these tools is actually run by the Office of Commercialization and it’s the Gap Fund which which bridges the gap between basic research funding. The Federal government is not looking for you to create devices necessarily. They’re just funding basic research so that funding only takes you so far on the technology readiness level. And then businesses may want something that’s proven to a higher level of readiness before they’re willing to accept that.

Eric Wannamaker: So the Gap Fund is just trying to give you some funding to get past that hurdle and make yourself more attractive to a licensee or to get your technology ready for a startup. And we’ve got on our on our website, there’s a there’s more information on the Gap Fund. There’s a Gap Fund guide. We’re currently going through the proposal for 2024 and that the cycle starts at the beginning or actually it starts usually in an early July when there’s a letter of intent due to say, Hey, I’m going to put in for a CGF project this year.

Eric Wannamaker: So those of you who have technology that’s going to be ready next summer, I definitely encourage you to think about the the CGF. I also, because there’s only a few people on this on this call, feel free to let your colleagues know all this information is out there and they can look at the OC website as well. But the CGF is based on WSU IP. Some of the other programs.

Eric Wannamaker: Some of the other resources that I’m going to talk about are available for students or others that aren’t even using WSU IP necessarily. They may just have a business idea and want to pursue that and they can use some of the other resources. Also, before we get to the kind of Washington State specific resources, this is the federal funding that’s that’s that agencies, big research agencies are going to be allocating to small businesses.

Eric Wannamaker: And some of you that have been around the research world longer probably are familiar with SPIRs and STTRs. But there’s a lot of money available through those programs. And I would encourage people to talk to the talk to the program managers for programs and plant the seed that, “Hey, I’ve got this work that looks like it has promise.”

Eric Wannamaker: And if you talk to people about it, maybe they’ll be able to spot an opportunity out there for you. Or you can even ask them, ask them to do that. Say, “Hey, this looks like it’s going to be a ripe technology in the near future we’ve got something brewing.” And sometimes they can kind of customize those those opportunities for you.

Eric Wannamaker: So look at sbir.gov, agency websites also have a lot of their their their focus areas, I-Corps programs. So and so the last couple of years we had a site grant for you to do its own I-Corps training. Right now we’re in a transition where we’re going to be part of a regional team, but we don’t have that set up quite yet.

Eric Wannamaker: But teams that WSU are welcome to participate in and the the I-Corps program that’s at UW. So we’ve got the link there for you. They will have a spring cohort and by the end of November you need to let them know that you’re interested in that. Again, a student team, grad students and undergrads can can be great to have maybe one faculty member plus plus students.

Eric Wannamaker: They can bring a lot of energy. If they really like the idea, they can they can shepherd it along and maybe have some legs. We’ve had some examples of that in the past years where people have actually done start-ups out of WSU and there’s still ongoing businesses. The other thing about I-Corps is there’s a national program. So there’s there’s these well, they used to be sites and now they’re more regional programs.

Eric Wannamaker: But those you don’t actually have to do those to be part of the national program. So if there was a really energized team that wanted to pursue the national I-Corps, they can do that. And then that actually unlocks some additional supplemental funds under the SBIR or STTR programs. Plus I-Corps gives you, you know, gives researchers a better sense of what some of their business considerations might be.

Eric Wannamaker: And will be an opportunity to learn about other funding that’s available and other ways to proceed. So WSU start up resources. And if anyone wants to contact me after this. Eric Wannamaker at WSU, that edu, I’m happy to give a PDF version of these slides to you. So this is some of the startup resources that are available. EFA Is a great program to talk to a faculty member with more experience that that might have done some some startup activity or licensing out in the past.

Eric Wannamaker: We’ve got facilities in Pullman, we’ve got the Small Business Development Center which is as affiliated with the Office of Research as well. And then the business school has the Center for Entrepreneurship, which among other things it has.

Eric Wannamaker: Carson Business Solutions is something available to not just people at WSU but businesses across the state and just provides some some basic analysis, as does the Small Business Development center.

Eric Wannamaker: But but there’s programs that are focused more on students and not necessarily on technology transfer. But these are all great resources for for interested people to learn about entrepreneurship, to get some ideas to be more effective in getting their their technologies out there. And then there’s also resources. And all the resources I talked about are available throughout the WSU system.

Eric Wannamaker: Some of the campuses have have individual programs as well that that might be available across the state. Everett is a community partner with the Northwest Innovation Resource… Work Resource Center, as you can see there. WSU Vancouver, I learned a little bit about this on my on my visit last year to their campus. They’ve got their Economic Development Council, which might seem like it’s regionally focused and it is. But a business in Spokane could still potentially partner with the Columbia River Economic Development Council if they’re doing business with Southwest Washington.

Eric Wannamaker: And then the business school has that both as a learning activity for their students, but also as a service to businesses in Washington State. Has their their MAP program there. WSU Tri-Cities has Entrepreneurs in Residence. Well, I should say this is just a partial list of resources that are available. Obviously, there’s labs throughout the WSU system that focus on particular fields and are good ways to network in a particular field.

Eric Wannamaker: But the the Institute for Northwest Energy Futures is one that that may have more commercial partners and than the average the average lab and then WSU Spokane I’m just going to I’ve got a whole page on that next because I SP3 Northwest used to be primarily a Spokane thing and only for health sciences or life sciences and its expansed.

Eric Wannamaker: So there was a Center for innovation at WSU Spokane that’s combined with with SB3 Northwest and they serve across the state in a kind of business incubator role and they serve all fields. And and I encourage people that are thinking about small business to at least contact them, let them let them give you their pitch directly. They also have they encourage people to affiliate with them to take advantage of Spokane economic development funds, which may actually make sense for some businesses that don’t have ties to Spokane because they could set up an office there, they could set up a virtual office or use some of the lab space from time to time, and that

Eric Wannamaker: may access other funds, or you may just want to use their mentorship, networking and not want to have any presence in Spokane. And that’s fine too. So I’m not going to spend any time on any more time on this slide. There’s there’s tools to hunt for money. There’s lots of private research institutions and funding institutions out there. And if you’re really looking for help, I think that’s part of the reason why people like Emily exist.

Eric Wannamaker: And she can correct me if I’m if I’m wrong on her role. But I think finding funding is one of one of the roles of of the Office of Research. But there’s going to be a lot of a lot of things that we aren’t aware of also in the private world or in a particular sector. Emily, do you want to correct me on that?

Emily Brashear: No, you’re absolutely right. We… Part of the Office of Research Advancement and Partnerships is to find funding for faculty, and it can be at any stage or aspect of what you’re looking for. And it it can be for your project to, you know, get a patent or any of those things. So it’s not just for research dollars as far as researching the project.

Eric Wannamaker: Thank you very much. And then the IREO office, I think that’s actually coming under OC shortly. But there’s different. So existing companies are sometimes leery of of working with a bureaucracy, a big state institution. But we’ve got various levels, funding and ways that they can sponsor research and we’re happy to talk to them as well, or talk more about what the options are with particular researchers and startup teams.

Eric Wannamaker: So the top of the slide talks about evolutionary versus revolutionary change. There’s there’s two reasons for that for patenting, if you have small incremental improvements in a particular particular technology, you’re going to have more of a challenge in actually getting that that patented that the USPTO is going to be able to point to more prior art and say, “Hey, you’re just making this smaller, you’re just doing something that’s kind of a predictable improvement in the field.”

Eric Wannamaker: So for patenting purposes, you want a revolutionary change, but also for convincing industry to make a change depending on the industry. If you say, “Well, I’ve got this device or this method that can yield a 1% improvement in whatever performance metric,” for some fields they may say, “Well, that’s that’s great, that looks wonderful, but we’re not going to change all our tooling.”

Eric Wannamaker: “We’re not going to change all our our sales methods or sales approaches. We’re going to stick with what we’ve got. That’s not enough of a revolutionary change for us.” So that’s not to discourage you from making disclosures on on kind of incremental improvements, but just realize that that’s a challenge. The other thing is get in the habit of disclosing get in the habit of of trying out ideas, because the first one or the first hundred might fail.

Eric Wannamaker: When I when I talk to students, I talk about this this pharmaceutical kind of picture here at the bottom of the slide where a lot of a lot of new substances enter the market. They’re, they’re… They start that patenting process and then they start trials and they fail along the way. They fail animal trials. They fail with initial safety trials with humans.

Eric Wannamaker: And and by the time you actually get through that process and have a a marketable medicine, you may only have five or so years left on your on your patent term. But also what this diagram points out is that it takes a lot of work, but there’s also a lot of money. There’s a reason why the pharmaceutical industry pursues a lot of different medicines that are going to fail because there is room in the market to to to essentially approve of that innovation in the end.

Eric Wannamaker: And even if they have a short patent term left again, the big companies can often compete with generics just based on their their branding, on their on their trademark over time. And then, of course, there’s things we can criticize about the pharma industry and other business, but we’re not going to worry about that right now. That’s a separate discussion as well.