For ease of printing, here is a summary version of all the steps involved in bringing your invention to WARF.
Protecting Your Idea
Researcher Notebook Guidelines
A researcher's success in obtaining a patent these days may depend not only on how original and useful the discovery is, but also on how carefully he or she has kept a research notebook. In the United States, being able to prove when you made an invention may be vital to getting a patent. In addition, patent claims are increasingly challenged by competitors. In such situations inventors may have to present their notebooks for inspection. Any irregularities in record keeping become red flags to an opponent's attorney.
Thus, researchers should take a few common-sense steps to protect themselves and their work. These practices not only help to back up patent claims, but also ensure against loss of valuable data, provide proof of fulfillment of contracts, and protect against allegations of conflict of interest or research fraud.
View our lab notebook guidelines
If you would like to receive more information and/or training on keeping a laboratory notebook, contact Cheryl Scadlock, Information Specialist at WARF.
Confidentiality Agreements
Unless done on a confidential basis, telling another party the details of your research may cost you patent rights. Such "public disclosure" can occur quite inadvertently when company executives or other researchers visit your lab or meet with you at conferences or other venues. Signing a written agreement prior to these meetings will document the intention of the parties to maintain the confidentiality of the information you provide to them. This can be achieved through a confidential disclosure agreement (CDA) between you and the other party.
For confidential disclosures that involve a technology disclosed to and accepted by WARF, please contact your WARF licensing manager to arrange a CDA between you and the interested company.
If you receive a company's CDA for signature, you may want to compare the provisions with the terms of WARF's agreement. Be particularly careful about any terms that are substantially different or more restrictive than the terms in WARF's CDA. Depending on the exact circumstances, such terms may be appropriate, but you may want to seek legal counsel on restrictive or unclear provisions.
View WARF's Standard Confidential Disclosure Agreement
Please contact your licensing manager if you need to arrange a CDA between you and another party.
Materials Transfer Agreements
Materials transfer agreements (MTAs) are agreements between you, another scientist, and your respective institutions. An MTA allows you to share your research materials, such as a cell line, plant germplasm, a chemical compound or a polymer, with another scientist for research purposes, while protecting your intellectual property rights to the materials. You should always have an MTA in place before sending your research materials to someone outside your laboratory.
To learn more about arranging an MTA, go to WARF's Materials Transfer Agreements page. If you have any questions, don't hesitate to contact your WARF licensing manager.
Timing: Disclosures and Publications
We suggest you bring your intellectual property to WARF as early as possible, preferably before any public discussion of the technology, so that we can help you to obtain the maximum benefit from U.S. and international patent laws.
Public Disclosure More Than One Year Before Filing a U.S. Patent Application
If you fail to file a U.S. patent application within one year of disclosing your invention publicly, all possibilities of obtaining a patent are lost. This rule applies in both the U.S. and in foreign countries.
Public Disclosure Less Than One Year Before Filing a U.S. Patent Application
The United States offers a one-year grace period from the time of public disclosure to the filing of a patent application. Thus, if you have already made a public disclosure of your invention but less than a year has passed since the date of the first disclosure, WARF should still be able to prepare a high-quality patent application on your work. This especially true if you bring your invention to WARF at least three months ahead of the deadline for filing a U.S. application.
Please Note: There is no one-year grace period for filing foreign patents. ALL foreign patent opportunities are usually lost if ANY disclosure occurs prior to the filing of a U.S. patent application. For certain technologies, this can be a major loss, since foreign markets may account for 50 to 70 percent of the income value of a technology.
No Public Disclosure Prior to Filing a U.S. Patent Application
This is the best possible case. If the technology is patentable, U.S. and foreign patent rights are obtainable. Please note that if your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to WARF prior to any public disclosures.
WARF needs some lead-time to consider a disclosure and, if accepted, draft an application. A total of three months is preferred, although accelerated handling is possible in some circumstances. Therefore, you should consider a disclosure to WARF at the same time you are preparing a manuscript for submission to a journal or are planning a poster session or public seminar. This also applies to dissertations being readied for submission to the library, abstracts, and other disclosures not usually considered "publications" for academic purposes.
The above disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Give your intellectual property manager a call if you have any questions.
Disclosing to WARF
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| During the disclosure meeting, researchers describe their inventions to WARF staff. |
Please note that until you submit a completed IDR form to us, we cannot process your invention further or consider it for patenting and licensing.
After we receive your form, an intellectual property manager will contact you to set up a disclosure meeting (see below for a description of this meeting).
Important note: If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact an intellectual property manager in your area of scientific expertise immediately. Guidance on who to contact may be found through our staff page.
University of Wisconsin Invention Disclosure Report (IDR) Form
The IDR asks you to provide information on the time of the discovery, any preexisting technologies and any pending or already-published articles on your new technology. This information is used by the UW-Madison and WARF to review funding sources and obligations for notification requirements and other rights. It also aids WARF in determining whether the invention will meet the U.S.Patent Office's criteria of novelty, utility, and non-obviousness or, if not, whether the invention can be protected by a means other than patenting. (For further information on these criteria, see the section Types of Intellectual Property Protection). It is important to have this information on record as early as possible, in case a patent is obtained and later challenged.
Print or download the IDR form
Invention Disclosure Tips
Every year, WARF reviews over 300 inventions made by UW-Madison researchers. Currently over half of these discoveries are accepted for patenting (or other intellectual property protection) and licensing. Some cannot be accepted because further research is needed before a patent application can be filed. Others, as meritorious as they may be on a technical basis, simply have a very limited commercial market. In such situations, patenting and licensing may not be practical.
A critical part of the disclosure process involves helping WARF to make the best possible commercial evaluation of your invention. You know your technology better than anyone else and are likely to be in the best position to define your invention's economic and commercial advantages. Before your disclosure meeting, please think about and list the commercial advantages and applications of your discovery on the IDR form.
- Commercial advantages: Improved performance, operating and/or purchase cost savings, etc. No matter how good technically, an idea can't be effectively licensed without such advantages.
- Key benefits over existing products: What are the benefits over existing products to the buyer or user? To the manufacturer? These advantages must be great enough for a company to take the risk and commit the resources necessary to commercialize the invention.
- List companies that may be interested in a license: However, DON'T disclose your technology to anyone prior to the filing of a patent application as this could affect WARF's ability to obtain a patent both in the U.S. and internationally.
The disclosure interview gives you an opportunity to explain your invention to WARF's staff. It is the first step in the process by which WARF decides whether an invention should be accepted for patenting. The disclosure meeting will be held with your assigned intellectual property manager. At times, one or more of WARF's licensing managers may also attend the meeting to ask questions relating to commercial matters.
If possible, please send a completed IDR form or some other brief, written summary of the invention (comparable to an abstract) to your intellectual property manager prior to the meeting. In addition, please bring any publications, abstracts, theses, etc. that relate to the invention, including draft manuscripts. Publications and patents describing closely related prior technologies are also valuable, so please bring copies of these items to your disclosure meeting as well.
The disclosure interview is an informal oral presentation. Expect to be asked what is new in your invention and how it can be applied for practical use. Your comments concerning the invention's likely commercial value, possible categories of potential licensees, and individual companies that may have licensing interest are very valuable and increase the likelihood that WARF will accept your technology for patenting and licensing.
Inventorship
It is a good idea for as many of the inventors to attend the disclosure interview as possible. Who qualifies as an inventor is a matter of legal definition and is also linked to the exact way the invention is ultimately defined. The attorney who eventually drafts a patent application on your invention will review the facts and list the actual inventors in accordance with U.S. Patent Office requirements.
As a first, rough determination of inventorship, assume that the list of inventors includes people who have worked on the invention by conceiving or elaborating on the idea, designing experiments, or evaluating experimental results; who have contributed patentable functional features while first building a device or performing a method; or who otherwise have directly contributed to the invention itself. Individuals who perform routine lab analyses, who assemble prototypes from detailed drawings, or who otherwise provide only entirely directed labor are in most cases not considered to be inventors.
WARF's Decision Making Process
In many ways, bringing an invention to WARF is like submitting a paper for publication or applying for a federal grant. Each invention is weighed against other inventions and evaluated for its appropriateness to WARF's licensing program. WARF's Patents and Licensing Department meets monthly to review the disclosures received since the previous meeting.
WARF's decisions are based on an evaluation of the type of patent claims likely to be obtained, the availability of foreign equivalent patents, whether a patent could be effectively licensed and enforced, estimated potential income, the timing of that income, and the existence of any administrative problems that would complicate handling the invention. Patents are expensive, typically costing approximately $20,000 for a U.S. patent alone. A ten-patent foreign portfolio might add $100,000 to this cost. In addition, governments charge maintenance fees during the life of the patent.
Please remember that WARF is obligated to evaluate new inventions not only on their technical merit, but also on their commercial potential and the enforceability of patent rights. Most technologies brought to WARF represent very significant technological advancements. But unless a reasonably sized, enforceable market exists or is expected to develop, these technologies unfortunately cannot be accepted for patenting and licensing.
The Equity Review
Once WARF receives and makes a decision on a new disclosure, the UW-Madison Graduate School will perform an equity review to determine who has ownership rights to the invention. If the Graduate School determines that federal funds did not contribute to the invention (and the inventor has not assigned intellectual property rights to an outside entity, such as a company), the inventors may choose whether or not to work with WARF in patenting and licensing the invention.
Please note that under the federal Bayh-Dole Act, the university's patent designee is WARF and any invention arising from federally funded research must be disclosed to WARF. If the foundation accepts an invention for licensing, the inventor is then also required to assign the discovery to WARF. To fully comply with Bayh-Dole, the university has developed a co-mingling policy, which dictates that if a researcher has any federal monies in his or her lab at the time of invention conception or reduction to practice, the invention is considered to be federally funded.
If WARF Accepts an Invention
If WARF accepts an invention, WARF applies for a patent and begins the processes of marketing and licensing. WARF pays all patent and licensing costs; there are no costs to UW-Madison inventors or authors for this service.
The Memorandum Agreement
Once an invention is accepted by WARF, the inventors and WARF enter into a short contract, called a Memorandum Agreement, in which the inventors assign the invention to WARF. In return, WARF agrees to share a portion of the royalty income with the inventor group in accordance with its policies and the policies of the university.
Once all WARF and university processing of a new and independent invention are complete, the inventors have signed all of the necessary WARF documents and a complete utility patent application has been filed, WARF pays the inventor group a $1,500 assignment fee. This payment does not apply to provisional or design patents, copyrights, biological materials or know-how.
Realistic Expectations
WARF's patenting and licensing efforts have permitted WARF to contribute substantial support to the university over many years. Nevertheless, it is important to have a realistic sense of the chances for economic success of any given invention. Typically it takes 60 to 100 disclosures from an industrial research and development program to yield one successful product that returns income substantially greater than the costs incurred.
The odds of successful licensing can be improved substantially by your contributions of knowledge about the marketplace, likely commercial applications of your work, and specific companies that are possible licensees. WARF's licensing efforts are also enhanced by your availability to talk to licensees along with WARF personnel, and your willingness to provide follow-up information, samples of materials, and similar assistance.
If WARF Must Decline an Invention
If WARF must decline an invention for one of the reasons discussed above, the inventors are free to deal with the invention as they please, subject to the rules governing federally-funded inventions and to any contracts that the inventors have signed, such as with a commercial funder of the research.
Under federal rules, the federal funding agency has the next right to take title to an invention WARF has not accepted. However, inventors interested in seeking a patent on their own may petition the federal funding agency for the right to do so. WARF can direct inventors to the person at the Graduate School who can help them file a petition. Such inventor petitions are usually granted.
Patenting
Once your technology has been accepted by WARF for patenting and licensing, a number of activities begin to take place. These services are provided by WARF at no cost to you. WARF pays for the patent and licensing costs associated with your invention.
This section provides a summary of WARF's patent process. You may obtain summarized information on the different types of intellectual property protection in the IP Primer section of this Web site and may visit the U.S. Patent and Trademark Office Web site to review the U.S. Patent Statute and other details.
Memorandum Agreement
Before WARF begins working on a patent application, all UW-Madison inventors must sign a WARF/Inventor contract called the WARF Memorandum Agreement. WARF also must receive a copy of a completed university Invention Record and Report, prepared by the inventors and submitted according to university procedures. WARF can supply inventors with copies of this short university form, which the university requires in order for the inventors and the university to fulfill their legal obligations to the federal government and to any extramural sponsor of research. Please prepare, sign, and submit these documents as quickly as possible, since WARF cannot proceed with the patent application process until after these agreements are completed.
Inter-Institutional Agreements
Occasionally, technologies are disclosed to WARF that involve collaboration between a UW-Madison researcher and a researcher at another institution. In order for a patent to be valid, all inventors, however located and affiliated, must be named on the patent application.
Some of these other inventors may have contractual agreements with their institutions or other employers concerning intellectual property rights. In such situations, WARF will arrange an Inter-Institutional Agreement with the other institution to permit clean licensing of the invention.
The Patent Application
In order to have access to a variety of legal technical specialists, WARF retains specialized outside patent attorneys to draft its patent applications. Before the attorney handling your invention begins to draft the application, your intellectual property manager will arrange for you and any co-inventors to meet with the attorney to explain the invention and supply other information. You will review the patent application before it is filed. In addition, you will be asked to sign a Declaration of Invention and a formal assignment document that is recorded in the Patent and Trademark Office.
Your input is crucial, both at the drafting stage and later, when the patent attorney must respond to Patent Office questions and comments. Although the attorney is responsible for writing the application and meeting Patent Office administrative requirements, it is difficult for a patent application to proceed smoothly without the committed participation of a lead inventor (usually the faculty member most intimately involved with the research). The whole process, from filing the application to obtaining a patent, may take anywhere from a year to several years. When the patent attorney describes the invention in a patent application, the description must be complete enough to enable a person skilled in the field to actually practice (duplicate) the invention. In other words, this enabling disclosure must reveal the best mode of practicing the invention. The best mode is the version of the invention that the inventor considers to be the best at the time the patent application is filed. If the disclosure is not enabling, the application will be denied. If the best mode is not revealed, and the patent is later challenged in a lawsuit, a court may find the patent invalid.
A patent application ends with a numbered series of statements called claims, each summing up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims set the metes and bounds of the invention covered by the patent.
Prior Art and Barring Events
Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is sometimes called the prior art. Prior art is the knowledge of prior artisans, that is, people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold for at least one year prior to the application's filing date, becomes part of the prior art for the application, no matter who did the publishing, using, or selling.
For example, if an article is published and then a year passes before a patent application is filed on an invention, the Patent Office will not grant a patent on the invention unless it finds that the invention is novel and non-obvious when compared to the published article. The one-year anniversary of a publication, public use, sale, or offer for sale, is commonly referred to as a bar date. After this date passes, the inventor cannot receive a patent on the invention.
In talking about published information, the patent statute refers to information disclosed in a printed publication. However, this term is understood very broadly. For patent purposes, "published" means any printed, photocopied, typed, microfilmed, or otherwise fixed communication that is available non-confidentially and is findable by those in the field.
Not only standard academic publications, but also abstracts, master's theses, Ph.D. dissertations, even tape recordings of speeches, all become "printed publications" once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc. Even Internet communications are normally considered printed publications.
While the U.S. offers a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications. For example, while a talk or poster session (without handouts or an abstract) may not have an effect on a U.S. patent application, either could immediately bar a patent overseas.
This discussion of prior art and barring events is only a summary overview. The law includes various exceptions and a seemingly common term, such as "printed publication," may have a special meaning in patent law. The U.S. or foreign effects of a particular event may not be obvious. Always tell the attorney drafting your patent application about any possible barring events so that the attorney can determine their importance.
Your patent attorney must be informed about anything that could be prior art for another, vital reason. Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
Patent Office Activities
After a patent application is filed in the U.S. Patent and Trademark Office, a patent examiner reviews it for utility, novelty, non-obviousness, and enabling disclosure. The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims. The attorney's responses and other efforts to adjust the claims and convince the examiner to accept or allow them, is called patent prosecution.
You will be asked at times to help WARF's attorney do the best job of answering these office actions. A quick, detailed reply to an office action is important because the patent office sets time deadlines for response.
The patent prosecution may take anywhere from a few months to several years. There is always a possibility that a patent may never be obtained, or if obtained, may not include the key desired claims that create commercial value. But if the application is granted, then the patent issues and the revised text of the application is published as a patent document.
Your intellectual property manager will send you a copy of your patent when it issues.
Patent Term
Currently in the United States, a patent has a life of 20 years from the date the patent application is filed. A change was made in 1995 to harmonize this aspect of U.S. patent law with that of the rest of the world. Formerly, the U.S. patent life was 17 years from the date of patent issuance. New patent law set forth in the 1999 American Inventors Protection Act allows for patent term adjustment to extend the life of a patent that has taken longer than three years to issue due to U.S. Patent Office delays.
Licensing
Your Licensing Team
The day your technology is accepted by WARF for patenting and licensing, it is assigned to a WARF licensing manager. These technology managers have technical degrees and years of industry experience in sales and contract negotiations. All licensing managers have access to your technology for licensing; however your assigned licensing manager is the one with the most knowledge of your technology and who shepherds it through the licensing process.
Your primary contact on licensing and commercial issues is your licensing manager. But your licensing manager is also part of a larger team that will work together to patent and license your technology.
The entire technology team consists of the following:
- You and your co-inventors
- Your intellectual property manager
- Your primary licensing manager
- Outside patent counsel
- WARF's support staff
- WARF's general counsel and associate general counsel
- WARF's research and marketing specialists
- Other licensing managers
One very important service provided by WARF is license agreement administration. Information on license agreements is entered into WARF's proprietary database system, including license fee and royalty details, payment dates, development plans and report timetables, and licensee and WARF obligations. If any anomalies occur, such as missed royalty payment dates, they are recognized, a report is generated and the assigned licensing manager reviews it. This system and the dedicated people who work with it help to ensure that WARF's licensing efforts are successful.
How You Can Help
WARF fully recognizes the busy schedules that UW-Madison researchers maintain. Once a patent application has been filed and patent office objections are dealt with, WARF can usually proceed with the licensing process with limited time involvement on your part.
Experience has shown, however, that when the inventor is willing to spend a reasonable amount of thought and time in assisting with licensing efforts, the licensing success rate is much higher than when the inventor is not available. Here are some ways you can help:
Educate Your Team
Your licensing manager, intellectual property manager, and patent attorney all have strong technical backgrounds. You are likely to find them "quick studies," but they need you to clearly explain the technical details of your discovery in order to do the best job for you. Remember that your technology, by the very definition of a patent, is novel and non-obvious even to skilled researchers in your field.
List Potential Licensees
As an inventor, you read the technical journals and trade magazines in your field. You also know the industry people who call you and visit your lab, as well as those who are active with competing technologies.
Provide this information to your licensing manager. Often the best potential licensees are those already known to the inventor. Give your licensing manager old copies of the publications you read, materials from meetings you attend, and any other information that relates to the marketing and commercialization of your own or related technologies.
Help to Identify Commercial Advantages
Sometimes there may be other ways to accomplish the same or similar results as with your technology. Tell your licensing manager about these competing technologies as well as the potential commercial advantages of your invention. If you inform the WARF team about these issues in advance, the licensing manager will be in a better position to properly represent your technology to potential licensees. Be candid in this process. WARF always wants to present potential licensees with a full and accurate picture of all technologies. Credibility is an essential aspect of licensing, and WARF has been successful with dozens of repeat licensees as a result.
Be Available to Answer Questions
Unexpected questions often arise when your licensing manager is meeting with potential licensees. You are the best and perhaps only source to fully answer these questions. Sometimes these very questions are a source of ideas for future research that may further increase the benefits of your technology.
Be Curious
Your role at many of the research conferences you attend may be primarily research-oriented. However, please take the time to look at any commercial exhibits:
- Is there an exhibitor directory that might be useful to your licensing manager?
- Does it look like any company is already using your technology?
- Are companies using other methods to get a similar result?
- How might your technology help them?
When Licensing Activities Begin
As a general rule, active licensing begins when a patent application has been filed with the U.S. Patent and Trademark Office. Once this has occurred, a company is able to evaluate the worth of WARF's intellectual property protection. By evaluating a company's response, WARF can in turn obtain an idea of the invention's commercial value. During this phase, you may be asked to review the technology with your licensing manager and to provide any post-disclosure developments affecting its value and marketability.
This timetable is subject to change, depending on the circumstances. If you and your licensing manager are able to identify a good licensee, licensing activities may begin earlier. In other cases, the technology may be so advanced that the market has not yet caught up with it. Then, the best strategy may be to wait until a potential licensee is available who can fully understand the commercial value of the invention.
The first step in WARF's marketing approach is to contact qualified existing customers and licensees. We prefer to provide interested companies with a publication by the inventor describing the technology. If this is not available, WARF considers patent applications without claims to be nonconfidential, and we can provide these to companies for review. Other WARF marketing activities are outlined below.
Marketing Activities
Your licensing manager will use one or several methods to license your technology, depending on what is warranted for the particular technology involved. Possible methods include:
Direct Personal Contacts
Before a technology is licensed, your licensing manager will discuss the technology personally with the potential licensee. Frequently, the first meeting will be the result of a telephone contact and visit to the licensee. This helps to clarify interest early in the process and enables the licensing manager to meet many of the individuals who are interested in the technology from various perspectives.
Direct Marketing
WARF's direct mail program is sometimes used to supplement direct contacts. This is particularly the case where there are many smaller potential licensees that can benefit from a processing method or other refinement. Inbound telemarketing with follow-up by your licensing manager is integrated with this program.
WARF Web Site
All of WARF's active technologies are listed on our Web site and can be easily searched by technology field, keyword, inventor name, and more. Our technology listing is also referenced on other sites, including the sites of the Association of University Technology Managers and Wisconsin Manufacturers and Commerce. A growing number of qualified potential licensees are contacting WARF based on information they first obtained from the Web site.
Technical Presentations
Your own presentations and papers at scientific meetings can be important in licensing. Contacts made in connection with such presentations can be a good source of potential licensees. Please remember to send copies of these presentations to WARF along with any commercial contacts made.
Conferences and Trade Shows
WARF participates in a number of conferences and trade shows each year. Attendees at these shows include industry managers and directors of business development as well as representatives from technology transfer offices across the country. WARF's computerized technology database is available at these meetings to run detailed technology searches for potential licensees.
The License Negotiation
During the entire licensing process, it is important to keep your licensing manager aware of your activities with potential licensees. If you receive direct contacts from potential licensees, please inform your licensing manager. Also please make an effort to answer a reasonable number of questions from potential licensees regarding your technology. This often significantly enhances the licensing process. At the same time, refer all commercial and contract matters to the licensing manager.
If the potential licensee becomes too demanding of your time or too probing of your current research activities, please let your licensing manager know so that he or she can give the potential licensee a gentle reminder. Under no circumstance should a potential licensee consider you an unpaid consultant to their organization.
Once the right licensee has been identified and makes a decision to obtain a license, your licensing manager will negotiate the details of an agreement with the interested company. Licensing negotiations deal with commercial matters, and at this point the inventor normally is not involved. WARF treats licensing terms as confidential between the company and WARF, so your licensing manager will not be able to share details of the licensing agreement with you. But your licensing manager can normally answer your general questions concerning the status of the negotiations.
WARF's experience has been that even if we finalize an agreement with a reluctant licensee, problems with payment delays and other matters make the license marginal at best. Sometimes WARF is forced to move on to another potential licensee rather than continue with a difficult candidate.
Reasonable Expectations
In the end, many technologies patented by WARF are never licensed and many of those that are licensed never pay royalties exceeding their patent costs.
Part of this is because WARF accepts 60% of the disclosures it receives for patenting. Many universities can risk patenting only the top 10% of the technologies they receive as disclosures...or not patent any of them unless a licensee can be found to pay the patent costs. With its strong financial status, WARF can choose to absorb patent costs on technologies that are never licensed rather than risk allowing a commercially viable technology to remain unpatented.
Moreover, while some technologies are licensed within a relatively short time, others need more time to let the market catch up with the technology. Sometimes it is the second license negotiation that works for everyone.
This has been a brief overview of the way your WARF technology team works to license and administer your technology. Please remember that you are also an important member of the team. If you have any questions on licensing, give your licensing manager a call.
Royalty Distribution
WARF's Royalty Revenue Sharing Program
WARF shares the royalty revenue generated by a licensed technology with the technology's inventor(s), the inventors' academic departments, and the UW-Madison Graduate School. The following is a general description of how royalties are divided among these entities.
Inventor's Share
The inventor or inventor group receives 20 percent of the gross royalty revenue generated by a licensed invention. In the case of multiple inventors, the 20 percent is split equally among all inventors. Payments are made to the inventors in the month following receipt of the royalty payment.
WARF's Annual Grant to the UW-Madison
WARF's grant to the university is unrestricted, meaning the university can spend the gift as it sees fit. The following is a general description of how different portions of the grant are allocated.
Department Share of the Annual Grant
The inventors' academic departments receive a grant equaling 15 percent of the gross royalties generated by the licensed technologies. If applicable, department share can be split among multiple departments.
Graduate School Share
After the inventor and department shares have been allocated, the remainder of WARF's annual grant is distributed by the UW-Madison Graduate School to support a variety of projects and programs each year, including:
- The Graduate School Research Competition
- The Romnes Early Career Awards
- Kellett Mid-Career Awards
- Named professorships
- Graduate fellowships
- Campus building projects
