Frequently Asked Questions

© Board of Regents of the University of Wisconsin System
© Board of Regents of the University of Wisconsin System

Do all faculty, staff, and students at UW–Madison or the Morgridge Institute have to submit their invention to WARF?

What qualifies as an invention?

When should I submit?

What constitutes a public disclosure?

What if I’ve already published a paper or delivered a presentation about my invention?

How do I know if I’m ready to submit?

How do I start the submission process?

What happens after I submit my discovery?

How does WARF evaluate my invention?

What if WARF decides not to pursue my invention?

Who pays the legal costs and fees to secure the patent?

How expensive are patents?

What financial compensation will I receive for my invention?

What does WARF do with the rest of the royalty income?

What if a collaborator from another institution or company has contributed to my invention?

Does WARF file foreign patents?

What if I want to start a company?

What is the America Invents Act?

Where can I learn more about patents and intellectual property?

Does WARF support any programs for inventors like me?


Do all faculty, staff, and students at UW–Madison or the Morgridge Institute have to submit their invention to WARF?

YES: University policy and federal statutes REQUIRE all UW–Madison faculty, staff and students to disclose to WARF, regardless of the monies that funded the research. All Morgridge Institute researchers also must disclose to WARF. 
 
What qualifies as an invention?
Your discovery of any new process, composition or device, or an improvement to an existing process, composition or device, may be an invention.

WARF patents and licenses inventions as well as all other intellectual property arising from UW–Madison and Morgridge Institute faculty, staff and student research.

Examples:
  • Devices such as a new type of laser or surgical tool
  • Processes such as an improved method of purifying cells or a new software technique
  • Compositions such as a new chemical or drug compound.
  • Software, which may be copyrighted and sometimes patented
  • Copyrightable works such as surveys, software or educational tools
  • Biological materials such as cell lines or plant varieties.
  • And more
If you’re not sure if what you’ve discovered is protectable by a patent or other means, or if you don’t know what applications it might have, contact us for a confidential discussion.

When should I submit?
  • As soon as possible, and ideally BEFORE any public disclosure.
  • Public disclosure immediately prevents you from obtaining most foreign patent rights and also may prevent you from obtaining U.S. patent rights.
  • Patents filed prior to public disclosure have a much stronger position.

What constitutes a public disclosure?
Any non-confidential disclosure, which includes many routine academic activities:

* Published papers
* Catalogued theses

* Presentations
* Conference abstracts

* Open thesis defenses
* Funded grant applications

* Seminars
* Web posts

* Campus talks

* Non-confidential collaborations

* Grand rounds
* And others

* Posters



Contact us immediately if you’re not sure what constitutes a public disclosure, or if you think you may have publicly disclosed your invention.

What if I’ve already published a paper or delivered a presentation about my invention?
Once you publish, present or otherwise publicly disclose your invention, you have one year from your first disclosure date to file a U.S. patent application. After one year has passed, you lose your U.S. patent rights.

Please note, we encourage you NOT to disclose before consulting with us, as patents filed prior to public disclosure have a much stronger position. The sooner you contact us, the better for you and the university.

Unfortunately, public disclosure immediately prevents you from obtaining most foreign patent rights.

How do I know if I’m ready to submit?
It’s never too soon to contact us.

We are your resource. Contact us any time to schedule a confidential, informal discussion.

We are happy to talk you through the process of bringing your innovation from campus to the world. You can also review our step-by-step summary of the tech transfer process.

How do I start the submission process?
Go HERE to submit an Invention Disclosure Report.

If you have any questions, contact Leah Haman, Intellectual Property Associate.
[email protected] | 608.890.3078.

What happens after I submit my discovery?
Our team will meet with you for an informal, confidential discussion about the details and possible applications of your discovery or invention. This disclosure meeting gives you an opportunity to explain what is new in your invention and how it can be applied for practical use. Your comments concerning the invention's likely commercial value, categories of potential licensees and individual companies that may have licensing interest also are very valuable. It is helpful to provide any publications, abstracts, theses, draft manuscripts, etc., in advance of the meeting or when you arrive.

How does WARF evaluate my invention?
WARF’s internal decision committee will assess your invention based on many factors, including:
  • Patentability
  • Market dynamics
  • Licensing potential
  • Public benefit
  • Whether WARF can add value
We evaluate discoveries on a monthly basis and will notify you whether or not we decide to move forward with your invention. We strive to make decisions quickly so that patenting doesn't interfere with publication.

What if WARF decides not to pursue my invention?
Pending other obligations or contracts, you may be free to move forward independently. We’ll discuss your options in the event that WARF passes on your submission. We are always willing to reconsider our decision if you have additional information.

Who pays the legal costs and fees to secure the patent?
WARF covers all costs and legal fees for inventions we accept.

How expensive are patents?

U.S. patents typically cost $20,000 to $40,000. An international portfolio of 10 patents might add more than $100,000 to this cost.

What financial compensation will I receive for my invention?

20% of the royalty income (before expenses) goes to you as the inventor(s). WARF is proud to be one of few institutions to offer such a return.

What does WARF do with the rest of the royalty income?
Once expenses have been accounted for, WARF puts the remaining royalty income in its endowment where it can benefit the university in perpetuity by generating a stream of income. These funds are then used to provide WARF's annual grant to the university, in accordance with WARF's spending guidelines. 

What if a collaborator from another institution or company has contributed to my invention?
These inventions should be disclosed to WARF like all other inventions. WARF evaluates the technology and can work with the other institution to file a joint patent—a patent for inventors from more than one entity.

We have interinstitutional agreements with many universities, research institutes and other organizations. These agreements determine which institution takes the lead in patenting and licensing the invention, as well as how royalty income would be shared.

Does WARF file foreign patents?
We file foreign patents on inventions based on:
  • Availability of foreign patent rights
  • Level of licensing interest
  • Market size and potential
  • Whether or not you have publicly disclosed your invention
IMPORTANT: Public disclosure immediately prevents you from obtaining most foreign patent rights.

What if I want to start a company?
We are eager to help startup companies succeed and offer assistance to faculty and staff who wish to start companies with technology licensed from WARF. Visit our startups section for more information about starting a company.

The first step in the process is to submit your invention to WARF.

What is the America Invents Act?
Signed in 2011, the Leahy-Smith America Invents Act is a federal statute that included significant changes to patent law. The most notable change is the transition from a 'first-to-invent' to a 'first-inventor-to-file' patent system. Learn more.

Where can I learn more about patents and intellectual property?
Visit the USPTO website for more information or contact one of our intellectual property experts.

Does WARF support any programs for inventors like me?
YES: Visit our programs and events section for information about programs like the Accelerator Program, Discovery Challenge and WARF Ambassadors.

WARF also supports programs like the Fall Research Competition, D2P and our internal venture fund.