The OSU Advantage IP & Licensing and Industry Research Agreements teams help faculty achieve societal impact with their research. We provide access to expertise and talent in commercialization, industry contracting, and startup support for faculty, staff, and students of OSU.
When your research results in practical insights, methods, prototypes, and other useful things, you can contact our office to consider whether these advancements might be useful in society.
If you plan to share unpublished information about your ideas with anyone outside of the university, OSU Advantage can help you protect that information. For example, we can initiate Nondisclosure Agreements, Material Transfer Agreements (for biological materials), and provide other mechanisms to secure the intellectual property value of your work. We have numerous strategies to protect information and materials while allowing foreign patent rights to be preserved.
Submitting a proposal to a federal agency usually does not constitute a disclosure of information, as most funding agencies keep information contained in proposals as confidential. However, once funding is obtained, the abstract becomes published. Because patent rights can be affected by publication, you will be well served to call OSU Advantage whenever you have questions about how to proceed.
Publications and disclosures include: manuscripts; abstracts of funded proposals; posting on the web; dissertations; and discussions with anyone outside of the Oregon University System, unless a Confidentiality Agreement is in place prior to a discussion.
Publications and seamless collaborations are essential for faculty successes and a means for dissemination of innovation, promotion, and acknowledgment of the important research at OSU. OSU Advantage works within the publication timeframes of our faculty to facilitate the publication process while also securing intellectual property rights as needed.
Even when research results are already published, there still may be time to protect and license your work, so we encourage you to contact us.
Oregon State University owns intellectual property created by employees at OSU; see IMD 6.205-255 (the Oregon University System Internal Management Directives) & ORS 352.087(f) (the Oregon Revised Statutes).
To the extent we own intellectual property, we seek to maximize the education and research mission of the university by facilitating external use of intellectual property for both academic and commercial applications.
In this spirit, Section 6.215 of the Oregon University System Internal Management Directives states:
The Board reserves the ownership rights to all institutional work-related inventions, and to educational and professional materials developed with institutional resources, including the right to a free and irrevocable license for usage, and if desired, the licensing for use by others.
If you are an employee of the university, you should contact OSU Advantage anytime you have a question about:
Ideally, the best time to connect is prior to publication. If publication has already occurred, however, you should still feel welcome to contact OSU Advantage anyway: there still may be time or alternative methods to protect and license your work.
An "inventor" is defined by law generally as one who first conceives and reduces to practice any patentable subject matter. To be an inventor, a person must have contributed to the conception of the invention. Co-authors of research may, or may not, be considered (by law) to be Co-inventors. It is very important to correctly identify the inventors of an invention; issued patents can be invalidated on this basis. For the purposes of the Invention Disclosure form, list all of those who significantly contributed to the conception of the invention. OSU Advantage will make distributions to significant contributors even if they are not included on the final patent application as an inventor, if all inventors are in agreement.
OSU Advantage covers all of the costs associated with patenting and licensing an invention. If there is an inventor from another institution or company, the expenses are usually shared with those outside entities.
Depending on the complexity of the invention, the paths chosen in a patent application, and the specific examiner assigned to review the invention in the US Patent and Trademark Office (USPTO), it will generally take between 3-5 years for a patent to issue.
The time commitment necessary from the inventors varies, but it is important for the inventors and the patent attorney/agent to connect frequently during the initial filing, making sure the language captures the invention adequately; a few years later interaction is necessary once the USPTO examines the patent application to respond to questions and provided differentiation over examiner-noted publications and patents.
Oregon State University has a generous revenue distribution practice. After recoupment of expenses, revenue derived from licensing OSU intellectual property is shared based on the following schedule, subject to variation based on OSU’s determination of equities in a given case and MOUs authorized by the President:
*Distribution will follow salary support at the time of invention disclosure, which is anticipated to include Colleges, OSU Cascades, and other administrative units on campus.
Revenue Income Received
from Licensee by:
|Distribution to Inventors and Colleges by:|
|June 30th||July 31st|
|September 30th||October 31st|
|December 31st||January 31st|
|March 31st||April 30th|
Revenue Income Received
from Licensee by:
Distribution to Inventors and Colleges
(with a report) by:
|Potato||March 31st||May 31st|
|Wheat||March 31st||April 30th|
|Berries||July 31st||August 31st|
|Hazelnuts||September 30th||November 30th|
|40% to an internal OSU unrestricted funds account||20% to an internal OSU unrestricted funds account||40% to an internal OSU unrestricted funds account|
OSU Advantage sometimes decides not to move forward on protecting an invention, if a determination is made that an invention has limited patentability or markets, or if the best path to transfer the invention is determined to be through publication. The inventors may request a waiver from OSU Advantage to obtain a transfer of rights for the invention. The waiver decision will be dependent on various items such as: the funding source used to develop the invention; the amount of patent and promotional expenses incurred up to the date of the waiver request; and potential future research in the area of innovation.