Original Issuance Date: December 10, 1985
Last Revision Date: April 28, 2017
1. Policy Purpose
The purpose of this policy is to establish the applicable UW System policies with respect to inventions and outline the responsibilities, privileges, and options of faculty, staff, and students when they have made an invention.
2. Responsible UW System Officer
Vice President for Academic and Student Affairs
Vice President for Finance
This policy applies to any invention discovered by faculty, staff, or students related to their appointed duties at any UW System institution. This policy does not apply to inventions discovered by students in the course of academic coursework and classroom projects that are unrelated to the duties of any paid assistantship or other appointment. This policy also does not apply to inventions discovered by students or trainees under funding provided by scholarships, fellowships, or training grants, which shall not contain any provision giving any third party, including a federal agency, any rights to inventions made by the recipient.
This policy sets forth the rights and responsibilities of UW System institutions and the faculty, staff and students with respect to rights in, and disclosure of, inventions discovered in connection with or related to their university duties.
Invention: Any discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code, or any novel variety of plant protectable under the Plant Variety Protection Act of 1970.
Intellectual Property Management Organization (IPMO): A non-profit organization that has been authorized by the President of the UW System, or designee, to hold title to inventions discovered in the course of university research, to secure patent or other appropriate protection for inventions, and to license inventions for the benefit of the public. The following are the designated IPMOs that have been approved for UW System institutions:
UW-Madison: Wisconsin Alumni Research Foundation (WARF)
UW-Milwaukee: UWM Research Foundation (UWMRF)
Other UW System institutions: WiSys Technology Foundation (WiSys)
6. Policy Statement
A. Disclosure and Reporting of Inventions
A substantial portion of research performed at UW System institutions is funded by outside parties through formal grants and contracts, with various federal agencies constituting the majority research funding source. In addition, other contractual agreements may apply to research conducted by UW System institutions, such as collaboration agreements or material transfer agreements. The UW System Board of Regents is the legal recipient of all grants and contracts which are accepted on behalf of faculty, staff and students and, as such, has the legal responsibility for complying with all contractual obligations. Consequently, when a potential invention is generated, it is necessary that the designated authorities at each institution review and make determinations with regard to patent rights with reference to any contractual obligations which apply to the invention.
All inventions discovered by faculty, staff, or students on appointment while pursuing their university duties, or on university premises, or with university supplies or equipment must be reported to the chancellor or designee or the appropriate IPMO on theassociated with this policy or a form that is substantially similar. Any invention conceived or first reduced to practice in the performance of work funded wholly or in part by the federal government is subject to the requirements of the Bayh-Dole Act.
Each institution must secure written agreements from all employees engaged in sponsored research projects, other than clerical and nontechnical employees, to disclose promptly in writing any invention subject to this policy to personnel identified as responsible for the administration of patent matters at the institution. The written agreement used must be substantially similar to the.
The President of the Board of Regents and/or the UW System President may request a report from any IPMO. At a minimum, any such report shall include the following information:
- a listing of patent applications by invention title;
- the inventor(s) name and title;
- funding sources for the invention(s) identified through the equity review process; and
- a brief description of the invention(s).
B. Equity Review and Disposition of Inventions
Upon disclosure, all inventions are subject to equity review by the chancellor (or designee) to determine rights in the invention based on the obligations associated with any funding sources or any other contractual terms that affect rights in the invention. The process includes a review of the intellectual property language in all relevant federal and non-federal sponsored research agreements (corporate, association, foundation, and consortia agreements), agreements covering access to proprietary research materials such as material transfer agreements, and any other contracts, sources of funding or ideas that contributed to the invention. The chancellor (or designee) has the responsibility for determining if contractual obligations apply to the invention and, if so, ensure that such obligations are fully met. Irrespective of funding source, the University retains a fully paid up, world-wide, royalty free non-exclusive right to make and use inventions created by faculty, staff and students in the course of University research for its education, research and service mission.
I. Federally Funded Inventions
If, after equity review, the institution determines federal funds supported the discovery of an invention, the IPMO is given the first right to retain title to the Invention. The IPMO will examine the invention and may take title in the invention, prepare and file patent applications, and thereafter exercise its best efforts to bring the invention quickly and effectively into public use and otherwise comply with the requirements of the Bayh-Dole Act.
If an IPMO elects not to take title and pursue patent protection for an invention supported by federal research funds, rights to the invention generally revert to the federal funding agency and the inventor may petition the funding agency for the right to pursue a patent.
In any event, the federal government retains a worldwide, non-exclusive, nontransferable, irrevocable, paid-up license to practice any inventions discovered with federal funding.
II. Non-federally Funded Inventions
When the chancellor or designee determines that an invention has been made with non-Federal funding and the invention is subject to contractual obligations which apply to that invention, the chancellor or designee has the responsibility for ensuring that any contractual obligations are satisfied.
III. Unencumbered Inventions
When an equity review determination concludes there are no funding or contractual provisions that affect or convey any rights in an invention, each inventor will be notified and is free to dispose of their interest in the invention in the manner of their choosing. Often in such situations the inventors choose to work through the IPMO and may assign their rights to the invention to the appropriate IPMO provided the IPMO has an interest in taking title to the invention. The inventors also may seek to patent the invention with their own resources, or may dedicate the invention to the public.
C. Institution/Staff Contracts
Special circumstances may arise where faculty/staff work assignments have been made with an expectation that inventions will be produced as an assigned duty of employment. The normal presumption of faculty/staff ownership and control of inventions developed without federal funding applies unless agreements to the contrary have been executed or certain sources of research funding that require assignment of inventions, including specific UW System or UW System institution grant programs, have been used in the research.
D. Publication of Inventions
UW System policy establishes the obligation to ensure that research results are made known to the general public through publication. However, premature publication or other public disclosure of research results that describe an invention may interfere with or even eliminate the ability to patent such invention. Faculty, staff or students who believe they may have created an invention are encouraged to consult with the IPMO prior to publication or other public disclosure of the invention.
7. Related Documents
8. Policy History
Revision 1: April 28, 2017
First approved: December 10, 1985*
*Prior to December 1985, UW System’s patent policy was contained in General Administrative Policy Paper 2 (now UW System Administrative Policy 342, Extramural Support Administration)
9. Scheduled Review