Intellectual Property Ownership
Ownership of Intellectual Property
Generally, except as required by funding agreements or other University policies, the University of Wisconsin System (UWS) does not claim ownership rights in the intellectual property generated during research by its faculty, staff, or students.
Federally Sponsored Research
In general, federal law and regulations give the University first right to retain title to any inventions conceived or made in whole or in part during federally funded research. Federal law and regulations further provide a single policy document and uniform policies for virtually all federal grants and contracts. Computer programs that are patentable are covered by the federal law, as are plants protectable under the Plant Variety Protection Act. Because the law requires that the University initiate appropriate patent action for each invention, and because the commingling of federal support with other extramural funds limits the rights available to another extramural sponsor, it is essential that University researchers become familiar with the requirements of the law.
The following is a summary of the most relevant provisions of the law.
- A university or its designated patent management organization has first right of refusal to ownership of inventions made in performance of all federal grants and contracts unless otherwise stated in the individual funding agreement.
- The University must have written agreements with persons performing the research, other than clerical and non-technical employees, requiring prompt disclosure of inventions.
- The University must disclose any invention conceived or first actually reduced to practice in the performance of work funded all or in part by the federal government. This disclosure must be made to the funding agency within two months after the University inventor discloses it in writing to the appropriate University administrator.
- The University must elect whether or not to retain title to the invention. If the University declines title to the invention, the rights to the invention pass to the federal funding agency that supported the research.
- The federal agency retains a nonexclusive, nontransferable, irrevocable, paid-up worldwide license to practice or have practiced the invention for governmental purposes. The individual funding agreement may grant additional rights to the federal government.
- The UWM Research Foundation is responsible for patenting and licensing of all intellectual property that results from federally sponsored research through agreement with the UW System Regents.
Non-Federally Sponsored Research
Expectations vary regarding ownership of intellectual property generated as a part of a research program sponsored by non-federal funding sources. Funding sources including private companies and other sources may require assignment of intellectual property rights as a condition of funding.
Using funds from more than one source in support of a given research project, unless carefully evaluated and continuously monitored, may create conflicting positions regarding ownership rights among the various sponsors. In any agreement with an extramural research sponsor, the principal investigator must consider the existing contractual obligations of the University or the researcher(s). This is especially important where the agreement under negotiation is for research that has the same or similar purpose as research conducted using personnel or resources that are funded, however minimally, by another sponsor. Obligations under existing federal or other extramural sponsorship agreements must be identified and reconciled with the agreement under negotiation. Failure to reconcile potentially conflicting claims to ownership of intellectual property may result in a lawsuit for breach of contract against the University and damage the professional reputation and credibility of the researcher.
Data, Research Records, Laboratory Notebooks, and Other Similar Products of Research
Subject to restrictions imposed by federal statute or other prior agreements, the researcher may assign rights in patents, copyrights, and mask works that are made as a part of sponsored research. However, ownership of raw data and other immediate products of the research, such as lab books and other research records generated during the research, may not be given up. Because the mission of the University and, therefore, the goal of all University research, is the discovery and dissemination of knowledge, both the University and its faculty, staff, and students have an obligation to publish the results of University research. Allowing a sponsor to own the raw data of the research effectively forecloses the ability to publish. Therefore, under University policy, Extramural Support Administration (GAPP 2), ownership of such materials may not be transferred to a third party. Certainly, access to the data or other research materials may be granted to the sponsor and, if appropriate, the sponsor may be authorized to use such material freely.