Intellectual Property Overview
UW System Policies
The following UW System policies govern the intellectual property at University of Wisconsin campuses.
- UW System Patent Policy (G34)
- UW System Policy on Computer Software Ownership (G10)
- UW System Policy on Copyrightable Instructions Materials Ownership, Use and Control (G27)
If there are no specific written agreements or policies to the contrary, a researcher at the University is free to dispose of the rights in the manner of his or her own choosing. The University retains the right to use the tangible products of research conducted as a University activity for its education and research mission.
Research Sponsorship Impacts IP Ownership
Much University research is funded by outside parties (extramural sponsors) through formal grants and contracts, with federal agencies constituting a major funding source. The Board of Regents of the University of Wisconsin System is the legal recipient of all research grants and contracts from extramural sponsors and, as such, has a legal responsibility for complying with all the terms and conditions of the grant or contract. According to University policy and procedures, principal investigators must sign an intellectual property agreement when applying for extramural funding through the University. This agreement is on the second page of the extramural support transmittal form. The principal investigator agrees to comply with terms of the agreement with the extramural sponsor, disclose inventions to the University, and accept the responsibility for assuring that other participants in the funded research also agree to these terms and conditions. An Intellectual Property and Researcher Compliance Agreement form is available for other participants in the sponsored research project.
Requirement to Disclose
To ensure the University's ability to comply with obligations under federal laws or in extramural sponsor agreements, faculty, staff, and students participating in sponsored research are required to file disclosure reports for any inventions or discoveries that were made during the course of their University activities. The principal investigator for a sponsored research grant is responsible for ensuring that a disclosure form is filed for any such discovery. The person filing the form is responsible for providing complete and accurate information as required on the form, and transmitting the form to the Technology Transfer Office, which is responsible for determining the disposition of the intellectual property rights and for any required notification, whether to the federal government or other extramural sponsor. For more information, please visit the section on the Disclosure of Inventions
Record-Keeping
Maintaining complete records of the development of an idea from conception through reduction to practice is an essential step in the formal, legal protection of intellectual property. Records define the invention and establish the dates of its conception and first reduction to practice. They may be needed to prove, for example, that an invention was conceived before a specific publication appeared or a competing invention was made. Laboratory records also may be needed for legal proceedings where issues of definition and legal ownership of intellectual property are to be determined.
The best evidence of conception is a complete and precise description of an invention, including appropriate sketches, and directions on how to make and use it. It is particularly important to include clear, dated statements of the ideas and experiments that led to an invention.
It is also important to ensure that records are witnessed or corroborated by a person who has the ability to understand the data and the methods used, but who is not a co-inventor. At regular intervals, investigators should have a witness sign and date records and explicitly state that the data were observed and understood.
Effects of Publication on Patent Protection
UWM investigators are free to publish and present research results , subject only to delay for short periods of time required to protect intellectual property.
Patent law defines publication or public disclosure of an invention as the non-confidential transfer of knowledge-orally or in writing, by exhibits, demonstrations, or public use of the invention-in a manner that would permit others skilled in the art to duplicate the knowledge without undue experimentation. Abstracts, theses, typewritten papers, and slides or projected material that may be distributed or discussed at non-confidential meetings, conferences, seminars, or forums are examples that may constitute publication or public disclosure.
In the United States, patent applications may be filed up to one year after an invention's first public disclosure. In contrast, most foreign countries require that patent applications be filed before any public disclosure of an invention. Further, because most foreign countries have very broad definitions of public disclosure, even the most casual disclosure of inventions may eliminate the possibility of patent protection. Despite these strict rules, if a U.S. patent application is filed before any publication, most foreign countries permit filing of corresponding applications for up to one year after the U.S. filing date, even if a public disclosure of the invention was made after the U.S. filing. In practice, then, the filing of a U.S. patent application before publication preserves both U.S. and foreign patent rights.