The University’s mission of discovering and transmitting knowledge and providing service to the public creates an environment that is conducive to the conception and development of many forms of intellectual property. Often, the results of our research effort have commercial value, which is enhanced through the use of patents, copyrights or other forms of protection.
This document sets forth information about University policies, as well as the nature of faculty, staff, and student responsibilities regarding intellectual property rights and the procedures to be followed in reporting inventions and copyrightable materials arising from University research. This document describes and discusses the University policies relating to intellectual property created during and in the course of university research. Other Board of Regent policies may apply to intellectual property created outside of sponsored research and require a discovery or invention made by any member of the faculty, staff or student on appointment, while pursuing his/her university duties, or on university premises, or with university supplies or equipment, be reported to the Chancellor or his/her designee. Such policies may be found on the University of Wisconsin System website.
If further information or guidance is needed after reading this document, you are encouraged to contact the Office of the Vice Chancellor for Research.
Except as required by funding agreements, other contractual agreements with third parties such as material transfer agreements, or other University policies, the University does not claim ownership rights in the intellectual property generated during research by its faculty, staff, or students. This policy has proven beneficial to the University, the public, and the creators of such property. In the case of inventions funded in whole or in part by a federal agency that are subject to the disclosure and assignment provisions of the federal Bayh-Dole Act, or in the case of other sponsored research agreements or other contractual agreements that require the University to grant rights in inventions to the sponsor or other third parties, faculty, staff and students must assign rights to such invention to the University's designated patent management organization, the Wisconsin Alumni Research Foundation (WARF) and execute all papers necessary to file patent applications on the invention and establish the federal government's or other sponsor's rights in the invention. As a matter of policy, WARF does not assign patent rights to research sponsors or other external entities. If there are no specific written agreements or policies to the contrary, the 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 products of research conducted as a University activity for its education and research mission.
Most University research is funded by outside parties (extramural sponsors) through formal grants and contracts. The Board of Regents of the University of Wisconsin System is the legal recipient of all research grants and contracts from extramural entities, and as such has a legal responsibility for complying with all the terms and conditions of the agreements. Under University policies, the principal investigator and all other participants in research agree to comply with the terms of the agreement and relevant university policies as a condition of participating in the research and as part of his or her University duties and responsibilities. The University requires employees and students likely to be involved in sponsored research (as identified by title series), to sign an Intellectual Property Policy Compliance Agreement (UW-Madison Login required) upon hire or as later identified. The principal investigator of a sponsored project is responsible to ensure that any participants have signed the compliance agreement, including providing a link to the agreement to any that have not previously received it. Principal investigators should remember that they may not obligate the intellectual property of project staff unless such staff have signed an intellectual property agreement prior to commencing work.
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 University using the WARF Invention Disclosure Report Form. The principal investigator for a research program is responsible for assuring that an invention disclosure form is filed for any such discovery occurring in their laboratory or under their oversight.
Computer software may be an invention (i.e., patentable) that is subject to the disclosure and assignment provisions of this policy. Additionally, computer software and other types of copyrightable materials created in the course of a research project may be subject to third party licensing rights as set forth in the agreement funding the research project or other contractual agreement. Before making any disposition of rights to copyrightable material created in the course of their University duties, the principal investigator or other person responsible for the creation of the copyrightable material should fill out the Invention Disclosure Report form so that an equity review can be conducted and third-party rights, if any, can be identified.
If the equity review and determination results in a finding that an invention is funded in whole or in part by a federal agency or if the sponsored research agreement requires the University to grant rights in the invention to a sponsor, then an inventor is required, if requested by WARF, to assign rights in such invention to WARF and execute papers necessary to establish the rights of the federal government or other sponsors.
07-12-2022
