Invention Disclosure/Equity Review Process
Introduction
To assure the University's ability to comply with obligations arising under federal laws or in extramural sponsor agreements, faculty, staff, and students participating in sponsored research are required as a condition of such participation to file disclosure reports for any invention or discovery that was made during the course of their University activities. 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.
The equity review is the process used to determine how an inventive work was funded, how relevant agreements affect intellectual property rights, and who needs to be notified of the inventive work
Table of Contents
Invention Disclosure
Equity Review
Please also see the Invention Disclosure/Equity Review Implementation Plan and Process Chart.
Invention Disclosure
Who must disclose inventions and what must be disclosed?
To assure the University's ability to comply with obligations arising under federal laws or in extramural sponsor agreements, faculty, staff, and students participating in sponsored research are required as a condition of such participation to file disclosure reports for any invention or discovery that was made during the course of their University activities. 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.
The principal investigator for a sponsored research grant is responsible for assuring that an invention disclosure report is filed for any such discovery. The person filing the invention disclosure form is responsible for providing complete and accurate information as required on the form, and transmitting the form to WARF. WARF forwards the invention disclosure form to The Graduate School, 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 sponsors.
Computer software may be an invention (i.e. patentable) and covered under the federal law related to rights to inventions conceived during federally funded grants and contracts. Additionally, computer software and other types of copyrightable soft materials may be subject to intellectual property rights set forth in the sponsorship agreement. Before making any disposition of rights to copyrightable material produced under and as part of extramurally funded research, the principal investigator should fill out an invention disclosure report and submit the form to WARF who will forward it to The Graduate School for an equity determination.
How to disclose your invention
All inventions made by UW-Madison faculty, staff and students must be disclosed to WARF regardless of the monies (federal, private, etc.) that funded the research leading to the invention. Inventions are disclosed by completing an Invention Disclosure Report (IDR) form and submitting this IDR form to WARF. WARF cannot process an invention or consider it for patenting and licensing until they receive a completed IDR.
For information on how to fill out an IDR form, see Disclosing to WARF. The IDR form may be downloaded and submitted electronically through WARF's secure email page, or printed and sent to WARF through the U.S. mail.
Following receipt of the Invention Disclosure Report form a WARF intellectual property manager will contact the inventors to schedule a disclosure meeting.
If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact a WARF intellectual property manager in your area of scientific expertise immediately. Guidance on who to contact may be found at the WARF Web site.
Once WARF processes a new disclosure, the UW-Madison Graduate School will perform an equity review to determine who has ownership rights to the invention. If the Graduate School determines that federal funds did not contribute to the invention (and the inventor has not assigned intellectual property rights to an outside entity, such as a company), the inventor may then choose whether or not to work with WARF in patenting and licensing the invention.
Equity Review
What is the equity review?
Once WARF processes a new disclosure the Invention Disclosure Report is forwarded to The Graduate School for an equity review. The equity review determines who has ownership rights to the invention. This process includes a review of the intellectual property language in all relevant federal and non-federal agreements (corporate, association, foundation, consortia agreements; material transfer agreements; etc.) as well as a review of all funding sources, including inventor payroll, and inventor's grants active during the period of inventive work.
To assure the University's ability to comply with obligations arising under federal law or in extramural sponsor agreements the Graduate School must conduct an equity review even if WARF has decided not pursue intellectual property protection for an invention.
The University is required to disclose to the appropriate federal funding agency any invention conceived or first actually reduced to practice in the performance of work funded totally or in part by the federal government. This disclosure must be made to the federal funding agency within two months after The Graduate School receives the invention disclosure report from WARF.
Who does the equity review?
The Graduate School, with assistance from the School/College Dean designees, conducts the equity review. A list of School/College designees working with invention disclosures can be found under the Schools/Colleges IP Contacts.
Who has rights to inventions?
In the case of inventions funded in whole or in part by a federal agency or in the case of sponsored research agreements that require the University to grant rights in inventions generated under such agreements, faculty, staff and students must assign rights to such inventions to the University's designated patent management organization, Wisconsin Alumni Research Foundation (WARF). This applies as well to computer programs that are patentable and plants protectable under the Plant Variety Protection Act.
If, after disclosure to WARF, and equity review by the Graduate School, it is determined that federal funds did not contribute to the invention and there are no specific written agreements or policies to the contrary, the inventor is free to dispose of the rights to the invention 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.
If WARF accepts a federally funded invention for intellectual property protection inventors must 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.
If WARF must decline an invention that is federally funded, under federal rules, the federal funding agency has the next right to take title to an invention WARF has not accepted. However, inventors interested in seeking a patent on their own may petition the federal funding agency for the right to do so. The Graduate School assists inventors in this petitioning process.
Co-mingling policy
Federal sponsorship of research is pervasive at the University and the regulations regarding ownership of inventions under federal funding are very comprehensive. To fully comply with federal law, the university has developed a co-mingling policy, which dictates that if a researcher has any federal monies in his or her lab at the time of invention conception or reduction to practice, the invention is considered to be federally funded unless the principal investigator has been authorized by the Graduate School to create a firewall.
See the flow chart for building a firewall for a list of the requirements needed and a list of the disadvantages of a firewall.
Dispute process
If an inventor disputes the determination that the University has rights to an invention because of the presence of federal funding during the inventive period, the inventor may request a review of that determination by engaging the review process. The review process includes an analysis, comparing the scope of work under the federal grant with the inventive work for the purpose of delineating a nexus between the two. The inventor(s) or creator(s) may use a similar process to question whether or not other extramural sponsors have any rights in a disclosed invention or other intellectual property.
The review process has three levels: direct resolution between the Graduate School and the inventor, resolution through consultation with the School/College Dean or Dean's Designee, and resolution through the Review Board which acts in an advisory capacity to the Associate Dean for Research Policy. Throughout the process inventors are encouraged to provide additional information, including information regarding the scope of work, and regarding the connections between funding and an inventive work. School/College Deans or Dean's Designees are also encouraged to provide additional information based on records maintained at the school/college level.
The Review Board is composed of a committee chair and three delegates from the Graduate School Principal Investigators Committee, which represents principal investigators from all divisions of the University and advises the Associate Dean for Research Policy on matters of interest to the research community. This review panel acts in an advisory capacity to the Associate Dean for Research Policy.