Ownership Rights under Extramural Agreements
In general, under federal law the University, through its designated patent management organization, Wisconsin Alumni Research Foundation, has first right to retain title to any inventions conceived or made in whole or in part during federally funded research. Ownership of intellectual property or tangible products of research generated during the course of non-federally funded research varies widely and is defined by the terms of the agreement between the University and the sponsor.
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Federal Funding of University Research
Federal law and regulations provide that the University has the right to retain title to any inventions conceived or made in whole or in part during federally funded 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 federally-funded invention, and because any co-mingling 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.
- The law gives a university or its designated patent management organization the right to retain ownership of inventions made in performance of all federal grants and contracts unless otherwise stated in the individual funding agreement. The University of Wisconsin-Madison has designated WARF as its patent management organization for this purpose.
- The University must have written agreements with persons performing the research, other than clerical and non-technical employees, requiring prompt disclosure of inventions and, if requested by the University or WARF, assignment of rights to any disclosed invention conceived or first actually reduced to practice in the performance of work funded in whole or in part by the federal government. The agreement developed by the University for this purpose is an addendum to the Extramural Support Transmittal Form (T-Form) or the separate Intellectual Property Agreement for Project Participants.
- The University is required to disclose 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.
- WARF, acting as the University's patent management organization, must elect whether or not to retain title to the invention. If WARF declines title to the invention, the rights to the invention pass to the federal funding agency that supported the research. The University inventor, with assistance from The Graduate School, may petition the federal funding agency for rights to any such invention that is declined by WARF.
- The federal agency retains a nonexclusive, nontransferable, irrevocable, paid-up world-wide license to practice or have practiced the invention for governmental purposes. The individual funding agreement may grant additional rights to the federal government.
The Association of University Technology Managers website provides additional information about the Bayh-Dole Act.
Non-Federal Funding of University Research
Expectations vary regarding ownership of intellectual property generated as a part of a research program sponsored by non-federal funding sources. Using funds from more than one source in support of a given research project whether federal or non-federal, may create conflicting positions regarding ownership rights among the various sponsors unless the use of the funds is carefully evaluated prior to the start of the work and continuously monitored throughout the course of the research.
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.
When the same or similar research is supported with federal funds, however small the amount, a non-federal sponsor may receive rights to an invention only as is consistent with federal law. This may be accomplished through a license agreement obtained from WARF. For copyrightable works from research supported in part with federal funds, a non-federal sponsor may receive only such rights as are not reserved by the federal funding agency's regulations or the federal funding agreement.
Rights to Data Banks and Copyrights
In the area of ownership of mask works, data banks, or copyrightable works produced during the course of federally sponsored research, a single policy relating to all federal grants and contracts has not yet been adopted by the federal government. As the term is used in most federal grant policy manuals, "data banks" refers to those situations in which the accumulation or creation of the data bank is an activity specifically within the scope of work of the research project. Works that may be copyrighted under Title 17 of the United States Code include reports, books, articles, design drawings and blueprints, recordings, video tapes and discs, and computer software. Mask works and semiconductor chips are covered under a separate statute. In general, the regulations and the policy statement of the sponsoring federal agency, as well as the individual funding agreement, determine ownership and any reservation of rights in data banks or copyrightable works produced during and as a part of the research. Federal contracts may include requirements that necessitate marking or identification of any deliverable, whether created under the contract or not, in order to limit the government's rights in the deliverable materials. For further information and copies of any policies of the funding agency, contact UW Research and Sponsored Programs.
Consortium Agreements
Another method of funding research is the research consortium. A consortium consists of a group of institutions or companies acting together to investigate an area of common interest. In the typical University research consortium, each outside sponsor contributes a specific amount of funding annually to support a research project or program. Typically, consortia are used to pursue a general area of research that is of interest to a large group of sponsors and draws together many University researchers. Because of the variety of sponsors and the number of researchers that may be involved, intellectual property rights under consortium agreements must be carefully structured and researchers should seek advice from appropriate University offices.
Materials Transfer Agreements (MTAs)
Incoming MTAs
Companies, universities, and other institutions generally require that the University and researchers sign a material transfer agreement (MTA) to receive biological or other research materials. These MTAs typically restrict the use to which the materials may be put and prohibit redistribution of the materials to other researchers. MTAs for materials being furnished to the University are similar in effect to industrial research funding agreements and are processed by the University in the same way, using an Extramural Support Transmittal Form.
Problems can arise when an MTA also provides for a grant back to the provider of a license for the use or ownership of new materials or inventions made by the researcher. As with funding agreements, it is essential that the researcher carefully examine all commitments made in the MTA in light of past and future obligations relating to funding. If materials received from one company and covered by an MTA are to be used in research funded under a consortium or a grant from another company, access rights to inventions must not conflict.
If an invention covered by an MTA was supported with federal funding the provider may only receive such rights as are consistent with obligations under federal law.
The University assumes that a researcher who transmits an MTA has read and agrees with all of its terms. Unless a provision of the MTA is inconsistent with the federal law relating to inventions or other state laws or University policy, the University will sign the agreement as transmitted.
Outgoing MTAs
Researchers are not required to use an agreement for outgoing materials, unless the materials have been assigned to WARF, although the researcher may choose to use an agreement. If the materials have been assigned to WARF, the researcher should contact WARF. The University is a signatory to the "Uniform Biological Material Transfer Agreement" that researchers may use to share research materials with other researchers outside of the University. This is the only agreement that the University will sign for outgoing materials.
Data, Research Records, Laboratory notebooks, and Other Products of Research
Subject to any restrictions imposed by federal law 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 transferred to a third party. Because the mission of the University and, therefore, the goal of all University research, is the discovery and dissemination of knowledge, 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, 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.
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 to build a firewall and the disadvantages of a firewall.