Research Policy Advisory Council (RPAC)
Advanced Technology Program (ATP) Policy
Policy Summary
UW-Madison policy prohibits the submission of proposals by its
faculty and staff seeking participation in ATP-funded projects. This restriction
applies both to the conduct of ATP-funded research and testing. Existing
ATP-associated projects will be allowed to run to completion; however,
no further ATP-funded projects will be permitted. In addition, effective
July 1, 2004, new faculty hires transferring research grants to the UW-Madison
will not be allowed to transfer any ATP-funded projects to the UW-Madison.
Background
The Advanced Technology Program (ATP) is a grant program administered
by the U.S. Department of Commerce’s National Institute of Standards
and Technology (NIST). ATP grants to U.S. private industry are intended
to encourage high-risk innovative technological research to benefit the
economy. Because Congress created the ATP to assist for-profit entities
in developing new technologies, the ATP authorizing legislation requires
that all intellectual property (IP) produced under an
ATP-funded project belong to the for-profit company awardee. Furthermore,
the company may not cede ownership of IP to subcontracting university
participants. The ATP authorizing legislation therefore is contrary to
the Bayh-Dole Act, which governs IP rights on other Federally-funded research
grants.
The ATP intellectual property provisions are far-reaching and pervasive, having other significant implications for UW investigators. For example, if an ATP-funded research project is reasonably related to an investigator’s other research interests (high probability), associated ATP intellectual property provisions may limit the ability to protect IP associated with future ATP-independent research interests since it is difficult to define the limits of the ATP provisions. Clearly this pervasiveness poses challenges that are extremely difficult to anticipate and, consequently, to regulate. Furthermore, if an investigator has research funding from other Federal or non-Federal sources, IP conditions imposed by an ATP-funded project may conflict with IP terms related to projects funded by these other sources. Such IP conflicts may occur with funding from Federal, corporate or foundation sponsors.
Funding through the ATP program could also be detrimental to customary collegial interactions because the ATP IP provisions can extend to non-ATP collaborators. Faculty who are ATP-funded must use caution not to involve concepts or ideas originating from non-ATP collaborators in the conduct of ATP-funded research, because any inventions resulting from those ideas must be assigned to the ATP-funded industrial partner. Conversely, experience has shown that investigators may be at risk by sharing their own non-ATP research ideas with ATP collaborators lest those ideas find their way into ATP collaborating entities’ patent applications. Thus, the open sharing of research ideas among University colleagues is greatly inhibited by the existence of ATP funding. These IP concerns apply not only to other principal investigators, but extend to everyone working in an affected laboratory, including students. We are particularly concerned about the ramifications ATP participation could have on graduate students and post-doctoral trainees.
Policy history
Research Policy Advisory Committee (RPAC): Policy recommendation approved April 15, 2004
Associate Deans for Research: Policy recommendation approved April 23,
2004
Vice Chancellor for Research: Accepted RPAC recommendation