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University of Wisconsin–Madison

Assignment

For the purposes of this document, assignment is the sale or transfer of ownership of inventions created or owned by University researchers to an outside party. Assignment is typically irrevocable, and so can permanently divest the original owner (i.e., a university inventor or WARF) of all future rights to the intellectual property.

The UW–Madison and WARF intend to satisfy sponsor needs to access university IP by vigorous pursuit of mutually acceptable licensing agreements, including exclusive license for appropriate time period. It is our policy to not provide assignment of IP as part of sponsored research contracts.

The rationale for this policy is summarized in “In the Public Interest: Nine Points to Consider in Licensing University Technology,” of which WARF is also a signatory. Some potential detrimental outcomes of assigning ownership of patentable IP include:

Risking the University’s compliance with federal laws, which prohibit assignment of the University’s intellectual property rights without approval from the supporting federal agency;

Severing the University inventors’ right to practice their assigned inventions in future research, which can be detrimental to their academic research careers. This concern also arises when individuals assign their own intellectual property.

Specific alternatives provided for licensing are described in Section 7. Options for Sponsored Research Agreements.

References

UW System Administrative Policy 342, Extramural Support Administration, Section 6.C.VII. Patents:

https://www.wisconsin.edu/uw-policies/uw-system-administrative-policies/extramural-support-administration/

 

UW System Administrative Policy 346, Inventions and Patents, Section 6.B. Equity Review and Disposition of Inventions,

https://www.wisconsin.edu/uw-policies/uw-system-administrative-policies/inventions-and-patents/