Comingling is a circumstance where research support from multiple, perhaps competing, sources might contribute to a discovery, and so confound assigning rights associated with the invention or other resulting intellectual property. A comingling assessment proceeds by examination of whether or not the scope of work in different research contracts is overlapping.
Given that UW–Madison investigators annually receive hundreds of millions of dollars of federal funding, it is reasonable to start negotiation of industry-sponsored research by recognizing the potential for comingling with federal funds. Moreover, as opportunities for industrial funding increase, attention must also be paid to the potential that comingling of non-federal funds may also occur, leading to difficult circumstances in equity review. Consequently, industry sponsors should be apprised of the different funding sponsors working with UW–Madison investigators and origins of materials to be incorporated into new projects in order to permit assessment of whether appropriate separation of scope of work in different projects can be achieved.
To increase awareness of the potential for comingling, review of existing federal and non-federal grants and contracts is recommended during the preparation of new industry-sponsored research proposals to evaluate and minimize the potential for future complications arising from overlap of scope of work.
The following guidance is provided to address issues of comingling:
- Comingling will be presumed for the purposes of development of proposals and negotiation of sponsored research agreements when the scope of work for the anticipated research overlaps with any concurrent or previously funded projects in the same lab, or when, given the respective scopes of work, an impartial outside observer would conclude that overlap in scope of work would introduce a reasonable potential for competing claims to any resulting IP (i.e., IP that could be said to have arisen under more than one such project). Specifically, if federal funds contribute to the payroll of the inventor or were present in the inventor’s laboratory during the inventive period, it is the default assumption that federal funds contributed to the invention.
- This assumption is rebuttable by establishment of no overlap in the scope of work as agreed by representatives of the appropriate School/College Dean’s Office and the Office of the Vice Chancellor for Research and Graduate Education (OVCRGE). Appeals of comingling decisions are carried out using procedures analogous to those introduced in Section 4. Equity Review.
- It is appropriate and necessary to distinguish between incidental use of routine equipment and facilities and an enabling use of specialized research equipment and facilities available at the university. The latter, which should be covered by specific language in the sponsored research agreement and/or facilities use agreements, is an appropriate usage when covered by approved institutional facilities & administration costs and additional facilities use fees.
- If, as a result of the analysis described above, the presumption of comingling includes federal funding, the development of proposals and negotiation of sponsored research agreements must protect the rights of the federal government as established by the Bayh-Dole Act and be compatible with the applicable IP management obligations.
- If, as a result of the analysis described above, the presumption of comingling includes research sponsored by non-government entities, the process of negotiation of sponsored research agreements must ensure that scope of work is focused to eliminated potential of competing claims to any resulting IP.
- Even if federal funding is not currently present within the lab and/or there is no presumption of comingling under the analysis described above, researchers and negotiators must be cognizant of the potential ramifications related to future federal funding when making any commitments regarding IP. Because of the prevalence of federal funding on campus, the University will still endeavor to include language protecting any rights the federal government may have in resulting IP. In addition, researchers and negotiators must be cognizant of the potential ramifications related to future funding from both federal and private sponsors when granting IP rights to current sponsors.
UW System Administrative Policy 346, Inventions and Patents
“A substantial portion of research performed at UW System institutions is funded by outside parties through formal grants and contracts, with various federal agencies constituting the majority research funding source. In addition, other contractual agreements may apply to research conducted by UW System institutions, such as collaboration agreements or material transfer agreements. The UW System Board of Regents is the legal recipient of all grants and contracts which are accepted on behalf of faculty, staff and students and, as such, has the legal responsibility for complying with all contractual obligations. Consequently, when a potential invention is generated, it is necessary that the designated authorities at each institution review and make determinations with regard to patent rights with reference to any contractual obligations which apply to the invention.”