Ownership and Equity Review
Who has rights to inventions?
Faculty, staff and students must assign rights to Wisconsin Alumni Research Foundation (WARF), the University’s designated patent management organization, to: inventions funded in whole or in part by federal research grants; or to inventions funded by research agreements that require the inventors to assign rights in inventions generated under such agreements to 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 Office of the Vice Chancellor for Research and Graduate Education, 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. If WARF has expressed an interest in protecting this invention the inventors, at this point, can choose if they want to work with WARF.
If WARF accepts for intellectual property protection an invention that is either federally funded, or supported by an agreement requiring assignment of inventions to WARF, then 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 law, the federal funding agency has the next right to take title to that invention. In this instance, if inventors are interested in seeking a patent on their own, they may petition the federal funding agency for the right to do so. The Office of the Vice Chancellor for Research and Graduate Education assists inventors in this petitioning process.
The University retains the right to use the products of research conducted as a University activity for its education and research mission.
What is the equity review?
Once WARF reviews and makes a decision on a new disclosure the Invention Disclosure Report is forwarded to the Office of the Vice Chancellor for Research and Graduate Education for 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 (industrial, association, foundation, consortia agreements; material transfer agreements; etc.) as well as a review of all relevant 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 Office of the Vice Chancellor for Research and Graduate Education 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 Office of the Vice Chancellor for Research and Graduate Education receives the invention disclosure report from WARF. The Office of the Vice Chancellor for Research and Graduate Education also notifies other funding agencies and material suppliers if required by agreement.
The Office of the Vice Chancellor for Research and Graduate Education, 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.
Commingling 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 commingling policy which dictates that if a researcher has any federal monies in his or her lab at the time of invention conception through reduction to practice, the invention is presumed to be federally funded unless the principal investigator has been authorized by the Office of the Vice Chancellor for Research and Graduate Education to create a firewall. This presumption can be challenged through the review process.
Review process
If it is determined that the University has rights to an invention because of the presence of commingled federal funds during the inventive period, the inventor may challenge that determination by engaging the review process. The review process includes a comparison between the scope of work of the relevant federal research grant(s) and the scope of the inventive work for the purpose of delineating a nexus between the two.
The review process has three levels: direct resolution between the of the Vice Chancellor for Research and Graduate Education and the inventor, resolution through consultation with the School/College Dean or Dean’s Designee, and resolution through a Review Board which acts in an advisory capacity to the Associate Vice Chancellor 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 sources and the 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.