Unlike other research universities, neither the UW System nor the UW–Madison require employees or students to automatically assign their intellectual property rights to patentable subject matter to UW–Madison (or to WARF, its designated patent management organization) as a condition of employment or enrollment.
UW System Administrative Policy 342, Extramural Support Administration, Section 6.C.VII. Patents:
“The University of Wisconsin does not contract with or otherwise require its employees to produce inventions and, thus, does not claim proprietary rights in employee inventions, except for the continuing right to use such inventions in its education and research mission. In the absence of contractual provisions obligating the transfer of all or some proprietary rights to the invention to a third party, employees who make inventions have complete ownership and control of any resulting patents. UW System policies and procedures governing patents are found in UW System Administrative Policy 346 (SYS 346), Inventions and Patents.”
This difference with other academic institutions has led to significant confusions and misconceptions during negotiation of industry-sponsored research agreements on the part of both sponsors and university faculty, staff, and students.
For inventions made at UW–Madison using federal funds or comingled with federal funds, WARF is the designated intellectual property management organization (IPMO). As such, WARF has the first right to take title to IP derived from federal funding. If WARF takes title to the IP, then the inventor is obligated to work with WARF throughout the patent and licensing process. Similarly, many sponsored research contracts require UW–Madison or WARF to fulfill intellectual property-related obligations and so the inventors would have obligations as described above.
If WARF does not take title to an invention derived from federal funding, then procedures to further evaluate and assign title are provided in
UW System Administrative Policy 346, Inventions and Patents, Section 6.B. Equity Review and Disposition of Inventions,
Policies for federally funded, non-federally funding and unencumbered inventions are described.
A UW–Madison inventor or inventors may obtain ownership of an invention created using federal funds if WARF declines to patent the invention, the inventor(s) petitions the federal government for rights to the invention, and the inventor(s) pursues and obtains a patent for the invention. The invention management obligations of the Bayh-Dole Act would continue to apply to the management of any patented inventions.
Negotiated obligations in other sponsored research contracts may override this sequence when no federal funding is involved and the absence of comingling can be established. Consultation with the Office of the Vice Chancellor for Research and Graduate Education early in the negotiation process is encouraged.