Ownership of patent rights to an innovation
As a condition of employment, all UW employees agree to assign to the UW all inventions and discoveries in which the UW has an interest. Students who are also employees, students working on a sponsored project, and students who have used University resources also agree to assign all such inventions and discoveries to the UW. (See the UW Intellectual Property Policy for more information.) UW employees that disclose an innovation to UW CoMotion (see Submit an Innovation), will formally assign their rights to the innovation to the UW via signing an assignment document. Each inventor is also required to sign an assignment document for submission with the patent application.
UW patent assignment agreement
The Faculty Senate’s Special Committee on Intellectual Property and Commercialization (SCIPC) and the Advisory Committee on Intellectual Property Policy and Practice (ACIP3) have recommended improvements to the process of requesting and receiving prior approval for outside work for compensation. The resulting recommendations were accepted and incorporated into the Form 1460 – Outside Work for Compensation by the Office of Research, which has the responsibility and authority for administering the Outside Work process on behalf of the Provost.
The Committees also recommended a separate assignment of intellectual property, limiting the scope of the present assignment. Only when the outside work is likely to involve inventive participation will the faculty member need a completed Patent Assignment Agreement. This agreement balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement. This present assignment of patentable inventions is signed electronically via DocuSign.
For each faculty member, a single completed Patent Assignment Agreement covers all inventive participation in outside work. This agreement only needs to be executed once.
The Form 1460 itself is still available for downloading and completion as a Word document, but it has been reformatted and the order and wording of some of the questions have been changed. No significant new information is being requested, but it is hoped that the reformatting and the re-wording and re-ordering of some of the questions will make the Form easier to complete and review. The assignment of intellectual property has been removed from Form 1460. Instead, Form 1460 includes a few questions that assess whether or not a present assignment is appropriate for this engagement.
The approval process (routing to your Department Chair and Dean’s Office, then the Office of Research) has not changed. Questions and comments about the Outside Work Policy (Executive Order 57) or the Form 1460 may be addressed to [email protected].
Only when the outside work is likely to involve inventive participation (as evidenced by responses to the intellectual property questions on the Form 1460) will the faculty member need a completed Patent Assignment Agreement . This agreement limits the scope of the present assignment and balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement.
For each faculty member, a single completed Patent Assignment Agreement covers all inventive participation in outside work. This agreement only needs to be executed once, electronically, via DocuSign.
If initially submitted as part of a request for outside work, then this Patent Assignment Agreement will be contingent on the approval of that request. This agreement will remain in effect only if the associated request for outside work is approved.
Questions and comments about the Patent Assignment Agreement or electronic signature using DocuSign may be addressed to [email protected].
Creating the innovation with someone from another institution
If you create an innovation with someone from another institution or company, UW CoMotion will work with that other institution or company to determine who owns the invention and any resulting intellectual property. If the invention is jointly owned with the other institution or company, the joint owners may choose to combine their rights through an inter-institutional agreement and license their rights together. Alternatively, at least in the U.S., joint owners may separately pursue licensing and commercialization opportunities. The UW CoMotion and the other institution or company will evaluate these strategies and pursue an appropriate option for the particular innovation.