Principal investigators of sponsored projects must be cognizant of various federal, state, and campus regulations that govern intellectual property. As an institution that receives federal funds and as a publically-controlled institution of higher education, all individuals engaged in the research and development enterprise must understand their role in the intellectual property process.
Before the intellectual property process truly begins, researchers must first develop accurate, complete, and current records of the development of an idea from conceptualization through practice. Accurate records provide evidence of authorship/ownership. Researchers should maintain a laboratory notebook, which will assist later in the technology commercialization process. For guidelines on creating and maintaining research notebooks, a variety of resources are available:
- University of California, San Diego Technology Transfer Office (PDF)
- National Institutes of Health Office of Intramural Training and Education (PDF)
The format of laboratory notebooks varies widely; researchers may decide the most appropriate format for cataloging their research.
Records should be witnessed or corroborated by a person with sufficient knowledge of the subject and the ability to understand the data and methods used in the research; however, this individual should not be a co-inventor. Researchers should have a witness sign and date records and explicitly state that the data were observed and understood.
UW System policy states the researcher owns the raw data associated with the research, including the laboratory notebooks and other records generated during the course of the research. UW System policy does not permit the transfer of ownership of data to a third party, including a party that may have sponsored the research. Allowing a third party to own the data typically prohibits the researcher from further publication; however, access to the underlying data/records may be granted to a sponsor, as well as permit a sponsor to use such material freely. Researchers are strongly encouraged to discuss record access with the UWM Research Foundation prior to authorization or release.
Researchers are required to disclose their discoveries and inventions arising from research conducted at UWM. The UWM Research Foundation serves as the technology transfer office for our campus; researchers may submit their disclosures online through the Inventor Portal.Disclosure to the UWM Research Foundation should occur PRIOR to any public disclosure (e.g., oral presentation/slides, manuscript, conference abstract, poster presentation). In the U.S., patent law allows a researcher up to one year to protect their intellectual property; however, in other countries, patent rights are lost immediately upon public disclosure. Researchers are highly encouraged to complete their UWM Research Foundation public disclosure prior to any public disclosure to ensure the appropriate domestic and international protections may be pursued.
Researchers must disclose the names of all individuals who have provided a significant or creative contribution to the concept, including those outside of UWM. Individuals who carried out work at the direction of inventors are not typically designated as inventors (e.g., student assistants); however, the inclusion of a name on a patent is a legal determination made with the assistance of legal counsel. If uncertain, provide all personnel names involved in the project to determine whether an individual could be considered an “inventor” for legal purposes.
Role of External Funding
The role of external sources of support on an invention varies by sponsor. The intellectual property ownership for inventions developed with the assistance of federal funds (e.g., grant award) are generally vested with the faculty and/or staff involved in the project. Researchers are expected to disclose intellectual property developed with federal funds to the appropriate agency in a timely manner. Most disclosures to federal agencies occur via the iEdison portal. The UWM Research Foundation is responsible for patenting and licensing all intellectual property that results from federally-sponsored research through an agreement the Board of Regents for the University of Wisconsin System.
Here is a general overview of federal intellectual property regulations for inventions/technologies generated with federal research dollars:
- UWM (or its designated patent management organization, the UWM Research Foundation) has first right of refusal to ownership of inventions made in performance of all federal grants and contracts unless otherwise stated in the award documentation.
- UWM must have written agreements with persons performing the research (excluding clerical and non-technical employees), requiring prompt invention disclosure.
- UWM must disclose any invention conceived or first actually reduced to practice in the performance of work funded all or in part with federal funds. This disclosure must be made to the funding agency within two months after the UWM inventor discloses it in writing to the appropriate UWM administrator. The UWM Research Foundation assists inventors with the disclosure process to the federal sponsor.
- UWM must elect or decline whether to retain the title to the invention. If UWM declines the title, the rights of the invention pass to the federal funding agency that supported the research.
- The federal agency that supported the research typically retains a nonexclusive, nontransferable, irrevocable, paid-up worldwide license to practice or have practiced the invention for governmental purposes. Individual funding agreements/award notices may grant additional rights to the federal government.
Non-federal sponsors may have different intellectual property expectations. Researchers should carefully review a sponsor’s intellectual property guidelines prior to developing and submitting a proposal and at the award acceptance phase. There may be significant financial ramifications for both the individual researcher and UWM due to restrictive intellectual property expectations and clauses by non-federal sponsors. When in doubt, contact the UWM Research Foundation or the Office of Sponsored Programs for guidance.
Types of Intellectual Property Protections
There are various types of intellectual property protections that enable the owner to receive various benefits related to the invention.
Inventions and Patents
The U.S. Patent and Trademark Office defines an invention as “any art or process (i.e., way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.” Inventions may be made by a sole inventor or several inventors. Whether the invention is created by one individual or a team, the US Patent and Trademark Office specifically states that an inventor “contributes to the conception of an invention.”
A patent secures its owner, who is not necessarily the inventor, the right to take legal action to prevent others from making, using, and selling the invention of a limited period. A patent is granted for 20 years from the date in which it is filed; the term may be extended for certain inventions subject to federal regulatory delays (pharmaceutical products, for example).
U.S. patent law requires that patents may be granted on a new and useful process, machine, article of manufacture, composition of matter, or any improvement on these. Patents may also be granted on a distinct and new variety of plant that is asexually reproduced and any new, original, and ornamental design for an article or manufacture.
Patents also require an invention to meet the following three criteria:
- It must be new or novel. The invention must be demonstrably different from any existing prior art. “Prior art” consists of technology that is relevant to an invention and was publicly available at the time an invention was made. Inventors must be able to identify all prior art and distinguish how the claimed invention significantly differs.
- It must be useful. The invention must be useful in ways that represent improvements over existing products and/or techniques.
- It must be non-obvious. The invention cannot be obvious to an individual with “ordinary skills” in the art. “Ordinary skill” refers to the level of knowledge, experience, and expertise possessed by an ordinary engineer, scientist, or designer in the field relevant to the invention.
The UWM Research Foundation will conduct a review of the disclosure to determine the invention’s potential patentability and marketability, as well as to review the “prior art” to determine whether the invention may be classified as new or novel and non-obvious. The inventor(s) typically provide feedback on publications/sources that may be linked to the technology or clarify how the proposed technology substantially differs from existing art. The evaluation process is open to the judgment and interpretation of these three criteria by individual patent examiners.
Finally, patent law requires that all inventions undergo a “reduction to practice,” which is defined either as (a) constructive reduction to practice (i.e., completing a written, formal description of an invention in a patent application, even though physical embodiment of the invention may not have been realized) or (b) actual reduction to practice (i.e., making a physical embodiment of an invention and using it successfully for its intended purpose). The degree of physical verification required depends on the nature and complexity of the invention.
A copyright is a specific form of intellectual property protection that protects the expression of an idea, not the idea itself. A copyrightable work must be original, set down in a tangible or fixed form.
Works must fit into eight categories:
- Literary works.
- Musical works, including accompanying words.
- Dramatic works, including accompanying music.
- Pantomimes and choreographic works.
- Pictorial, graphic, and sculptural works.
- Sound recordings.
- Architectural works.
The Copyright Act of 1976 (PDF) states that an author has statutory copyright protection for a work from the time it is put in a fixed, tangible form. Authors obtain a number of exclusive rights under copyright protection:
- The right to reproduce the work.
- The right to prepare derivative works based on the original.
- The right to distribute copies to the public.
- The right to perform the work publicly.
- The right to display the work publicly.
For works owned by the original authors, copyright extends for the author’s life plus 50 years. When the author is an employer rather than the individual(s) who prepared the work (a “work for hire”), copyright extends from the earlier of 75 years from the date of publication or 100 years from the time the work was created. Under the two major concepts of fair use and library reproduction rights, the 1976 Copyright Act gives the general public the right to make very specific limited use of copyrighted works, usually for educational purposes, at no cost and without permission of the authors.
The copyright notice attached to a work intended for publication, includes the name of the copyright owner, the year in which the work is published and the copyright symbol:
© 2006 Lee G. AuthorOR
© 2006 University of Wisconsin-Milwaukee
The year given in the copyright notice should not be updated each time the work is printed, copied, or published.
Changes in the Copyright Statute
The copyright notice is no longer required for works published after 1 March 1989. All works published for the first time after that date may be assumed to be automatically copyright-protected, even though no copyright notice appears.
The term computer software is used to designate computer programs, in the broadest sense, and include users’ manuals and other explanatory material that accompany computer programs, and computerized databases. Also included are microcodes, subroutines, operating systems, high-level languages, application programs in whatever form expressed (machine or assembly language, source or object code) or embodied (chip architecture, CD-ROM, disk or tape storage, program listings).
The primary goals in protecting and managing software are to promote the widest possible distribution for the benefit of the public, and to produce revenue for the author of the software and the department. There are two basic approaches to distribution:
- The author or the department can distribute directly to users for a fee or at cost.
- The author, or in some cases the University, can make a distribution agreement with a commercial entity.
Although some software can be copyrighted and/or patented, the statutory situation surrounding its protection is confusing and constantly changing. Authors should be especially careful in protecting and distributing software. Some starting points and tasks to consider in protecting and disseminating software are the determination of:
- Best method for broad distribution of the software (for a fee or at cost directly by the author’s laboratory, or through an agreement with a commercial organization).
- Disposition of income resulting from distribution.
Whether or not commercial distribution of software is anticipated, it is important to protect software so that the author or UWM will be able to control and facilitate distribution, insure the integrity of the work, and protect the rights of the authors.
Under current U.S. law, not all computer software may be patentable; however, it is covered by the Copyright Act of 1976 (PDF), under which computer software (as well as all other copyrightable work) is protected by federal statute from the moment it is “fixed” in a tangible form.
The steps for obtaining copyright protection for computer software are the same as those for other copyrightable works. However, the option to formally register the software is ordinarily not pursued. Registration requires deposit of copies of the work with the U.S. Copyright Office. Such deposit of unpublished software may serve to make the work more easily accessible to non-authorized users who, by making slight changes, may create a “new work.” Under the present law, it is possible that this “new work” will not be considered an infringement of the original. Copyright protection can be claimed without registration or the deposit of copies with the Copyright Office. Registration is primarily useful if litigation occurs. Works can be registered at the time a suit is brought.Although it is important to claim copyright protection, copyright alone is not always adequate protection for software. Copyright law protects the form in which ideas are expressed, not the ideas themselves. Therefore, elements of software can sometimes be utilized without infringing the copyright in the software. From a commercial point of view, copyright protection for software is frequently inadequate.
Software as Proprietary Information
The limited protection offered by copyright law can be enhanced by designating software as “proprietary information” and requiring users to treat it as such. This demonstrates the author’s view that the intellectual property is valuable and should be protected against potential infringers.Establishing a proprietary position is crucial to attracting outside organizations capable of distributing the software. Generally, commercial distributors will not undertake marketing efforts unless software has been protected as fully as possible from the start both by copyright and by the requirement that users treat the software as proprietary information. The requirement that software be treated as proprietary information applies to the software and accompanying materials only (e.g., programs and manuals) that are readily usable by others and not on the basic scientific concepts upon which the software is based. In keeping with UWM‘s educational and scholarly purposes, such basic concepts should be openly available through publication or other means.
Authors should take these protective steps when distributing software:
- Inform the UWM Research Foundation (UWMRF) if you wish to copyright the software in UWM‘s name before distributing it to users.
- Consult with UWMRF if the software results from an externally sponsored research agreement so that contractual obligations and regulations affecting ownership, disposition of rights, and distribution and use of the software can be determined.
- Make certain that the appropriate copyright notice is prominently displayed on the work, that is, on all displays of the programs as well as on all tapes, disks, manuals, and associated materials (see samples below).
- Do not release software for loan, review, sale, lease, in-house use, or other purposes without first having fixed one of the sample labels shown below to the tapes, disks, manuals, or to their components of the software.
Sample Software Copyright Notices
Proprietary Information Notice
This disk (tape) contains proprietary information that is the property of [the owner/s]. This disk (tape) is furnished to the authorized users of [names of programs] solely to facilitate the use of such programs as specified in written agreements, and except as provided in such written agreements shall not be reproduced or copied or used, in whole or in part, Without the written permission of [the owner/s].
Proprietary Information Notice
This manual contains proprietary information that is the property of [the owner/s]. This manual is furnished to the authorized users of [names of programs] solely to facilitate the use of such programs as specified in written agreements, and except as provided in such written agreements shall not be reproduced or copied or used, in whole or in part, without the written permission of [the owner/s].
When software has potential commercial value as well as academic or research value, the following additional steps can be taken:
- Use letter agreements for distribution to users, inside or outside of UWM, who want to use the software for research purposes only. Examples of such letters can be supplied upon request to the UWM Research Foundation.
- In general, do not make commitments to install, service, or maintain software in any licenses or other distribution agreements, whether formal or informal.
- When income is anticipated, consult with UWM Research Foundation for advice on its disposition.
- Document each release thoroughly by recording addresses of recipients, number of copies and date of release.
All letters or other agreements stating the terms of release must be retained. Thorough documentation will demonstrate that no unauthorized, undocumented release of the software was made, and that all possible efforts were made to protect it, in the event future commercial distribution is desired, or defense against infringement becomes necessary.
Intellectual Property Revenue Distribution
The following guidelines describe the distribution of royalties and other licensing income from inventions and copyrighted works created by UWM faculty, staff, and/or students and held by the UWM Research Foundation (UWMRF). The UWMRF may hold such inventions/copyrighted works as a result of (1) voluntary assignment by an inventor/author, or (2) if an inventor/author is required to assign the inventions/copyright to the UWMRF, for example, as a matter of law in the case of federally funded inventions or as required by contract. As described below, a large fraction of the initial revenues flowing to UWM from any such inventions and/or copyrighted works are returned to the inventor/author’s research program, ensuring that it is a significant beneficiary of any derived income.
Under an agreement in place between the UWMRF and the UW System, UWMRF returns 40% of the gross revenues from the licensing of intellectual property to UWM, and 20% directly to the inventor(s) as personal income. The remaining 40% is retained by the UWMRF.
From the revenues returned to UWM, 75% (30% of the total gross) is distributed to the inventor’s research program (Program Share) until the Program Share reaches $100,000 per licensed technology. The remaining portion of the revenue returned to UWM, 25% (10% of the total gross), is divided equally between the inventor’s Division/School/College and the Research and Technology Development (RTD) Fund in the UWM Office of Research. Once the Program Share reaches $100,000, 37.5% of the revenue returned to UWM (15% of the gross revenue) is placed into the RTD Fund, 37.5% (15% of the gross revenue) is returned to the inventor’s Division/School/College, and 25% (10% of the gross revenue) is returned to the inventor’s lab.
The Office of Research places the Program Share in a separate account for each inventor with PI status. Each account is a non-lapsing, unrestricted research account that inventors can use at their discretion (subject to UWM policies and procedures on the use of funds). The Vice Provost for Research uses amounts in the RTD Fund in his/her discretion to advance research and technology development at UWM. When inventors leave or retire, their Program Share and any balance(s) remaining in the relevant Program Share account(s) will revert to the RTD Fund. Emeritus faculty may retain their Program Share account(s) while continuing to conduct research.
Copyrighted Intellectual Property
Under an agreement between UWMRF and UWM, if UWM does not make significant contributions to the development of copyrighted works assigned to the UWMRF, gross revenues from licensing of such works are distributed as follows: 50% to the author(s) (Author’s Share), and 25% to UWM (University Share). The remaining 25% is retained by the UWMRF.
If UWM made significant contributions to the development of a copyrighted work, UWM is entitled to a portion of the Author’s Share; the amount to be determined is at the discretion of the Dean of the relevant Division/School/College in consultation with the UWMRF.
The University Share is typically divided equally between the author’s Division/School/College and the RTD Fund per the agreement between the Vice Provost for Research and the relevant Dean.
Consult the following resources for additional information about intellectual property. Since each invention is unique, contact the UWM Research Foundation or Office of Sponsored Programs for assistance.
UW System Resources
UW System Administrative Policy 346: Patent Policy
UW System Administrative Policy 190: Computer Software Ownership
UW System Administrative Policy 191: Copyrightable Instructions Materials Ownership, Use, and Control