University of Washington Administrative Policy Statements
Rev/Dec 27, 2008
59.4.7
Table of Contents
Technology Transfer
(Approved by the Provost and Executive Vice President by authority of Executive
Order No. 4)
7. Relationships With Industry
a. Transfer of Innovations Without Intellectual Property
Protection
Ordinarily, the best way to ensure the transfer of University
innovations to the private sector is to obtain patent or copyright
protection. Patents and copyrights provide a clear definition
of the technology, a legal identification of the true inventors or
authors, certain protections to the licensee, and a mechanism to enforce royalty
payments. Nevertheless, in some cases, patent coverage is not feasible even though
technology transfer to the private sector is desirable. In such cases, an agreement
may be negotiated with the company. This agreement will provide royalty payments to
the University for the "know how" or accumulated unpublished research data
furnished to the company. In some cases, it is appropriate for the University to seek
an equity position in the business venture (see Section 5.b,
"Equity in Business Ventures").
The company may seek the direct involvement of the inventor or author as
a consultant, in which case a separate consulting agreement consistent with
University policies should be developed (see Section 7.b, "Consulting
Work Related to Inventive Activity").
Consulting in General—Consulting for commercial or other outside
entities often takes place in situations prior to inventive activity.
In such circumstances, it is important for the employee to avoid conflicts
with the Patent, Invention, and Copyright Policy of the University.
This is particularly true where collaborative research is performed
involving joint efforts between University employees and outside organizations.
It is important that faculty members avoid conflicts-of-interest when
they undertake consulting relationships. For example, conflicts-of-interest
may arise if the faculty member owns stock in the company, holds a management
position in the company, has a continuing role in the scientific program
of the company, or also receives research funding from the organization.
It is extremely important that the scope of the consulting does not
conflict with the faculty member's University obligations, and that
the faculty member is not obligated to provide to the company intellectual
property resulting from his or her University research. Consequently,
faculty members must submit a Request for Approval of Outside Professional
Work for Compensation form to their department chair and dean for approval.
Disclosure of potential conflicts-of-interest is crucial. They can often
be defined so as not to present a bar to the consulting if disclosed
in advance. When intellectual property is at issue, the OIPTT should
be involved to clarify the rights of the parties and of the University
before the consulting takes place. These disclosures must take place
before consulting agreements are negotiated. In some cases, it is appropriate
for the University to seek an equity interest in the business venture
(see Section 5.b, "Equity in Business
Ventures").
2)
Consulting in Relation to a Licensed Technology—Consulting related
to an innovation already identified and being licensed by the University
(or its agent) may ensure the orderly and full development of the innovation.
Ordinarily, it is not expected that such consulting will be provided
as part of the licensing consideration but will be covered instead by
a separate consulting agreement between the inventor or author and the
licensee. Occasional telephone inquiries from technical representatives
of the licensee or brief meetings at the University during which the
inventor or author explains the general concepts of the innovation are
normally considered advisory exchanges and handled without cost to the
licensee. When consulting results in improvements to licensed inventions
or updates to any other licensed materials such as software, the OIPTT
should be notified. Special arrangements for the distribution of income
from these improvements or updates must be approved by the OIPTT.
3)
Consulting Agreements—All consulting activities
require prior approval by the Office of the
Provost, consistent with the policies
stated in the University
Handbook, Volume Four,
Part V, Chapter 6.
Consulting agreements between a business venture
and a University employee should:
Conform with the University's policy on outside professional
work;
Avoid conflict with the terms of any license agreement
between the University and a licensee,
or with any other University relationships;
Define the subject matter and scope of the consultation
so as not to overlap with University-owned
intellectual property (except when handled in conjunction with a
license);
Clarify the ownership of the intellectual property developed
as a result of the consultation project;
Be discussed with the OIPTT if there are questions about
intellectual property or University policies;
and
Ensure payment of normal consulting fees and reasonable
expenses to the University employee.
c. Reporting Technologies Developed Outside
University Employment
All innovations discovered by a faculty or staff member during
employment with the University must be reported to the OIPTT for determination
of the degree of University interest. This ensures compliance with state law and
the requirements of any sponsoring agencies, and allows the University to determine
whether it has an interest in the technology, as defined in the University
Handbook's "Patent, Invention, and Copyright Policy," Volume Four,
Part V, Chapter 7, Section 1.C.
If the inventor believes that he or she owns the technology, and that the University
does not have interest in it, the report should include details addressing each of
the factors identified in the previously cited University Handbook provisions.
The concurrence of the department head and dean should be shown
on the report prior to transmittal to the OIPTT.
d. University Testing or Development of Privately
Owned Technology
In general, University facilities should not be used to further
developmental work related to innovations already conceived and belonging
to students or employees (the result of independent activity outside the
University). However, in some cases, it may be in the best interest of
the University to allow its facilities to be used in a collaborative effort
even though the innovation belongs to the student or employee. In such
cases, the merits of the proposed collaboration must be documented as follows:
The employee must provide clear evidence that the innovation
was made independently of his or her employment at
the University and the employee's statements must be confirmed by the
chair or director of the employee's unit.
The chair or director of the unit and dean should state
the reasons why University facilities and/or resources
should be utilized and indicate the benefits expected for the University
from the proposed collaboration.
If the proposal from the chair or director and dean is approved,
a written agreement will be prepared by the OIPTT
wherein the University will acknowledge the independent creation of
the innovation. The agreement will also provide clear assurances that University
facilities will not be used to support any manufacturing or marketing
efforts related to the technology.
If the employee ultimately markets the innovation, any purchases
by the University must satisfy fully the requirements
of the state of Washington Conflict of Interest Law.
Proposals from University departments relating to the above
matters should be forwarded to the OIPTT.
