University of Washington Policy Directory

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*Formerly part of the University Handbook
Administrative Policy Statement
59.4.2


Technology Transfer

(Approved by the Provost and Executive Vice President by authority of Executive Order No. 4)



2.  Patents: A General Overview

a.   Definition of a Patent

A patent is a grant giving the owner the right to exclude others from making, using, or selling the invention in the jurisdiction where issued. This right may be assigned to the employer by the inventor as a condition of employment, or for other reasons, but the patent application must be filed in the name of the inventor.

b.   Characteristics of a Patentable Invention

In order to be patentable, an invention must pass three tests. It must be:

From a broad perspective, natural laws or scientific principles cannot be patented since they have always existed. They can be discovered but not invented. More specifically, the following are not usually patentable:

  • Substituting one material for another, i.e., plastic for wood.
  • Merely changing the size of a device.
  • Making something portable.
  • Substituting an equivalent element for another element.
  • Changing the shape of an item.
  • Printed matter.

c.   Identifying the Inventors

Only persons who made an inventive contribution to the subject matter claimed in the patent application may be named as inventors in the application. Persons who have made other contributions such as gathering essential data or constructing a practical embodiment of an invention, are not inventors—unless they make an inventive contribution. Similarly, a project supervisor is not entitled to inventor status simply because of his or her supervisory role; an inventive contribution is the singular criterion. The determination of who has made an inventive contribution may be difficult when several researchers and students have been involved in a project. It can be fatal to an otherwise successful patent application if the name of a legitimate co-inventor is omitted from the application and competing applications are filed by different inventors. Therefore, it is important to clarify inventorship before the patent application is submitted. If there is doubt concerning a person's inventor status, it is preferable to grant tentative inventor status at the time the invention disclosure is prepared; patent counsel will clarify this by the time the patent application is completed.

d.   Principal Features of Federal Patent Policy

Prior to 1980, there were almost as many federal patent policies as there were awarding agencies. In 1980, PL 96–517 (commonly known as the Bayh-Dole Act) was passed by Congress and provided a uniform governmentwide patent policy applicable to awards made to nonprofit organizations, universities, and small businesses. Certain improvements were added in 1984 with the passage of PL 98–620. These new laws marked a dramatic liberalization of previous patent policy by allowing grantees/contractors to take title to inventions made in the course of their federally funded research. To enjoy the full benefits of this law, the University must:

  • Inform the sponsoring federal agency of an invention within two months of disclosure to the University's office for coordinating invention matters;

  • Elect within two years of disclosure whether or not the University wants title rights;

  • File a patent application within one year of electing title, or by the patent filing deadline under U.S. patent law, whichever comes first;

  • Grant a royalty-free license to the government within six months after filing a patent application;

  • Provide the government with annual reports on utilization of federally supported inventions administered by the University; and

  • Secure written invention agreements from employees working on federally assisted research projects.

e.   Employee Invention Agreements

It is the responsibility of the OIPTT to disseminate the Patent, Invention, and Copyright Policy to University employees. This may include employee invention agreements, but failure of the University to secure a signed agreement in no way affects the responsibilities or obligations of either party under the Patent, Invention, and Copyright Policy of the University. Employees are expected to comply with the University requirements even if they have not signed a specific patent agreement.