(Approved by the Provost and Executive Vice President by authority of Executive Order No. 4)
In general, nonpatented innovations developed at the University become available to the public when the results of research are published. When patent applications are pending, the University may exempt patent details from public disclosure. This same exemption applies to nonpatented innovations according to the state Public Disclosure Act which exempts from disclosure "valuable formulae, designs, drawings, computer source code or object code, and research data obtained by any agency." Thus, an outside requestor would be entitled to access to all published research data but not enjoy free access to unpublished research information, laboratory notes, or test data. In cases of doubt, advice should be sought from the OIPTT and that office may seek advice from the Attorney General's Office, UW Division, if necessary.
The inventor's or author's disclosure is handled in strict confidence by the University (or its patent administration agent). If it is necessary to reveal the details of the innovation to a prospective licensee prior to public disclosure, the prospective licensee may be required to sign a confidential disclosure agreement to protect against unfair appropriation of the innovation.
Employees wishing to provide information or materials such as cultures, compounds, etc., to outside researchers for noncommercial purposes should protect their rights, and those of the University, by a written agreement before releasing the information or material. A form for this purpose is available in the OIPTT.
Any public disclosure of patentable material can invalidate some patent options. A public disclosure can result from the publication of a journal article, the placement of a graduate student thesis in the library, a presentation at a conference, or the release of technical information to a person not bound by a nondisclosure/confidentiality agreement. The public disclosure of an invention prior to filing a patent application can bar obtaining a valid patent. On the other hand, there is the understandable desire and obligation of University investigators to communicate the results of their research and new discoveries promptly. There are some reasonable procedures that can help with this dilemma. For example, a thesis that has been catalogued and made accessible by the libraries constitutes a publication. In order to gain time for patent consideration, the inventor or Vice Provost for Intellectual Property and Technology Transfer may petition the Dean of the Graduate School to temporarily withhold library access until patent considerations are evaluated.
In the U.S. a patent application must be filed within one year of a public disclosure. It should be remembered that most foreign rights will be forfeited at the point of public disclosure. Consequently, the most effective procedure is to file a patent application with the U.S. Patent Office before public disclosure takes place. If the inventor promptly furnishes a disclosure to the OIPTT, it is usually possible to investigate feasibility of patent coverage during the interval it takes for an article to be published. If a patent is justified and subsequently filed, the inventor and the University will qualify under the one-year deadline in the U.S. and will also be allowed to file in most foreign countries within one year of the U.S. filing. However, a seminar presentation or a paper delivered at a conference can also constitute public disclosure. Contact the OIPTT for advice on how to protect intellectual property.