University of Washington Policy Directory

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*Formerly part of the University Handbook
Administrative Policy Statement
59.4.7


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 This agreement will provide royalty payments to the University for the "know how" or accumulated unpublished research data furnished to the company.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").

b.   Consulting Work Related to Inventive Activity

  1) 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 "Outside Professional Work Policy," Executive Order No. 57. 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;

  • Grant an equity interest in the business venture to the University, where appropriate (see Section 5.b, "Equity in Business Ventures");

  • 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 "Patent, Invention, and Copyright Policy," Executive Order No. 36. 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.