(Approved by the Provost and Executive Vice President by authority of Executive Order No. 4)
Technology transfer is the transfer of intellectual property rights between the University and companies or other entities outside the University. Such intellectual property rights may consist of patents, copyrights, trademarks, and trade secrets. The University unit responsible for all technology transfer and related intellectual property matters is CoMotion. This policy statement provides general information and a description of CoMotion's procedures. The University's "Patent, Invention, and Copyright Policy" may be found in Executive Order No. 36.
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.
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:
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.
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:
It is the responsibility of CoMotion 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.
Copyright generally protects original works of authorship embodied in a tangible means of expression. Copyrightable works include literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic, and sculptural works, motion pictures and other audiovisual works, sound records, and architectural works. Copyright does not protect titles, slogans, short phrases, inventions, ideas, discoveries, or facts apart from their description. Copyright arises automatically when a work is created and does not require any formal registration or publication. The duration of copyright varies depending on a number of factors. For individually authored works, created on or after January 1, 1978, the copyright lasts for the life of the author plus 70 years. Generally, the owner of a copyright has the exclusive right to do and to authorize others to do any of the following:
Under University Copyright Policy, faculty, staff, and students retain all rights in copyrightable materials they create, except when special circumstances or contractual arrangements prevail. All questions regarding ownership of copyrightable materials should be referred to CoMotion.
Software may be protected both by copyright and by patent law. Patent law protects any novel, nonobvious, and useful process or method performed by a computer program. Copyright law protects the expression of the process or method. Questions regarding software ownership should be directed to CoMotion.
The University policy pertaining to patents and inventions appears in Executive Order No. 36. All potential inventions should be reported promptly by the inventor to CoMotion. Faculty and staff should contact that office for advice on:
CoMotion reserves the right to handle inventions directly or to use other technology administration agencies.
The evaluation of an invention for patentability is usually based on an invention disclosure. Forms and guidelines for this purpose are available from CoMotion. The invention disclosure has several values. By writing the disclosure, the inventor clarifies the inventive conception. A disclosure is essential for technical evaluation of the invention, assessment of its commercial feasibility, and determination of its patentability. It is used for the novelty search and its clarity and completeness have a definite bearing on the quality and the conclusion of the patent search. The disclosure is used in preparing the patent application. A well-prepared disclosure allows the patent attorney to prepare an application at minimal cost. Where dated and witnessed laboratory notebooks are not available, the disclosure serves as proof of the conception and may help to determine, in any controversy, who first made the invention.
Laboratory notebooks in diary format are especially helpful in preparing an invention disclosure and may be crucial in cases where two or more parties claim the same invention. In legal challenges, this record may provide the evidence necessary to establish the date the invention was conceived or first reduced to practice, and document the steps taken to reduce it to practice. Further advice regarding laboratory notebooks is available from CoMotion.
|1)||Invention Evaluation—During the
invention evaluation process, the invention will be subjected to technical,
legal, and marketing analyses. This generally involves consultation
with the inventor, patent counsel, and prospective licensee(s) under
appropriate confidentiality arrangements. If commercial value is present
but patent protection does not appear possible, the invention may be
licensed as nonpatented technology.
|2)||Patent Application Process—If a patent application
is filed, it is common for several months to elapse before
the office in which it is filed acts on the application. The first "Office
Action" often results in a detailed rejection of all or some of
the proposed claims. At this point, the patent attorney
normally consults with the inventor to prepare a response, giving reasons
for believing that certain parts of the Office Action are incorrect.
This process is time consuming but typical for most patent applications.
It is common for at least two years to elapse between the filing of
an application and the issuance of a patent. However, licensing activity
can be initiated while the patent application is being reviewed and
|3)||Other Options—Inventions in
which the University has an interest but which do not meet University
criteria for patenting shall be managed in accordance with policies
and procedures determined by CoMotion. Those procedures may include:
The choice of options in a given case will depend largely on what is permitted by state law, other University policies, and preexisting commitments to sponsoring agencies.
In general, there are two principal types of licenses: exclusive and nonexclusive. Under an exclusive license, the company is the University's sole commercial licensee and no other license may be granted by the University during the term of exclusivity. In some instances, exclusivity may be limited to a product line or geographical area. Nonexclusive licenses may be issued to all companies or organizations that meet the terms of the proposed license.
The University retains the right to license intellectual property, but may on occasion engage other intellectual property management firms. The University has agreements with other nonprofit agencies—the Washington Research Foundation, Research Corporation Technologies in Tucson, Arizona, and the Battelle Development Corporation in Columbus, Ohio, and occasionally uses other agencies on a case-by-case basis.
|a.||Allocation of Costs and Division of Royalties, Equity,
and License Fees
|1)||Allocation of Costs—Direct costs incurred
by the University in the protection and licensing of intellectual property must
be recovered before distribution of income begins. The Vice Provost for Innovation may also retain amounts necessary to recover reasonably
anticipated direct costs.
Direct costs include legal expenses incurred by the University and associated with either:
Direct costs also include the University's out-of-pocket expenses associated with a given transfer which includes but is not limited to travel, market research, and costs associated with the management and liquidation of an equity security (as subsequently defined in this policy statement).
Colleges, departments, and other units will occasionally direct discretionary funds toward the further development of specific technologies. In certain cases these expenditures may be treated as direct costs and may be reimbursed. All such reimbursements shall be subject to approval from the Vice Provost for Innovation. They will be made only after recovery of the CoMotion administrative fee and recovery of any direct costs incurred by CoMotion and the Treasury Office. The expenditures and reimbursements will be governed by a memorandum of understanding among the participants and subject to the following restrictions:
CoMotion shall retain licensee-paid cost recoveries, and shall deduct an administrative fee of 20% from adjusted gross revenue. From the remainder, CoMotion and the Treasury Office (in cases of distribution of equity or equity proceeds) shall deduct amounts necessary to cover incurred and reasonably anticipated direct costs.
|2)||Division of Net License
Revenue—Net royalties, equity and equity proceeds, and licensing
fees (collectively, "net License Revenue") derived from the licensing
of intellectual property in which the University holds an interest will be
distributed as shown in the table below, after:
|#1||Deducting the CoMotion administrative fee;
|#2||Deducting and reserving expenses as provided in
Section 5.a.1; and
|#3||Deducting the amount of any grant from research programs that CoMotion administers, including, but not limited to, the Commercialization Grant Fund (CGF) program, if the license revenue was generated from a technology developed using funding from these programs, and reimbursing such amount back to the CoMotion research program.|
Distributions will be made annually according to a calendar schedule published by CoMotion.
The share for University Research Funds (including the Graduate School Fund and Royalty Research Fund) is used to promote research across the whole institution. The college/departmental share is allocated to the dean of the college for distribution. It is expected that at least 75% of this share will go to the inventor's or author's department (or other unit) for promotion of research according to departmental (or other unit) and college goals.
For purposes of applying the distribution schedule, income from improvements and updates of inventions (e.g., computer software updates) is considered as an addition to the net income on the initial technology. Special arrangements may be approved by CoMotion when such updates are done by the employee on an outside consulting basis.
This revenue distribution schedule will be used to distribute revenue received by the University on technologies disclosed on or after July 1, 2003. This revenue distribution schedule will also be used for revenue from licenses that combine disclosures made before and after this date. No adjustments of prior distributions will be made. With regard to license revenue resulting from disclosures prior to July 1, 2003, the determination whether a distribution is appropriate and the amount, if any, to distribute shall be governed by Subsection 5.c.3, Item #1 below (in the case of revenue from sale of equity) and by the policy in place at the time of the disclosure (in the case of cash royalties and license fees.) Agreements with development agencies made prior to 1969 and reconfirmed in writing thereafter will continue with the royalty arrangements specified therein.
Notwithstanding the foregoing, in appropriate circumstances, the University may enter into a sponsored research agreement (SRA) with a corporate sponsor where the sponsor is to pay an up-front licensing fee in exchange for pre-negotiated, University intellectual property terms (a "pre-negotiated IP fee"). Where, as of the date such an SRA is executed, there is no existing University intellectual property covered by such SRA, then the net of such pre-negotiated IP fee will be distributed according to the following alternative distribution schedule.
As the above table shows, under this alternative for pre-negotiated IP fees, if specific IP is later developed within the project subject to the SRA, the inventors/authors of such IP, and their respective departments and colleges, will not receive any portion of the pre-negotiated IP fee. Instead, those portions are allocated respectively to a budget under the control of the PI for future projects in that PI's laboratory, and to that PI's department/college. Any other PI-related revenue, including revenue derived from the licensing of specifically identified IP, will be distributed using the first table in this section that is titled "Net Royalties, Equity, and License Fees."
University employee may prospectively waive the receipt of a portion or all of
his or her share of annual revenue received by the University under
a license. The following conditions apply:
|#1||The employee, at the time of the waiver,
may designate his or her laboratory or research program, department, or other
University unit as the recipient of the waived amount. The waived funds will be
regarded as regular University funds subject to all of the usual and customary
legal and administrative requirements of the University.
|#2||In order to ensure that the use of the funds is
consistent with the broad mission of the University, or to avoid financial
imbalances or hardships within or among University units, the Office of the
Provost, in consultation with the dean or deans of the involved units, must
approve a plan for the designation of funds submitted by the employee, and,
thereafter, may review the use of the funds at any time. It is expected that
the waiver plan will be approved only with the concurrence of the dean of the
|#3||The waiver must be irrevocable and executed prior
to the end of the fiscal year in which the revenue was generated.
|#4||Funds directed to the employee's research
laboratory or program may only be used to support research and educational
expenses associated with the employee's research laboratory or program.
Such funds cannot be used for the employee's travel (including transportation,
lodging, meals, and attendant costs), salary for the employee or a family
member, or other similar purpose.
|#5||The funds waived by the employee may be matched by
the University subject to the following conditions:
|b.||Equity in Business
The University may take an equity position in a company whether or not license fees or royalties are paid to the University as part of a negotiated agreement. A typical circumstance under which the University might receive equity would be as part of an agreement licensing a University-developed innovation to a start-up or developing business venture. Another example might occur when an employee of the University utilizes the expertise and/or innovation he or she has developed in the course of University employment and assists a business venture in the commercialization of an idea. (A business venture includes corporations, partnerships, or other commercial enterprises.)
To ensure a balance of interests for the business venture as well as for the University, the University will generally require that it receive an equity position in such circumstances. This equity interest is managed and disposed of by the University in accordance with investment guidelines prescribed by the Board of Regents and the policies and procedures stated in this and the following section.
When such equity interest is liquidated by the University, the net proceeds, after recovery of all University costs and after any distributions described in the following section, are administered by the Office of Research to promote research and technology transfer across the entire University. If the proceeds from the disposition of a particular equity interest are unusually large, the Provost shall confer with the University Budget Committee and with the Research Advisory Board on alternative uses for amounts in excess of a base figure (set at $3 million in 2000 dollars).
There may be situations in which both the University and its employees separately own equity interests in a business venture. In such circumstances, the employee's equity interest is considered to be independent of the University's equity interest and is not held, managed, disposed of, or distributed by the University. An example would be a case in which the University receives an equity interest in a business venture as a result of licensing certain innovations developed by one of its employees and in which the same employee also owns an equity interest as a result of being a founder of the business venture receiving the license. In this example, the employee's equity interest is not held or managed by the University but rather by the employee, and the employee's status as a founder having an ownership stake in the business venture renders the employee ineligible to receive a distribution of a portion of the University-owned equity interest or the proceeds from sale of such.
|c.||Disposition and Distribution of Equity
section describes the University of Washington's
policies and procedures governing the disposition and distribution of equity interests
received by the University as the result of the commercial licensing or other
transfer of University-developed intellectual property rights for commercial use.
With the exception of persons who are founders or have certain relationships with
founders, the same persons eligible to share in patent and copyright royalties are
also eligible to participate in a distribution of equity interests received by the
University, to the extent that the amount realized by the University from the
disposition of those equity interests exceeds the University's costs. These policies
and procedures also provide that when the University makes a decision to publicly
sell an equity interest, a prospective recipient may request to receive the
distribution in either cash or marketable securities or a combination of both.
Pending a distribution, the University shall be considered the sole legal and
beneficial owner of, and shall manage, the securities. Prospective recipients
shall have only the right to receive the net proceeds (if any) realized by the
University from a liquidation. In addition, under certain circumstances, the
University may allow the distribution of an equity interest prior to sale by the
University. All distributions of equity interests must be conducted in accordance
with all applicable securities laws and in accordance with University policies and
|2)||DefinitionsFor purposes of this section,
the following definitions apply.
|#1||Except as provided herein, an inventor or similar person may
be a Recipient if the invention or innovation was disclosed on or after
December 20, 2000. Equity received by the University as a result of
licensing for disclosures prior to December 20, 2000 will not be
distributed to inventors, but will be retained in its entirety by the Office
of the Provost to promote research and technology transfer.
|#2||A Recipient shall be eligible to receive the same percentage of a
Distribution (if any) as the percentage specified for inventors in the
University's distribution policy for license revenue. In the event more
than one Recipient is eligible to receive a particular Distribution, such
share shall be divided in accordance with any applicable written agreement
signed by all of the Recipients, or lacking any such agreement, in accordance
with University policies and procedures.
|#3||The College, School, and Department (or other comparable University
organizational unit) shall receive the same percentage of a Distribution
(if any) as the percentage specified for such units in the University's
distribution policy for licensing revenue. Such share shall be distributed
to the unit or units in which the research or other activities giving rise
to the applicable Intellectual Property Rights were performed in the same
proportion as would be distributed to the employees performing such research
or other activities, subject to any adjustments deemed equitable and
appropriate by the University.
|#4||If all or part of what would otherwise be a faculty member's, researcher's,
or employee's share is not distributed to that person because that person is
a Founder, or for any other reason, that person's share shall be divided
among the remaining non-Founding inventors. If there are no non-Founding
inventors, the inventor share shall be split evenly between the University
Research Funds and the college/school/department.
|#5||Any cash or other dividends previously paid by a Company on Equity
Securities and accumulated by the University shall be distributed on the
same basis as the Equity Securities upon which such dividends were
|#6||In connection with any Liquidation in which the University is to receive
Marketable Securities, Recipients will be provided a single opportunity to
irrevocably request to receive (in whole or in part) a Distribution in the
form of Marketable Securities in accordance with the procedures described
|#7||Recipients may be provided, in certain circumstances, a single
opportunity to irrevocably request to receive (in whole or in part) an
Early Distribution of Equity Securities in accordance with the procedures
|#8||The University shall have the sole and exclusive authority to determine
the timing of a Liquidation. Recipients, including prospective Recipients,
shall have no rights to participate in the management of Equity Securities,
and in particular, shall have no right to approve, consent to, or receive
notice of any securities transactions.
|4)||General Rules and Conditions
|#1||Only such persons who are expressly eligible to receive a
Distribution, as provided in applicable University policies and procedures
and under any applicable law, may be a Recipient. Prior to any Distribution,
the University shall be considered the sole legal and beneficial owner of
and shall have the sole right and authority to manage all Equity
|#2||Distributions shall be made in accordance with all federal, state, and
other applicable securities laws, including the rules and regulations of the
SEC, and all Distributions shall be made on condition of compliance by the
Recipient and the Company with all such laws.
|#3||The University may establish such procedures, conditions,and limitations
that it deems proper and appropriate with respect to Distributions, including
any required tax withholding, restrictions on resale (including holding
periods or other measures ensuring the restriction of transfer of Equity
Securities in appropriate circumstances), and the filing of appropriate SEC
notices and forms.
|#4||The University reserves the right to restrict, suspend, or not engage
in a Distribution if at any time it determines that:
|#5||The University shall have the sole and exclusive authority to manage
Equity Securities including, without limitation, to make all decisions
pertaining to Liquidations, sales of Equity Securities, Distributions, and
Early Distributions, including their timing, manner, and method.
|#6||All Distributions (whether in the form of cash, Marketable Securities, or
Equity Securities) will be net of University Costs, including, but not limited
to, the costs to acquire, manage, transfer, or liquidate such securities.
|#7||The Treasury Office will administer all Liquidations and will ensure
that the proceeds of Liquidations (whether in the form of cash or Marketable
Securities) will not be released to Recipients until received and cleared
by the Treasury Office, including making deductions for University Costs.
|#8||The Treasury Office will administer all Early Distributions and will
ensure that Equity Securities distributed as part of an Early Distribution
will not be released to Recipients until authorized under all applicable
arrangements governing the Early Distribution.
|#9||A Recipient may waive (in whole or in part) the right to receive a
Distribution in accordance with the policies and procedures relating to
waivers of rights to receive royalties.
|#10||The University shall have the sole and final right to make decisions
reserved to it under these policies and procedures and to construe,
interpret, and apply these policies and procedures, including the making
of any factual determinations necessary for their implementation.
|#11||The University reserves the right to change at any time its policies
and procedures regarding Distributions.
|5)||Distribution of Cash and/or Marketable Securities
|a)||Authority—Liquidations may arise out of one or more
of the following circumstances:
|b)||Procedures—Upon the closing of an agreement (or as soon thereafter
as may be practicable) pursuant to which the University will receive an Equity
Security, CoMotion will notify the Treasury Office of such an agreement and
provide the Treasury Office with the following information:
|c)||Request to Receive Marketable Security—Based on information furnished
by CoMotion, the Treasury Office will notify each Recipient in writing, at least
ten days prior to a Liquidation affecting a Recipient, of the opportunity (if any)
to request to receive all or part of the Distribution in the form of Marketable
Securities. Distributions will be made entirely in cash, except Distributions of
Marketable Securities may be made by the University if:
|6)||Early Distribution of Equity Securities
|a)||Authority and Conditions—An Early Distribution shall be
allowed only if the University finds in its sole discretion that an Early Distribution
|b)||Procedures—In the event the University makes a decision to allow an Early
Distribution (whether at the time of the closing of the agreement to acquire an Equity
Security or thereafter), CoMotion will notify all Recipients in writing of the
opportunity to request to receive all or part of the Distribution as an Early
Distribution. Whenever any Equity Securities to be included within an Early Distribution
are under the control of the Treasury Office, CoMotion will provide the Treasury
Office the following information:
|c)||Request to Receive Early Distribution—No Early Distribution will be made
to a Recipient unless in connection therewith:
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 CoMotion 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 from CoMotion.
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 Innovation 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 CoMotion, 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 CoMotion for advice on how to protect intellectual property.
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").
|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, CoMotion 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 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, CoMotion
should be notified. Special arrangements for the distribution of income
from these improvements or updates must be approved by CoMotion.
|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:
Reporting Technologies Developed Outside University EmploymentAll innovations discovered by a faculty or staff member during employment with the University must be reported to CoMotion 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 CoMotion.
University Testing or Development of Privately Owned TechnologyIn 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:
|Proposals from University departments relating to the above matters should be forwarded to CoMotion.|
For further information, contact CoMotion:
December 20, 2000; October 27, 2003; December 27, 2008; RC, October 24, 2013; February 13, 2015.
For related information, see: