Questions:
The web is clear that every commercializable innovation must be disclosed, and then a determination will be made about whether UW has an interest. But here are three areas where we need clarification:
1. Suppose that a faculty member is doing work-for-hire as a consultant for a company (say, Microsoft), that some intellectual property results, and that the relationship between the faculty member and the company is covered by an NDA. What are the UW disclosure obligations and processes (given the NDA)?
2. Under the faculty code, what interest does UW have in a faculty innovation if minimal use was made of UW resources and if federal research funding was not involved? (Note that this question has nothing to do with disclosure requirements -- it's a question about interest.)
3. How does the answer to (2) differ for graduate students, vs. faculty?
Answers:
I have been strongly cautioned against restating policy -- big disclaimers that whatever summary I provide does not substitute for the official policy or supercede it in any way. And the policy here has the structure of Assertion - Exception - Exception to the Exception.
Start with Volume 4 of the UW Handbook and navigate to Part V, Chapter 7 - Patent, Invention, and Copyright Policy.
Section 1 is the Patent and Invention Policy, and questions 2 & 3 are addressed in paragraphs A,B, and C, particularly paragraph C (paragraph C has two paragraphs...).
For question 2 about which inventions should be assigned to the University: Excerpting from C: "...University employees agree to assign all inventions in which the University has an interest..."
Then in the second paragraph: "The University will not require assignment of interests for any invention for which no equipment, supplies, facilities, or trade secret information of the University was used and which was developed entirely on the employee's own time, unless (a) the inventions related (i) directly to the business of the University, or (ii) the University's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the University."
This is the except - except - except structure. So the UW does require assignment of inventions which are related directly to the business of the University, or which are related to the University's actual or demonstrably anticipated research or development, or which result from the employee's work for the University.
For question 3, about students: The middle of paragraph C: "Students who are also employees, students working on a sponsored project, and students who have used University resources (other than for lecture-based coursework) shall also report all inventions and discoveries to the University's Office of Intellectual Property and Technology Transfer and shall assign all such inventions and discoveries in the same manner as University employees."
Now for question 1, about consulting and third-party obligations: UW Handbook, volume 4, part 5, chapter 6 "Outside Professional Work Policy" Section 2, paragraph E: "Intellectual property in which the University may have an ownership interest may not be transferred by University employees while engaged in outside consulting. Intellectual property must be disclosed to the University pursuant to the University Patent, Invention, and Copyright Policy (Handbook, Volume Four, Part V, Chapter 7). Clauses in consulting agreements (including, but not limited to, clauses on confidentiality and ownership/transfer of intellectual property) must be consistent with the policy of the University and with University commitments under sponsored research agreements. Accordingly consulting agreements should contain the company's acknowledgement that to the extent the consulting agreeement is inconsistent with any of the University employee's obligations to the University, the employee's obligations to the University shall prevail."
So, with clear pointers to the policy:
1. Suppose that a faculty member is doing work-for-hire as a consultant for a company (say, Microsoft), that some intellectual property results, and that the relationship between the faculty member and the company is covered by an NDA. What are the UW disclosure obligations and processes (given the NDA)?
The employee's obligations to the University prevail. These situations are easier to navigate if the obligations are acknowledged up front and the agreements are consistent with UW policy. Otherwise the situation is predicated on false expectations. If the situation blows up, the UW researcher is confronted with conflicting obligations to the UW and to the company.
Along these lines, sabbatical employment, student internships and consulting agreements often have the UW student or researcher sign the company's standard employment agreement. The IP terms in these agreements are almost always in severe conflict with the UW policy. A standard employment agreement is inappropriate for these employment situations, and I would like to see the UW offer its preferred template.
UW Handbook, volume 4, part 5, chapter 6 "Outside Professional Work Policy"
2. Under the faculty code, what interest does UW have in a faculty innovation if minimal use was made of UW resources and if federal research funding was not involved? (Note that this question has nothing to do with disclosure requirements -- it's a question about interest.)
The UW requires assignment of inventions which are related directly to the business of the University, or which are related to the University's actual or demonstrably anticipated research or development, or which result from the employee's work for the University.
UW Handbook, Volume 4, Part V, Chapter 7 - Patent, Invention, and Copyright Policy Section 1, paragraph C (especially the second paragraph)
3. How does the answer to (2) differ for graduate students, vs. faculty?
Students who are also employees, students working on a sponsored project, and students who have used University resources (other than for lecture-based coursework) shall report and assign all such inventions and discoveries in the same manner as University employees.
UW Handbook, Volume 4, Part V, Chapter 7 - Patent, Invention, and Copyright Policy Section 1, paragraph C (midway through the first paragraph)