From: Ed Lazowska
Sent: Tuesday, January 09, 2001 10:23 PM
To: faculty; cs-grads
Ebeling; Jean-Loup Baer
Subject: Patenting and Disclosures

Please read this if you've been involved (or are likely to become involved)
in any patenting activities, either as a UW faculty member or student, or
*particularly* as a founder/consultant for a company:

It's important that any patentable technologies be disclosed (in the formal
sense) to OTT, even if they are invented on a consulting basis working for
a company.

Now, you're already saying to yourself, "Those #$%^&'s at UW want part of
my money!"  Not necessarily the case.  The real issue is that we need to
"keep clean."

For example, if a company that you have founded or for which you consult,
files some patents on which you are named as an inventor, then a
whistleblower could raise a stink.  The best protection is for OTT to
already be aware of the technology, and to already have written you a
letter that says "UW has no interest in this technology."  OTT writes
these letters all the time.  And in cases where Federal law requires
UW to assert partial ownership, UW is often willing to license
on-the-cheap.

All of us are entitled to consult.  Consulting is "work for hire" -- the
company owns anything you do.  So in most cases, it's clear ... but it
needs to be documented.

Complicated cases include:

o The innovations done for the company overlap heavily with UW research.

o You (either individually or through OTT) license some software
  (covered by copyright) to a company, and the company subsequently
  decides to file a patent on some innovation embodied in the software.

Even if OTT wanted to turn a blind eye, Federal law may impose some
constraints in cases such as this.  Disclosing to OTT is the only way
to get it right.  It only takes one slip to bring State or Federal
auditors down on all of us.