UW Research
Policies, Procedures and Guidance

GIM 40: Disposition of University of Washington Intellectual Property in Sponsored Program Agreements

Contents

1.0 Purpose
2.0 Background
3.0 University Policy
4.0 Licensing and Sponsored Program Agreements

5.0 Procedures and Guidance
6.0 Responsibilities
Definitions
Related Resources

1.0 Purpose

This GIM 40 sets out the policy for the disposition of Intellectual Property in Agreements for Sponsored Programs consistent with the University’s mission.

Intellectual Property (IP) created by UW Employees and Agents in the course of carrying out a Sponsored Program is a state asset, subject to control by statute, regulation, other law, and policy. The Office of Sponsored Programs (OSP) must assure compliance with these laws and policies by consulting with other units concerned as directed by Executive Order 34 (EO34.) Disposition of UW IP must support the University’s interest in execution of its academic and public mission.

Nothing in this policy affects or restricts UW CoMotion’s ability to disposition UW IP in accordance with Executive Order 36 (EO36).

2.0 Background

Grants and contracts for Sponsored Programs almost always include legally binding terms regarding ownership rights in IP associated with the program. As an agency of the State of Washington, UW contractually dispositions IP involved in conducting a Sponsored Program in accordance with US Federal, WA State, and local law.

Patents and Copyrights are controlled at the US Federal level (35USC, 17USC, and 15USC respectively), but general contract law regarding their disposition is a state-level contractual consideration.

Trademarks are words, symbols, or phrases that distinguish one particular seller’s products from another and are governed by both state and federal law. See 15 USC Section 1051, et seq.

Trade Secrets are state-controlled and regulated contractual matters.

IP associated with Federally funded research is subject to the Bayh-Dole Act (U.S. Public Laws 96-517 and 98-620, 35 USC §§200 et. seq., and various implementing regulations, including those codified at 37 CFR Part 401).

IP created by UW Employees and Agents or otherwise owned by UW is considered a state property asset, and is subject to control by the Washington State Public Ethics Act, RCW 42.52 and associated regulations and University policies (e.g. Executive Order 36 (EO36) and UW Administrative Policy Statement 59.4 (APS 59.4).

3.0 University Policy

OSP will negotiate and accept a Sponsored Program Agreement consistent with applicable law, regulation, this policy, as well as other applicable UW policies.

3.1 Inventions first conceived or reduced to practice in the course of a Sponsored Program shall vest in the University in accordance with U.S. Law.

3.2 UW shall retain ownership of its IP and may grant licenses to such property only to the extent consistent with the University’s public mission of research and education and its statutory authority.

3.3 UW may grant ownership rights to such UW IP in a Sponsored Program Agreement only when the Sponsored Program:

3.3.1 Is wholly an Industry Sponsored Clinical Trial and the protocol has not been authored or developed (or any portion thereof) by any UW personnel;

3.3.2 Is wholly a Clinical Study and the protocol or study design (or any portion thereof) has not been authored or developed by any UW personnel, or

3.3.3 Is wholly for Services and not for research, conforms in all respects to the requirements of APS 59.5; and has been determined by the University, in its sole discretion, that there is no University purpose for such IP beyond delivery of the services contemplated.

3.4 If ownership rights in UW IP are granted in a Sponsored Program Agreement in accordance with this policy, such Sponsored Program Agreement must also contain a grant of license to that UW IP back to UW for all public and governmental uses, including research, academic, and publication purposes.

3.5 UW does not assign its rights in patent applications to its inventions or its interests in joint inventions regardless of the source of funding for such patent application, nor allow a Sponsor to prosecute patents for University Inventions in University’s name.

3.6 UW will maintain patent prosecution of UW inventions, or patent prosecution of inventions jointly created by UW personnel, when created in the course of a Sponsored Program, even if UW does not wish to pursue or fund such prosecution, but only upon Sponsor’s agreement to reimburse UW fully for its costs to do so.

3.7 Rights in UW IP may be dispositioned by UW in an outgoing Subaward only to the extent:

3.7.1 necessary to accomplish the goals of the related Sponsored Program;

3.7.2 specifically identified by, and under the control of, the UW PI requesting the Subaward, and

3.7.3 is otherwise consistent with this policy.

4.0 Licensing in Sponsored Program Agreements

4.1 Internal Non-Commercial Use

UW may grant in a Sponsored Program Agreement, a non-exclusive, royalty-free license to those inventions, patent applications, patentable information, and copyrights resulting from the Sponsored Program, to Sponsors for the Sponsor’s (or Sponsor’s Affiliates or substantially similar entities) internal non-commercial research and development purposes.

4.2 Commercial Licensing

4.2.1 Commercial Licenses granted pursuant to this policy shall include any and all usual, customary, and reasonable terms. Such terms shall require that the recipient of the license fulfill all its obligations to UW of the Sponsored Program Agreement, including payment for the Sponsored Program and any associated patent fees and prosecution costs, and provide an indemnity to UW for damages as a result of any commercial development of products based on, or containing in whole or in part, UW IP.
4.2.2 UW may grant in a Sponsored Program Agreement, a license to those UW inventions, patent applications, patentable information, and copyrights resulting from the Sponsored Program, to Sponsors for any purpose, including a commercial purpose, only when any of the following requirements are met:

4.2.2.1 as part of and in conformance with the Washington Innovation Advantage Program (WIAP), as established by UW CoMotion; or

4.2.2.2 when the Sponsor is a government entity, or their originating sponsor is a governmental entity, to the extent the license is non-exclusive and is granted solely for bonafide governmental purposes; or

4.2.2.3 for those Sponsored Program Agreements as described in section 3.3 Sponsor initiated Industry Sponsored Clinical Trial, Clinical Study, or Service Agreement.

4.3 Option to Negotiate a Commercial License

UW may offer an option to negotiate a license for commercial purposes to UW IP, or UW rights in joint IP, with such license containing usual, customary, and reasonable terms.

The following principles may apply to such options and the resulting licenses:
4.3.1 the option period is narrowly tailored to meet the needs of the specific program, and must not initially exceed 90 days;

4.3.2 no right of first refusal or requirements for presentation of offers from third parties will be granted, and upon expiration of the option period, UW will have no further obligation to the Sponsor;

4.3.3 licenses shall be royalty-bearing;

4.3.4 options to exclusive licenses must be to the extent legally available;

4.3.5 duration of the license is negotiable.

4.4 Background IP

A Sponsored Research Agreement may only provide an option, not a license, to Background IP, such option to provide:

4.4.1 only the right to negotiate for a non-exclusive license; and

4.4.2 that such license is only available to the extent necessary to practice IP developed under the Sponsored Research Agreement; and

4.4.3 that such license is only available for Background IP developed by the principal investigator of the Sponsored Research Agreement, such Background IP is specifically identified in the agreement, legally available for disposition, and unencumbered by third-party rights that would prevent such license.

4.5 Trademarks

Conveyance of rights in UW Trademarks in a Sponsored Program Agreement requires specific prior approval of the UW Licensing Office.

4.6 Trade Secrets

Any rights to IP that is a Trade Secret under applicable law conveyed in a Sponsored Program Agreement must also be subject to the Washington State Public Records Act, RCW 42.56.

Only IP that specifically meets the requirements of a Trade Secret under the Washington Uniform Trade Secret Act, RCW 19.108 can be conveyed in a Sponsored Program Agreement as a Trade Secret.

Research results created prospectively in a Sponsored Program Agreement may not be designated as a Trade Secret solely at the request of a Sponsor.

4.7 Distribution of Funds

Distribution of UW funds resulting from commercialization of UW IP shall be handled in accordance with applicable UW policy, including in particular EO34, EO36 and APS59.4.

5.0 Procedures and Guidance

Where a Sponsor is unable or unwilling to accept terms consistent with this policy, the PI may, with concurrence from the Chair and Dean (Director, or Vice President) of the department and School to receive funding (or where the activity will occur), make a timely written appeal to the Director, Office of Sponsored Programs. Such appeal must detail the specific unusual and unique circumstances that necessitate acceptance of such terms and that the acceptance is necessary to directly and substantially advance the public mission of the University.

6.0 Responsibilities

Office of Sponsored Programs (OSP)

  • Accept Sponsored Program Agreements in accordance with EO34 and this policy; and
  • Notify other party(ies) or Sponsor(s) if UW is unable to accept the Sponsored Program Agreement where it is not consistent with EO36 and this GIM 40.

CoMotion

  • Authorizes OSP to accept Sponsored Program Agreements consistent with this policy.
  • Assists the Director, Office of Sponsored Programs in disposition of an appeal made in accordance with this policy.

Principal Investigator (PI)

  • Cooperate with OSP in providing information requested to comply with this policy.
  • Timely notify OSP that section 5.0 does not apply; or
  • Provide information and assent consistent with section 5.0, and
  • Obtain Chair, Dean Concurrence, and CoMotion signature.

Definitions

Background Intellectual Property:
Intellectual Property not arising within the Project but of use to the Project, the rights to which are owned or controlled by UW, and which is expressly made available to the Project by UW in the Sponsored Program Agreement.

Clinical Study:
A human subjects research study that does not meet the definition of a Clinical Trial, but may include the participation in or use of information from patients in a clinical setting.

CoMotion:
Office of Intellectual Property and Technology Transfer within the meaning of EO36, or any successor office.

Industry Sponsored Clinical Trial:
A Sponsored Program that is a human subjects research study whose primary purpose is to assess the safety and/or efficacy in humans of a drug, device, diagnostic, treatment, preventive measure, or similar intervention through testing of the intervention on patients in a clinical setting; and that is wholly funded or initiated by an industry (for-profit) Sponsor.

Intellectual Property (IP):
Property rights embodied in a patent (and patent applications), copyright, trade secret, or trademark rights recognized under any applicable state, federal, or common law of the United States, foreign countries, and international conventions.

Originating Sponsor:
Sponsor providing original funding, or other consideration.

Office of Sponsored Programs (OSP):
Office of Sponsored Programs as the successor office of Grant and Contract Services within the meaning of EO34, or any successor office.

Project IP:
Intellectual Property developed by or on behalf of UW and its subcontractors in the course of and as a direct result of the Project.

Project IP does not include Intellectual Property

(i) that has been developed outside the term of the Agreement,

(ii) that has been developed by persons not participating in the Project,

(iii) that has been developed at the UW independently of the Project or has been developed by UW affiliates, faculty, employees, students, agents, or subcontractors independently of the Project,

(iv) that consists of copyrightable materials, including scholarly works, to the extent that UW faculty, staff, and students have personal retained rights in such materials as provided in Section 2.B of the UW IP Policy, or

(v) that consists of trademarks, trade names, service marks, and service names.

Research:
Meaning described in EO34.

Services:
Meaning in APS 59.5.

Sponsor:
Has the meaning within EO34; Extramural party providing funding, or other consideration directly to the University.

Sponsor Affiliate:

  • An entity that owns directly or indirectly, a controlling interest in a Party, by stock ownership or otherwise;
  • Any entity in which a Party owns a controlling interest, by stock ownership or otherwise; or
  • Any entity under common control with a Party, directly or indirectly; or
  • A sponsor’s subcontractor.

For purposes of this definition, “controlling interest” and “control” mean ownership of more than fifty percent (50%) of the voting stock permitted to vote for the election of the board of directors or any other arrangement resulting in control of or right to control management and affairs of the entity or Party in question.

Sponsored Program Agreement:
Consistent with EO34, a contract involving the University of Washington and a Sponsor for the conduct, in whole or in part, of an exchange transaction with a Sponsor.

UW Employee or Agent:
An individual that was an employee of the University at the time that individual created IP within the meaning of EO36; and any individual that is subject to the provisions of EO36, including Faculty.

UW IP Policy:
UW’s Patent, Invention, and Copyright Policy EO36, as it may from time to time exist.

Vice President for Innovation Strategy:
Vice Provost for Intellectual Property and Technology Transfer within the meaning of EO36.

Washington Innovation Advantage Program (WIAP):
Washington Innovation Advantage Program established by and administered by UW CoMotion.

Related Resources

Office Website Email Phone
Office of Sponsored Programs OSP osp@uw.edu 206.543.4043
CoMotion CoMotion uwcomotion@uw.edu 206.543.3970

Content Creator

Office of Sponsored Program

Change Notes

Details on changes to this GIM are available from the Office of Sponsored Programs, osp@uw.edu