EO 36 Inventions, Discoveries, and Copyright

Purpose

University research seeks new knowledge for public benefit. Even when University research is not directed intentionally toward commercially viable inventions and discoveries, research can result in inventions and discoveries that benefit the public and the University through obtaining intellectual property or other protections and/or granting licenses as described in this order.

The purpose of this order is to define the rights and responsibilities of all University academic personnel, staff, and students related to inventions and discoveries and copyright actions. This order designates responsibility for interpretation and administration of this order.

Scope

This order applies to all University employees and students.

Definitions

Employee—All University personnel as included in Administrative Policy Statement 40.1.

Innovations—Includes all novel tangible and intellectual property including patents, copyright, trademark, know-how, trade secret, or mask works. The term is used to be inclusive.

Inventions and Discoveries—Includes patented and non-patented inventions or discoveries which are protectable as to the ownership including but not limited to novel tangible materials, and computer software of commercial value. It only includes copyright materials to the extent that it is computer software of commercial value or where there is a patented invention in addition to having copyright protection.

Sponsor—An entity providing funding for research through a grant or contract.

Student—Individual currently enrolled as a degree-seeking student at the University.

1. Rights and Responsibilities of Employees and Students Upon Realization of Inventions and Discoveries When the University Has an Ownership Interest

A. Employees

The University has an ownership interest in all inventions and discoveries conceived or first reduced to practice in whole or in part by employees acting in the course of their University responsibilities, or with more than incidental use of resources other than personal use allowed in Administrative Policy Statement 47.2, Personal Use of University Facilities, Computers, and Equipment by University Employees.

University employees will report to CoMotion all inventions and discoveries in which the University has an ownership interest. CoMotion determines the processes and procedures for reporting inventions and discoveries and reserves the right to handle inventions and other innovations of commercial value directly, or to use other technology administrative agencies.

As a condition of employment, University employees agree to assign all inventions and discoveries in which the University has an ownership interest to the University, or to the sponsor if required under agreements governing the research. The responsibilities and obligations included in this policy remain in effect for employees even in the absence of a signed agreement transferring intellectual property rights to the University.

Employees will execute documents of assignment and do everything reasonably required to assist the assignee(s) in obtaining, protecting, and maintaining patent or other proprietary rights. Inventions and discoveries in which the University has an ownership interest but which do not meet the criteria established by CoMotion for protecting or licensing will be managed in accordance with procedures determined by CoMotion. To the extent permitted by state law and other University policies, those procedures may include:

A mechanism by which the inventor(s) may personally pay patenting costs; and under very rare circumstances;
The transfer, for appropriate consideration, of the intellectual property rights to the inventor(s) or creator(s).

B. Students

Students own their inventions or discoveries except in the following instances:

The invention or discovery is made in the course of the student’s University employment;
The invention or discovery is conceived or reduced to practice with University administered research funds or substantial use of University resources, including use of facilities, personnel, equipment, materials, or other resources available to the inventor or creator because of the inventor or creator’s affiliation with the University;
The student signs an agreement to assign the invention or discovery to the University;
The invention or discovery is made in the course of a student’s participation in any sponsored project or where there is a requirement to assign or license the invention or discovery to a sponsor or collaborator; and
The student participates in a faculty directed research project and receives University non-public information.

In the instances above, students must report to CoMotion and assign to the University such inventions and discoveries in accordance with CoMotion’s processes and procedures for reporting inventions and discoveries. For the purposes of determining substantial use of University resources, the following are not considered to be a substantial use of University resources by students:

For students enrolled in a course of study, use of course research, computing and library facilities, software, supplies and materials at a level ordinarily provided to student in the course, including capstone courses; or
For students involved in non-course based, campus-organized, entrepreneurial activities such as a business plan competition, incubator and makerspace access, funding and resources ordinarily offered to students involved in the activities.

2. Research

Research funded wholly or in part by an outside sponsor is subject to this order as modified by the provisions of the agreement covering such work. University intellectual property in sponsored research is subject to GIM 40, Disposition of University of Washington Intellectual Property in Sponsored Program Agreements. Employees engaged in sponsored research are bound by the provisions of the agreement between the University and the sponsor. Title to any inventions conceived or first reduced to practice in the course of research supported by federal agencies, industry, or other sponsors will generally vest in the University.

Industry supported research is valued by the University when it embraces a proper balance between the University’s educational mission and industry’s quest for the development of commercial products, processes, and services. Disposition of University Intellectual Property in industry sponsored research is subject to GIM 40.

3. University’s Right to File Patents

The University retains the right to file patents or to use other patent management firms.

The University policy for sharing of revenue received from licensing inventions and discoveries is found in Administrative Policy Statement 59.4, Technology Transfer Administration, Revenue Distribution, and Disclosure.

5. University Equity Position

The University may take an equity position in a company as part of a negotiated agreement. A typical circumstance under which the University might receive equity would be as part of an agreement licensing University developed technology to a start-up or to a business venture. A business venture can include corporations, partnerships, or other commercial enterprises. Such a commercial association with the University and its employees adds both value and credibility to the new business venture. To ensure a balance of interest for the business venture as well as for the University, the University generally will require that it receive an equity position in such circumstances.

The University’s equity interests are managed and disposed of in accordance with guidelines, processes, and procedures established by the Treasury Office in consultation with the Office of the Provost and University policies and procedures. University employees may be eligible to receive a portion of any proceeds from the University’s equity interest in accordance with the published policies in the Administrative Policy Statements and as allowed under state law. When such equities are liquidated, the net proceeds, after recovery of all University costs and after any distributions to eligible recipients, are distributed in accordance with Administrative Policy Statement 59.4, Technology Transfer Administration, Revenue Distribution, and Disclosure.

In situations where both the University and its employees separately own equity interests in a business venture, 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 when the University receives an equity interest in a business venture as a result of licensing certain intellectual property 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.

6. Publication

As a public institution, the University should undertake research only when the results can be published. Publication or presentation of data or results may be deferred for a reasonable time during which the University reviews the feasibility of patent coverage or other protection on an invention described. Likewise, graduate student theses or dissertations containing invention and discovery details may be withheld from public access for a limited period while this evaluation process is conducted.

7. Conditions of Employee Relationships with Commercial Enterprise

Employee relationships with commercial enterprises, including start-ups, can be of significant benefit to the University, the employee, the commercial entity, and the general public. However, such involvements include the potential for conflicts of interest, for the inhibition of the free exchange of information, and for interference with the employee’s primary allegiance to the University. In these relationships, University employees must adhere to Executive Orders No. 32, No. 35, No. 43, and No. 57 and Administrative Policy Statements 47.2 and 47.3, as well as unit guidelines, process, or procedures.

Intellectual Property clauses in consulting agreements must be consistent with University policy and University commitments under sponsored research agreements. Questions concerning potential conflicts are answered by the Office of the Provost and the Office of Research.

The University encourages the publication of scholarly works as an inherent part of its educational mission. The University acknowledges the right of academic personnel, staff, and students to prepare and publish, through individual initiative, articles, pamphlets, and books that are copyrighted by the authors or their publishers and that may generate royalty income for the authors. Process and procedures related to copyright are determined by CoMotion.

A. Retention of Rights

University employees and students retain all rights in copyrightable materials they create, including scholarly works, subject to the following exceptions and conditions:

1. Grant and Contract Limitations

Conditions regarding rights in data or restrictions on copyright privileges contained in sponsored grants, contracts, or other awards are binding on the University and on employees or student authors. Copyright works, with the exception of routine progress reports, prepared as required elements of such sponsored grants, contracts, or other awards, will be reported to CoMotion for review prior to any external dissemination of the work. If necessary to fulfill grant and contract limitations, authors will execute an appropriate written assignment of copyrights to the University.

2. University Owned Materials

Materials will be “University owned” within the meaning of this order if the work is a “work for hire” under copyright law or the author was commissioned in writing by the University (or one of its colleges, schools, departments, or other divisions) to develop the materials as a part of the author’s regularly compensated duties, as for example, released time arrangements in the case of academic personnel. As to academic personnel “commissioned in writing” does not refer specifically to academic personnel’s general obligation to produce scholarly works.

3. University Sponsored Materials

Materials are University sponsored materials if the author developed the materials in the course performing normal University duties and used University staff, resources, or funding to develop the work. As to academic personnel, “normal duties” does not include usual scholarly activity unless it involves extensive, uncompensated use of University resources.

4. Written Agreements

It is desirable to have a written agreement as to the rights of the University and of participants before work begins whenever:

A question exists as to whether the materials will be University owned or University sponsored, or
Copyrightable materials are likely to result from the joint efforts of persons in academic departments and University service departments.

As to jointly developed materials, determination of rights in written form will be accomplished no later than prior to sale of the materials in question. Questions concerning the interpretation and administration of this order will be resolved in accordance with the section Interpretation and Administration of Order.

5. Proportional Ownership

In case of materials developed in substantial part under commission and in substantial part through other means, the materials will be regarded as University owned in an appropriate proportion. In the case of materials developed in substantial part during the course of normal duties and with use of University staff, resources, or funding the materials will be regarded as University sponsored in an appropriate proportion.

6. Royalty Free Privileges to the University

The University retains a right to royalty free use of any copyrightable materials developed by University employees (other than books and materials available from a publisher through normal distribution channels) when the development of such materials was advanced through the use of University facilities, supplies, equipment, or staff services. This right exists even though the materials do not constitute University owned or University sponsored materials as defined above (e.g., where use of facilities by the academic personnel was not extensive).

7. Student Writings

Students employed by the University in any capacity are covered by the terms of this order. In addition, where a student receives financial aid or remuneration under a sponsored research, training, or fellowship program, the student’s rights in copyrightable materials are limited by the terms of the University agreement with the sponsoring agency. Except as required by such terms, the University has no ownership rights in copyrightable materials developed by students who are not employees of the University or in materials unrelated to their employment.

B. Types of Copyright Materials

The types of materials covered by this order include:

Video and audio recordings, tapes, and cassettes.
Film, film strips, and other visual aids.
Books, texts, study guides, and similar published materials.
Computer programs and software when copyright rather than patent or trade secret protection is relied upon as the primary source of legal protection. (When the primary commercial value of a computer program lies in its transfer in limited quantities under arrangements of confidentiality, it will be treated as unpatented technology and be subject to “Rights and Responsibilities of Employees and Students Upon Realization of Inventions and Discoveries When the University Has an Ownership Interest.”)
Musical or dramatic compositions.
Internet-based productions and multimedia products.
Other copyrightable materials.

C. Use of University Owned or University Sponsored Copyright Materials

There are two categories of use for purposes of this order: internal use and external use. Internal use refers to use by any unit of the University for instruction, research, or other educational purposes. External use refers to use by other educational institutions, government, and other nonprofit institutions, and use resulting from lease or other contractual arrangements for commercial distribution of the materials.

Use of University owned or University sponsored materials under this policy are subject to the following conditions:

1. Internal Use

Each instance of the use of such materials within the University requires the approval of the author and the department or college unless advance approval is waived through a prior written understanding or the author’s consent is implicit in the terms of the grant or contract supporting the work. Internal uses of such materials will not involve a transfer of funds between departments unless the lending department incurs incremental costs in order to make the materials available.

As long as the author or producer of such materials remains an employee of the University, the author may:

Request reasonable revisions of the materials prior to any instance of internal use, or
Ask that the materials be withdrawn from internal use if revisions are not feasible, or
In cases where the University has invested significant funds in the production of the materials and the author/producer is unable to agree with the department head on appropriate revision or withdrawal of materials, the question will be referred to the dean of the school or college for mediation.

If the author or producer terminates employment with the University, then the University retains the right to continue internal use of the material unless the author/producer and the University agree in writing on special conditions for subsequent internal use of the materials and the procedures for their revision.

2. External Use

Licensing or sale of University owned or University sponsored materials for external use will be preceded by a written agreement between the University and the author or producer specifying the conditions of use, and will include provisions concerning the right of the author or producer to revise the materials periodically or to withdraw them from use—subject to existing agreements—in the event revisions are not feasible.

D. Division of Royalties

1. Royalties to the University

For University owned materials, all royalties and income should inure to the University and its schools, colleges, and departments as such materials are prepared in exchange for agreed compensation. For University sponsored materials, a sharing of royalties and income is appropriate because of the author’s provision of creative efforts and the University’s provision of salary, facilities, administrative support, and other resources.

2. Royalties on Sales to Outside Users

Where University owned or University sponsored materials are to be sold or rented to outside users, the following financial arrangements are observed subject to any limitations specified by granting agencies:

All incremental expenses related to the distribution of copies may be recovered from each sale or rental. Original costs for production of the materials will be recovered only if and as agreed to in writing prior to preparation of the materials by the author and the academic departments and/or other University units which incur those costs.
In the case of University owned materials, royalty and other income from sale or use of the materials (after recovery of costs as specified in this order) will be divided one-half to the University and one-half to the school/college/department of the author or authors. The University share will be used to promote research across the whole University and will be administered by the Office of Research or its designee. The school/college/department share will be allocated to the dean of the college or school and may be used for research, education, and communications. A minimum of 75% of this share should go to the author’s department for use according to departmental and college goals. The dean should have discretion in distributing the remaining 25% to promote activities according to the nature and needs of the college or school in question.
In the case of University sponsored materials, royalty and other income from the sale or use of materials (after recovery of costs as specified in this order) will be divided according to the Administrative Policy Statement 59.4, Technology Transfer Administration, Revenue Distribution, and Disclosure. In any given case covered by this subsection, the author may dedicate all or any portion of the author’s allocation to the school/college/department, the Office of Research, or other administrative unit.).
It may be advantageous to market University owned or University sponsored materials through outside commercial sources or the University Press. Net royalty income from such sources will be divided as specified in this section.
Royalty and other income from updating and revision of University sponsored materials will be treated as income and royalty from such University sponsored materials unless otherwise agreed to in writing by the author/producer and the University before preparation of the original materials. The net income from such upkeep or revision will be separately computed on an annual basis for the purpose of applying the distributions referenced in this section.

E. Protection and Liability

1. Protection

CoMotion will investigate allegations of unauthorized use or copyright infringement of University owned and University sponsored materials and will recommend appropriate action. If such action is started by the University, all costs of such action will be borne by the University. Subject to sponsoring agency limitations in the case of grants or contracts, all proceeds in excess of such costs will be shared according to Section 8.D.

2. Liability

When there are allegations of violation of personal or property rights by the University, or by the author or producer of University owned or University sponsored materials copyrighted by the University, responsibility for the defense of any action and the satisfaction of any judgment rendered against the University or the author or producer will be provided in accordance with Board of Regents Governance, Standing Orders, Chapter 5.

9. Interpretation and Administration of Order

A. Vice Provost for Innovation

The President has designated the Vice Provost for Innovation as the officer of the University to administer, apply, and interpret the provisions of this order. The Vice Provost will have the authority to determine whether the facts of a given case merit special consideration or exceptions to this order.

The Vice Provost for Innovation manages CoMotion, the office that represents the University in negotiating agreements with inventors, authors or producers, or licensees. The Vice Provost may consult also with department heads and the heads of production units involved in a specific technology transfer transaction. The Vice Provost signs or recommends all agreements for signing in accordance with delegated authority. Where copyright coverage should be obtained on University owned or University sponsored materials, CoMotion will facilitate the copyright application. The faculty or staff member who is the author of University owned or University sponsored materials will execute a written transfer of copyright to the University when necessary or appropriate.

B. Advisory Committee on Intellectual Property, Policy and Practice

The President and the Chair of the Faculty Senate jointly appoint the Advisory Committee on Intellectual Property, Policy and Practice (Advisory Committee) to review periodically this order and recommend such changes to the President and Senate Executive Committee as the Advisory Committee deems desirable. The Advisory Committee will also advise on broader intellectual property issues that arise in the promotion and protection of research. The Advisory Committee will report to the President and Senate Executive Committee and consist of members as jointly determined by the President and the Senate Executive Committee.

C. Inquiries on Status of Materials

CoMotion will advise any employee or student who has a question as to whether or not particular materials will be considered University owned or University sponsored as to its status. The determination, with all relevant facts, will be forwarded via the author’s department head. Thereafter, CoMotion will advise the author or producer as promptly as possible as to whether or not it appears that the materials should be regarded as University owned or University sponsored within the meaning of this order. CoMotion’s decision in such cases will be considered as an advisory opinion subject to final clarification when the work is completed. At that time, the employee or student should either:

Indicate concurrence in the original decision, or
Request that the question of rights be submitted for decision to the Vice Provost for Innovation.

In the latter case, the decision of the Vice Provost will be final unless the employee or student requests arbitration of the question.

D. Arbitration

In the event of any differences between an employee or student and the Vice Provost for Innovation, and when a question cannot be reconciled by direct negotiation, the matter will be submitted for binding arbitration either to a single arbitrator agreed on by all parties or to a special three-person panel consisting of one person representing the employee or student, one person representing the University, and a third person designated by the first two.

Knowledgeable members of the University community typically will be chosen for such panels to expedite a decision and minimize cost. In the event costs are incurred, they will be divided equally between the employee or student and the University. Decisions of the panel will be binding on both parties. The panel will have full access to any pertinent records over which the employee or student or the University has jurisdiction.

History

BR, March 1969; Executive Order No. 36 of the President: June 1, 1972; October 3, 1977; September 26, 1983; September 21, 1992; May 2, 2000, December 20, 2000; October 27, 2003; RC, May 7, 2015, July 31, 2025.

For related information, see:

Administrative Policy Statement 59.4, “Technology Transfer Administration, Revenue Distribution, and Disclosure”

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