Intellectual Property, Inventions, and Patents

UW-La Crosse’s (UWL) intellectual property (IP), inventions, and patents requirements aim to assure compliance with UW System Administrative (UWSA) Policy 346: Patents and Inventions. This website outlines the rights, responsibilities, privileges, and options of UWL faculty, staff, and students in regards to inventions discovered in connection with or related to their university duties and/or university resources. 

The primary requirements are as follows: 

  • Completion of Intellectual Property (IP) AgreementsAll UWL faculty, staff (except clerical and nontechnical employees), and student employees working on extramurally funded scholarly projects must sign an electronic IP Agreement via Qualtrics before they begin any project work and before any award funds are spent. This is required regardless of whether any inventions have been, or are anticipated to be, developed or discovered during the course of the project. For questions, contact ORSP.
  • Disclosure of Inventions: All inventions discovered by UWL faculty, staff, or students while pursuing their university duties, on university premises, or with university supplies or equipment must be promptly reported via the Invention Disclosure Form submitted to UWL’s WiSys Regional Associate. For questions, contact UWL’s WiSys Regional Associate. 

FAQs

General Questions

What is an invention? expanding section

An invention is a unique or novel device, method, composition, or process discovered during the course of a project that may be patentable or otherwise protectable under related federal regulations. To be potentially patentable, an invention must be: 

  • Novel,  
  • Have utility (i.e., be useful for a particular purpose), and 
  • Not be obvious. 

All unique or novel ideas are not necessarily inventions; to be an invention, the idea must be able to be explained and specifically documented to the extent it could be replicated from the description by someone with appropriate technical expertise. Inventions can take many forms, such as a unique or novel device, component, mechanism, design, data, material, process, code, formula, technique, method, technical concept, or improvement to an existing item/process. 

It is not the responsibility of the UWL faculty, staff, or student who makes a discovery to determine whether it is patentable. Instead, it is the UWL employee’s responsibility to promptly complete and submit an Invention Disclosure Report FormIf you are not sure whether you have discovered or developed an invention, contact UWL’s WiSys Regional Associate for help. The Regional Associate is available to consult with you at any stage of the process. 

What is an extramurally funded scholarly project? expanding section

For the purposes of these requirements, an extramurally funded scholarly project is a research, scholarly, or creative activity funded, in whole or in part, by an extramural source (i.e., non-UWL, external sources including UW System and/or WiSys). This includes, but is not limited to, funding mechanisms such as grants, contracts, cooperative agreements, and other such agreements. 

How can I determine if my extramurally funded project is considered a scholarly project? expanding section

Scholarly projects are often those that focus on the research or creative activities conducted within any discipline. The work may be performed by faculty, staff, students, and/or other personnel. Some projects may have multiple aims—such as instruction or service—but still have scholarly components, and would thus be considered scholarly projects. For example, a student support program may engage students in research assistantships. While the program may be primarily aimed at instructional support, there is a component that also qualifies it as a scholarly project. Contact ORSP (grants@uwlax.edu, 608.785.8007) for help determining whether your project is subject to these requirements. 

I have some questions about intellectual property in relation to my scholarly endeavors, but I’m not sure if it’s related to these requirements. Who should I contact? expanding section

IP Agreements

Who is (or is not) required to complete an IP agreement, and when does it need to be done? expanding section

All of the following university employees are required to complete an IP agreement before beginning work on or spending funds from any extramurally funded scholarly project: 

  • All faculty 
  • All staff (except for clerical and nontechnical employees) 
  • All students employed to work on a project (excludes students participating in a project who are not considered project employees) 

At minimum, this includes all UWL principal investigators (PIs)/project directors (PDs) and co-PIs/PDs for a project. Depending on the project, it may also include UWL staff (such as lab technicians and non-instructional academic staff) and UWL students employed to work on the project. If a new UWL faculty or staff member, or student employee, joins a project that is already underway, they must complete an IP agreement before beginning any work on it. A PI/PD is responsible for identifying and informing student employees of the requirement. 

An IP agreement is required regardless of whether any inventions have been, or are anticipated to be, developed or discovered during the course of the project. Once completed, an IP agreement covers all extramurally funded scholarly projects on which an individual works for five years. At the end of the five-year period (on June 30th), an individual must complete another IP agreement if they are still engaged in an extramurally funded scholarly project. 

Account set-up for an extramural award requires that the project PI/PD have an up-to-date IP agreement on file. Other UWL personnel’s eligibility to be paid to work on an extramurally funded scholarly project requires that the individual have an up-to-date IP agreement on file. 

How do I complete an IP agreement? expanding section

An IP agreement can be completed online via Qualtrics. To complete the agreement, you will need your UWL employee or student ID number. 

What is the IP agreement? expanding section

The IP agreement is a document required by UW System to make university personnel aware of their rights, obligations, responsibilities, privileges, and options in regards to intellectual property, inventions, and patents. It addresses items such as the following: 

  • Agreement to follow UW System invention disclosure requirements 
  • Agreement to follow any IP requirements from agencies funding the work, including any applicable federal laws 
  • Agreement to avoid entering into any agreements that conflict with UW System requirements 
  • Agreement to follow any funding agency’s award requirements, including cooperating with the university to meet its obligations to the funding agency 
Which projects are subject to IP agreement requirements? expanding section

All extramurally funded scholarly projects, and all UWL personnel working on those projects, are subject to IP agreement requirements. 

For the purposes of this policy, an extramurally funded scholarly project is defined as research, scholarly, or creative activity supported in whole or in part by any external (i.e., non-UWL) funding sources, including but not limited to grants, contracts, and cooperative agreements. Extramural funding in this context includes UW System and WiSys funding. 

When does a student have to complete an IP agreement? expanding section

Students must complete an IP agreement before beginning paid work as aemployee on any extramurally funded scholarly project. Students may be paid by an external grant or contract for their work, or they may be paid by an internal source (e.g., work study). Regardless of the funding source, if students are being paid as employees to work on the project, they must complete an IP agreement before beginning work.  

However, students who participate in an extramurally funded scholarly project but are not considered employees do not need to complete an IP agreement. Exempt students may participate in the project for course credit, as part of standard academic course work, or with non-employment-related financial support from another source. Examples of non-employment-related financial support include: 

  • Some internal sourcessuch as UWL Undergraduate Research & Creativity (URC) Grants, Graduate Research, Service & Educational Leadership (RSEL) Grants, or Dean’s Distinguished Fellowships 
  • Some external sourcessuch as scholarships, fellowships, or training grants that do not assign IP rights to another entity. (Note that all federal funding subjects inventions to related federal regulations, as outlined in the Bayh-Dole Act.) 
What are my responsibilities as the principal investigator (PI)/project director (PD) of a project? expanding section

For extramurally funded scholarly projects, a PI/PD is responsible for the following: 

  • Ensuring they have completed an IP agreement before beginning any work on a project or spending any funds
  • Ensuring all project personnel, including students who will be employed to work on the project, complete an IP agreement before beginning any work on the project 
  • Making project personnel, including students, aware of invention disclosure requirements 
  • Ensuring any project personnel, including student workers, who join a project after it is already in progress complete an IP agreement before beginning any work on the project 
My project includes a collaborator who does not work at UWL. What do they need to do? expanding section

External collaborators (i.e., those who do not work at UWL) do not need to complete an IP agreement before working on a project. Be aware, though, that inventions discovered as part of the project remain subject to UW System’s requirements and the terms in the IP agreements completed by UWL personnel. If you have any conversations with your collaborators about intellectual property, inventions, or patents related to the project, you are encouraged to make your collaborators aware of the UW System requirements upfront (e.g., by providing them with a copy of the agreement). 

If your collaborators work at another UW institution, they will need to complete a similar agreement and process on their own campus. They should consult with their sponsored research office for guidance. 

I have questions about the IP agreement. Who should I contact? expanding section

Contact the Office of Research & Sponsored Programs (ORSP) (grants@uwlax.edu, 785-8007) with any questions. 

How do I know if I, or another person working on my project, have a completed IP agreement on file? expanding section

You can contact the Office of Research & Sponsored Programs (ORSP) Grants & Compliance Coordinator (Sydni Durrstein: sdurrstein@uwlax.edu, 785-8007) to ask if you have an up-to-date IP agreement on file. ORSP is the office of record for IP agreements and can help you with any related questions. ORSP can also help PIs/PDs verify if others working on their project have completed IP agreements on file. 

What happens after I complete an IP agreement? expanding section

The UWL Office of Research & Sponsored Programs (ORSP) is electronically notified when you complete an IP agreement, and you will also automatically receive an emailed copy for your records. ORSP keeps a record of your completed IP agreement on file to document your and the university’s compliance with UW System policy. 

Invention Disclosures

What is an invention? expanding section

An invention is a unique or novel device, method, composition, or process discovered during the course of a project that may be patentable or otherwise protectable under related federal regulations. To be potentially patentable, an invention must be: 

  • Novel,  
  • Have utility (i.e., be useful for a particular purpose), and 
  • Not be obvious. 

All unique or novel ideas are not necessarily inventions; to be an invention, the idea must be able to be explained and specifically documented to the extent it could be replicated from the description by someone with appropriate technical expertise. Inventions can take many forms, such as a unique or novel device, component, mechanism, design, data, material, process, code, formula, technique, method, technical concept, or improvement to an existing item/process. 

It is not the responsibility of the UWL faculty, staff, or student who makes a discovery to determine whether it is patentable. Instead, it is the UWL employee’s responsibility to promptly complete and submit an Invention Disclosure Report FormIf you are not sure whether you have discovered or developed an invention, contact UWL’s WiSys Regional Associate for help. The Regional Associate is available to consult with you at any stage of the process. 

Who is (or is not) required to disclose an invention, and when does it need to be done? expanding section

All faculty, staff, and students are required to promptly disclose an invention discovered or developed while: 

  1. Working as a university employee; or 
  2. On university premises; or 
  3. Using university supplies or equipment.  

This applies to inventions regardless of the related funding source(s) (if any). 

Students do not have to disclose inventions they discovered/developed in the following circumstances: 

  1. Inventions discovered by students or trainees in the course of academic coursework and classroom projects that are unrelated to the duties of any paid assistantship or other appointment 
  2. Inventions discovered by students or trainees under funding provided by scholarships, fellowships, or training grants, which do not contain any provision giving any third party, including a federal agency, any rights to inventions made by the recipient 

Examples of scholarships/fellowships/training grants that would exempt a student from invention disclosure requirements include UWL Undergraduate Research & Creativity (URC) Grants, Graduate Research, Service, & Educational Leadership (RSEL) Grants, and Dean’s Distinguished Fellowships. If a student is funded by multiple sources for their work on a project, contact ORSP for help determining disclosure requirements. 

How do I disclose an invention? expanding section

The individual(s) who discovered or developed the inventions must complete a UW System Invention Disclosure Form. Once filled out, the form should be sent directly to UWL’s WiSys Regional Associate. WiSys to serves as the university’s Intellectual Property Management Organization (IPMO) and will initiate an equity review once an Invention Disclosure Form is received. 

What work is subject to invention disclosure requirements? expanding section

All activities conducted while (1) working as a university employee, (2) on university premises, or (3) using university supplies or equipment are subject to invention disclosure requirements. Such as activities are subject to the requirements regardless of funding source(s) or lack of funding. 

The only exception is students who discover/develop an invention (1) during the course of academic coursework or classroom projects that are unrelated to the duties of any paid assistantship or other appointment, or (2) under funding provided by scholarships, fellowships, or training grants that do not give any third party any rights to inventions made by the recipient. 

Examples of scholarships/fellowships/training grants that would exempt a student from invention disclosure requirements include UWL Undergraduate Research & Creativity (URC) Grants, Graduate Research, Service, & Educational Leadership (RSEL) Grants, and Dean’s Distinguished Fellowships. If a student is funded by multiple sources for their work on a project, contact ORSP for help determining disclosure requirements.

When does a student have to complete an invention disclosure? expanding section

Student employees who discover or develop an invention while working as a university employee are required to promptly disclose the invention by completing an Invention Disclosure Form and submitting it to UWL’s WiSys Regional Associate.  

Students are not required to disclose an invention discovered/developed (1) during the course of academic coursework or classroom projects that are unrelated to the duties of any paid assistantship or other appointment, or (2) under funding provided by scholarships, fellowships, or training grants that do not give any third party any rights to inventions made by the recipient. 

Examples of scholarships/fellowships/training grants that would exempt a student from invention disclosure requirements include UWL Undergraduate Research & Creativity (URC) Grants, Graduate Research, Service, & Educational Leadership (RSEL) Grants, and Dean’s Distinguished Fellowships. If a student is funded by multiple sources for their work on a project, contact ORSP for help determining disclosure requirements.

What are my responsibilities as the principal investigator (PI)/project director (PD) of a project or as a supervisor of students’ work? expanding section

For all projects and activities, regardless of funding source, a PI/PD or student supervisor is responsible for ensuring all project personnel, including students, are aware of their obligation to promptly disclose any invention discovered/developed while (1) working as a university employee; (2) on university premises; or (3) using university supplies or equipment.

I think I may have an invention, but I am not sure. What should I do next? expanding section

UWL faculty, staff, and students who believe they may have discovered an invention are strongly encouraged to consult with UWL’s WiSys Regional Associate before any information is published or otherwise publicly disclosed (e.g., presented at a conference). The Regional Associate can advise on the appropriate next steps (e.g., submitting an Invention Disclosure Report Form, protecting related information, disseminating research without publicly disclosing invention-related information). UWL faculty, staff, and students can consult with WiSys regardless of whether their invention, or information, is subject to UW System’s IP, inventions, and patents requirements. 

I did not have to complete an IP agreement but discovered an invention. Do I have to disclose my invention? expanding section

Possibly. If you are a UWL faculty or staff member, or a UWL student employee, you must disclose an invention if you discovered/developed it while: 

  1. Working as a university employee; 
  2. On university premises; or 
  3. Using university supplies or equipment. 

Students are exempt from disclosing an invention they discovered/developed in the following circumstances: 

  1. Inventions discovered by students or trainees in the course of academic coursework and classroom projects that are unrelated to the duties of any paid assistantship or other appointment 
  2. Inventions discovered by students or trainees under funding provided by scholarships, fellowships, or training grants, which do not contain any provision giving any third party, including a federal agency, any rights to inventions made by the recipient 

Examples of scholarships/fellowships/training grants that would exempt a student from invention disclosure requirements include UWL Undergraduate Research & Creativity (URC) Grants, Graduate Research, Service, & Educational Leadership (RSEL) Grants, and Dean’s Distinguished Fellowships. If a student is funded by multiple sources for their work on a project, contact ORSP for help determining disclosure requirements.

What happens after I submit an Invention Disclosure Report Form? expanding section

After receiving the form, UWL’s WiSys Regional Associate will conduct an equity review to determine what, if any, funding or contractual obligations may affect or convey any rights in an invention. After equity review is complete, inventor(s) will be notified of the results. Obligations and options available to the inventor(s) will depend on a number of factors; UW System’s Patents and Inventions policy, section B. Equity Review and Disposition of Inventions provides an overview. 

It’s important to note the equity review process does not comprise any patent research or patent seeking activities to protect the idea. The purpose of equity review is only to determine who has rights in the invention if it is patented. The patent process is separate from equity review. WiSys is an excellent resource for all IP, invention, and patent related questions.