Changes to federal IP disclosure requirement prompt campuswide response

October 4, 2018 By Natasha Kassulke

This month, many employees at the University of Wisconsin–Madison will receive an email asking them to acknowledge that they agree to comply with UW–Madison research policies establishing rights to intellectual property that arise from their extramurally funded research activities.

This is in response to amendments to regulations issued under the Bayh-Dole Act, which gives universities, nonprofits and other small businesses the ability to claim patents to inventions arising from federal funding, such as research grants from federal agencies (e.g., NIH, NSF, DOE). UW–Madison currently holds over $600 million in federal research awards.

The email will contain a link to an electronic tool in which employees can read some background information on the Bayh-Dole Act and certify that they agree to comply with UW–Madison policy and federal regulations related to intellectual property.

“By completing the form, we can all help to avoid any unnecessary surprises down the road with respect to patent ownership, and assist in maintaining uninterrupted and continued research funding,” explains Norman Drinkwater, interim vice chancellor for research and graduate education.

“This requirement does not reflect a change in UW–Madison policy, but does help bring the university into compliance with federal changes to the Bayh-Dole Act regulations,” says Kristin Harmon, UW–Madison intellectual property disclosure specialist.

UW–Madison research policy has long required employees to disclose inventions and assign patent rights to the Wisconsin Alumni Research Foundation (WARF) if required by relevant grants or agreements.

Harmon notes that an added benefit of having the electronic acknowledgement is that it simplifies the reporting process and makes it easier for PIs and others who need to track compliance.

“The electronic acknowledgement will replace paper-based acknowledgements that the PI has been responsible for collecting from project staff each time a new grant was received, and which had to be maintained in physical files in the past,” Harmon says. ”You also will only have to sign the agreement once in your career at UW–Madison.”

Nick Novak, UW–Madison assistant vice chancellor for research services, says the Office of the Vice Chancellor for Research and Graduate Education has reviewed employment categories and official titles and identified those employees most likely to be required to sign the agreement. Those employees will receive an email and link to the form.

To learn more about the Bayh-Dole Act and the changes, go to research.wisc.edu/bayhdole/.

To sign the agreement, visit: go.wisc.edu/bayhdole.