Federal Reporting Requirements

As a recipient of nearly $900 million in federal grants and contracts, the University of Washington is required by federal law to identify and disclose to the sponsoring agency all patentable inventions created in whole or in part with federal funds.

The University has the option to either elect title to the invention or return rights in the invention to the government.

If the University elects title, it is obligated to file for patents and use its best efforts to ensure commercial development of the invention. University employees other than those employed in clerical and non-technical aspects of federally sponsored research share in this obligation.

Subject Inventions

The term "invention" may be used to refer to any discovery, innovation, or work product resulting from research and development activities.

In considering federally funded inventions, however, the term "invention" is restricted to that of "subject invention." A subject invention must be conceived or first reduced to practice in the course of federally sponsored research, must fall within the federally contracted scope of planned and committed research, and must be patentable.

The federal funds used must not be primarily of an educational nature (such as a fellowship). Other circumstances may also affect the status of an invention made with federal funds.

The University is granted the right by the Federal Government under Public Law 96-517 (codified in 37 CFR Parts 400 and 401) to elect title to any subject invention within two years of initial disclosure of the invention to the University. If the University does not elect title, then title reverts to the federal agency funding the research.

When the University elects title to a subject invention, it undertakes additional obligations to the sponsoring agency. The University must file a U.S. patent application within one year of election of title, must file foreign patent applications within ten months of the U.S. application, and must report actions in the patenting and development of the invention to the federal agency. In addition, the University must ensure that commercial products are developed from the invention; this is done by licensing patent rights in the invention to a company willing to develop and market products involving the invention. If the University does not elect title in a subject invention, or if it chooses not to file or to continue patent applications in the United States and in other countries, then it must promptly offer title or rights back to the sponsoring agency in those areas in which it is not pursuing rights.

Federal Disclosure Requirements

When disclosing a subject invention, a University inventor must supply the following information in the form of a written report to allow the University to comply with federal reporting regulations:

• Names of the inventor(s);
• Federal agency and contract;
• A detailed description of the invention that is sufficiently complete toconvey a clear understanding of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention at the time of disclosure;
• Any publication, sale, or public use of the invention;
• Any manuscript describing the invention submitted for publication, and whether it has been accepted for publication at the time of the disclosure.

Following disclosure, federal reporting regulations require the University to give the sponsoring agency prompt notice of any planned public use or offer for sale of the invention, and notice of any manuscript describing the invention accepted for publication. Any of these events signal that an enabling disclosure is about to be made and that foreign patent rights may be compromised if a U.S. patent application has not yet been filed.

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