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Intellectual Property Rights in Industry-Sponsored University Research Guide to Alternatives for Research Agreements (1993) / Chapter Skim
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Procedural Issues
Pages 13-16

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From page 13...
... Scenario 2: The sponsor owns the intellectual property When the sponsor owns the intellectual property through contract or assignment by the university or the investigators, the university should reserve the right to continue to use the intellectual property for internal, research and teaching purposes, and may retain the right to sublicense to investigators for research and teaching purposes. Scenario 3: The university and sponsor jointly own the intellectual property Under this scenario, both parties can use and license the jointly owned intellectual property without obtaining permission from the other party, unless they have signed an agreement to the contrary." If the sponsor wants exclusive rights to commercialize jointly-owned intellectual property, the decision to include option and license terms in the research agreement should be made based on the same considerations discussed above in Section IV., Scenario 1.
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From page 14...
... Contract language for "Patent procedures when the university owns the invention" -- University shall promptly notify Sponsor of any University Intellectual Property disclosed to it by the researcher (s)
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From page 15...
... Contract language Tor "Patent procedures when the university and the sponsor jointly own the invention" -- The University and Sponsor shall decide which party shall be responsible for the prosecution of patent applications on joint inventions. If Sponsor has an option to obtain an exclusive license to the joint invention, Sponsor shall be responsible for all patent costs; otherwise patent costs shall be shared.
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From page 16...
... The sponsor and the university may further agree that only confidential information directly relevant to the research project will be exchanged, unless the receiving party agrees in writing to accept additional confidential information. In practice, this concern is generally more important to the sponsor, who wants to confine disclosure to information relating to the research project to avoid potential conflicts over ownership of inventions that arise from the sponsor's own research.
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Key Terms

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  • third party
  • invention described
  • application filing
  • written form
  • confidentiality agreement

  • paying patent
  • otherwise patent
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  • outside patent
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  • university confidential
  • patent applicant
  • patent counsel
  • additional confidential
  • safeguard confidential


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