Intellectual Property Rights in Industry-Sponsored University Research Guide to Alternatives for Research Agreements (1993) / Chapter Skim
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Rights to Use Intellectual Property Under Different Ownership Scenarios
Rights to Use Intellectual Property Under Different Ownership Scenarios
Pages 6-12
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From page 6... ...
In cases when the sponsor acquires ownership of a copyright or invention, the university retains a royalty-free right to use the intellectual property for any internal research and teaching purposes, and may retain the right to sublicense to investigators for research and teaching purposes. Company ownership of intellectual property resulting from federally sponsored research requires the permission of the federal funding agency.6 Contract language for "The sponsor owns the intellectual property" -- University shall assign to Sponsor, upon request, all right, title, and interest in University Intellectual Property.
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From page 7... ...
a non-exclusive, royaltybearing license to the University Intellectual Property including the right to grant sublicenses iv) an exclusive, royalty-bearing license to the University Intellectual Property in the field of use of including the right to grant sublicenses v)
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From page 8... ...
This commitment may consist of continued funding of the research program, payment of patent costs, internal company development, or other considerations, including further funding tied to a patent application or other milestones. The beginning and length of the option period varies widely according to the nature of the anticipated intellectual property and the industry involved.
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From page 9... ...
However, by including an option for a license in the research agreement, negotiation of most license provisions may be deferred until some time after disclosure of the specific intellectual property. Approach 3: The right of first refusal In practice, when the sponsor elects to take a license, the parties are almost always able to reach acceptable terms for a license agreement for the intellectual property resulting from the sponsored research.
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From page 10... ...
If the sponsor elects a non-exclusive, royalty-free license to use the intellectual property solely for research purposes, the university is still able to grant an exclusive license to a third party for commercialization of the intellectual property. If the sponsor takes an exclusive license, the university must retain the right to use the intellectual property in its own research and instructional programs.
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From page 11... ...
If royalties are to be paid for derivative works, the basis and extent of this obligation may be further defined in subsequent license agreements or in the initial research agreement depending on the specificity of other intellectual property terms in the agreements and the preference of the parties. "Under Title XIII Tax-Exempt Bonds and the House and Senate amendments to it, tax-free status of public bonds may be adversely affected under certain conditions, particularly for pre-negotiated royalty rates with exclusive licenses.
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From page 12... ...
However, some sponsors insist on it. When the parties have sufficient information about the probability of intellectual property resulting from the research, as well as its likely commercial value, a full license agreement may be Contract language for "Field of use provisions" -- [See contract language for option for a license and grant of a license on pages 7 and 8, respectively, where fields of use may be specified.]
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