Intellectual Property Rights in Industry-Sponsored University Research A 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... ...
ermissic~n elf the federal funding agency.6 Scenari`, 3: The university and sponsor jointly `,wn the intellectual property For intellectual property jointly made by employees calf a university and an industrial spc~nsc~r, under U.S. law, tile parties have joint ownership in and the independent right to exploit the intellectual property, unless otherwise `~greed.8 It cane party wants exclusive rights tic j`'intly-~wnec1 i~tcllcc~1 property, that party needs to obtain the tither p<~rty's rights, by licensing car assignment, air; discussed jet Section IV., Scenario 3 on page 13.
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From page 7... ...
n-excl ~ ice, royaky-free license to the IJniversity Intellectual Proper without the right to grant sublicenses iii) U r2<1rl-exclwsive~ royal hearing license to the University Intellectual Property including tile right lo grant .~`l~licewse.s if a'' live, r`'yuRy-bearing license to the lJrliveraity Intellectual ProperO in the fold of use of including the right to grant *
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From page 8... ...
This commitment may consist of continued funding of the research program, payment of patent costs, internist 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... ...
of any third party licorice which may be nece.s.~ury for the manufacture, use, and hale of any product relating to tI,eJield, size of market, developmenl time and cost, product perJ~,rmance relative to competing 'r~~1ucl.~' and whether the invention ~ covered by ~ sole or joint patetll. It7 Ike event the partial fail lo reach u mutually acceptable a' Cement within the negotiation ',crio(l, Univer.sity shall be entitled t(J llegr~tiate in good faith with one or more third partms a license for any University Intellectual Property and University's interest in any Joint Intellectual Proper~.
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From page 10... ...
Slime potential licensees may not he willing tic spend large ,;u~ns of money developing a product using the intellectual property that the original spc~nsc~r chose not to develop, but could subsequently use rc) y`~lty free or market in fin improved form.
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From page 11... ...
(See the definition of derivative works in footnote 15 on page 17.) 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 can the specificity calf other intellectual property terms in the agreements and the preference of the parties.
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From page 12... ...
However, stone sponsors insist on it. When the parties have sufficient information about the prc~t~ability calf intellectual property resulting from the research, as well as its likely commercial value, a full license agreement may he 12 Contract language for"Field of me provisions" 1See contract language for option for a license I'm!
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