Relations Directors Network. The result of these deliberations follows.
This document is divided into four sections: (1) ownership of intellectual property; (2) rights to use intellectual property; (3) procedural issues; and (4) special considerations involving copyright. The term “intellectual property,” as used in both the ownership and rights to use sections, includes both patents and copyrights. 4 Special considerations for both types of intellectual property are noted as necessary. Each section presents a discussion of the relevant issues and suggests reasonable ways of dealing with them. Suggestions for specific contract language, where appropriate, have been included in sidebars throughout the text. (A fully integrated contract is not included. The reader is cautioned that the use of the language provided in this document in the sidebars in an actual contract will require redrafting for consistency of terms and approach.)
The scenarios and the contract language described in this document are intended to provide a range of alternatives, a description of issues to consider when choosing those alternatives, and ways of navigating around potentially contentious obstacles. These alternatives may be useful as starting points for negotiating some of the most obvious and potentially difficult intellectual property rights issues.
The scenarios and the contract language neither cover every conceivable issue and problem, nor are they intended to be used as a standard approach. Each issue and approach to handling it must be considered in the context of the unique nature of the relationship and the objectives of both parties in it. The negotiations are part of the “courtship” that is necessary. Up front negotiation enables each party to learn the other’s objectives and expectations in order to define a successful relationship.
Ownership of Intellectual Property Rights
There are three primary scenarios for the ownership of intellectual property rights: (1) the university owns the intellectual property; (2) the sponsor owns the intellectual property; and (3) the university and sponsor jointly own the intellectual property. As a matter of policy, universities generally require faculty
members and other employees to assign to the university ownership of inventions arising from research undertaken while employed at the university. Faculty members and other university employees usually sign an employment agreement to this effect. The research agreement may provide assurances to the sponsor that such an agreement has been signed.
University policies vary on whether students, research fellows, or visiting scientists are viewed as “employees” when considering ownership of intellectual property rights. Most universities require students and research fellows to assign such rights to the university if the rights are generated in the performance of the sponsored research. There is more variance, however, among university policies on ownership of intellectual property rights of visiting academic or industry scientists participating in sponsored research.
These policies should be discussed during the negotiation of research agreements in which such personnel will be participating so that both parties know what to expect. 5
Contract language for “Faculty members, staff, students, and research fellows”—Each of University’s faculty members, staff, students, and research fellows involved in performing investigations or providing services under this Agreement shall be obligated to University in writing, prior to such involvement, to assign his or her rights to any University Intellectual Property resulting from research under this Agreement.
Scenario 1: The university owns the intellectual property
Most universities own inventions conceived or reduced to practice solely by their employees during the conduct of research. In general, sponsors have accepted this position subject to other considerations such as the right to use intellectual property as discussed in Section IV on page 7.
In general, universities also own software generated during the performance of a sponsored research project, if a university scientist or other employee has created the material.
Contract language for “The university owns the intellectual property”—“University Intellectual Property” means individually and collectively all inventions, improvements, or discoveries and all works of authorship, excluding articles, dissertations, theses, and books, which are generated solely by one or more employees of University in performance of the research agreement during the Contract Period. All rights and title to University Intellectual Property developed under the research agreement belong to University and are subject to the terms and conditions of this Agreement.
Scenario 2: The sponsor owns the intellectual property
Companies from some industrial sectors take the position that the sponsor has a right to own the intellectual property since it has paid for the research. Under this scenario, the