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Intellectual Property Rights in Industry-Sponsored University Research A 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...
... without accountability to or permission elf the other party may l ~ limited. 13 (contract language for-RIghts to ~I,;e when the sponsor owns the intelle.:tilul property—University re.~erve.` for Unveil a royalty free, irrevocable ricers to make and use such University Intellectual Property within the University for internal nan-commercial purposes only.
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From page 14...
... The university owns the invention It is customary for the university to file the patent application, and most companies are willing to reimburse the university for reasonable patenting costs if they wish to obtain a license to the patent.~3 The sponsor usually has the right to review and cc:~nment on the `~pplicati`~n and subsequent prosecution of the case including patent expenses. When a sponsor pays fair tiling `~ p.~tent There are two possible ways for giving the sponsor time to review research findings; t`, tic reported in the publication or presentation of di.sscrt;'tions, theses, and their <,ral defense Idlest intertenng with the student's matriculation; (1)
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From page 15...
... 15 Contract language for Patent procedures when the university owns the invention," continued ySponsor elects to discontinue the f nancial support of any patent prosecution, in any country, University shall be free to continue prosecution at Universi~y's expense. In such event, University shall hate no further obligation to Sponsor in regard to such patent applications or patents in such country.
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From page 16...
... Similarly, most companies will agree to protect university confidential information. Some universities require that the university investigator personally sign a confidentiality agreement to safeguard confidential information received from the sponsor, rather than the university signing.
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Key Terms

  • confidential information
  • receiving party
  • disclosing party
  • contract language
  • patent applications

  • sponsor owns
  • research agreement
  • patent costs
  • notify sponsor
  • invention described

  • teaching purposes
  • continue prosecution
  • jointly own
  • university intellectual
  • sponsor jointly

  • third party
  • research agreements
  • confidentiality agreement
  • corresponding foreign
  • reasonable patenting

  • pay patent
  • accept additional
  • joint inventions
  • party agrees
  • university signing

  • sponsor decides
  • electronic form
  • personally sign
  • usually shared
  • states require


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