ºÚÁÏÕýÄÜÁ¿

ºÚÁÏÕýÄÜÁ¿ typically works under cost-reimbursable terms with consent required from the Company before exceeding certain budget cap. Fixed price agreements are also theoretically possible depending on the project and the agreement of the department and individuals involved.

Back to Top

ºÚÁÏÕýÄÜÁ¿ owns (the University cannot do work-for-hire). ºÚÁÏÕýÄÜÁ¿ immediately grants to Company a non-exclusive, non-commercial, internal evaluation license. Company will have commercial licensing options (see licensing section below).

Back to Top

Company owns.  Company immediately grants to ºÚÁÏÕýÄÜÁ¿ a non-exclusive, non-commercial, internal license to use for academic/research/administrative purposes.

Back to Top

Jointly owned—either party can use without consent of the other and without accounting to the other.  Assumes Company is not making use of any ºÚÁÏÕýÄÜÁ¿ facilities financed using tax-exempt bonds (we’re not permitted to allow private parties to create and own IP in our tax-exempt-bond financed facilities).

Back to Top

Each party retains ownership to its Background IP.  If Company would like to license any ºÚÁÏÕýÄÜÁ¿-owned Background IP, it can request to negotiate a license.  If available for licensing, the IP would be licensed out at fair market value (FMV) under a separate license agreement.

Back to Top

Confidential information that is marked/designated would be protected for period of 2 years following end of the term of the agreement.

Back to Top

Within 180 days after ºÚÁÏÕýÄÜÁ¿ notifies Company of any disclosures of ºÚÁÏÕýÄÜÁ¿ Foreground or Joint Foreground, Company can let ºÚÁÏÕýÄÜÁ¿ know if Company would like to negotiate an exclusive or a non-exclusive license to the IP listed in the disclosure notification (of course, no non-exclusive license needed for Joint Foreground).  ºÚÁÏÕýÄÜÁ¿ would not negotiate with others during this 180-day period.

Unless otherwise negotiated per the guidelines below, any licenses would be granted under a separate license agreement, with license fees/royalties set at FMV at the time of the licenses. 

Because of ºÚÁÏÕýÄÜÁ¿’s use of tax-exempt bond financing, the only mechanisms for determining license fees in advance are described in the alternates listed below (provided that the personnel working on the project would agree to accept the project with these terms—ºÚÁÏÕýÄÜÁ¿ could not force certain faculty to work under these terms, as they would limit their opportunity to share in licensing proceeds as contemplated under ºÚÁÏÕýÄÜÁ¿’s policies.  These alternatives are listed for discussion purposes because they are legally feasible for ºÚÁÏÕýÄÜÁ¿.  As stated above, once we discuss and understand what Company would like, we would need to touch base with our relevant faculty):

Alternate #1:  Company agrees that all IP coming out of the project belongs to ºÚÁÏÕýÄÜÁ¿ (even any Company Foreground or Joint Foreground).  ºÚÁÏÕýÄÜÁ¿ could then agree to grant Company a non-exclusive license at $X, with the value of “X” pre-set by the parties (where “X” can be any agreed-upon amount, including $0).  Any other parties wanting a non-exclusive license would need to pay FMV at the time of the license.  Company could also negotiate an exclusive instead, but that would need to be FMV at the time of the license and the cost could not be pre-determined.

Alternate #2:  ºÚÁÏÕýÄÜÁ¿ could agree to grant Company a non-exclusive license at $X, with the value of “X” pre-set by the parties (where “X” can be any agreed-upon amount, including $0).  Any other parties wanting a non-exclusive would then also pay $X.  Company could let ºÚÁÏÕýÄÜÁ¿ within the 180 day period that Company would like an exclusive license instead (FMV at the time of the license).  If Company decides to take a non-exclusive at $X, Company could always come back later, and if there have not been any other non-exclusive licenses granted by ºÚÁÏÕýÄÜÁ¿ by that time, Company could ask to “upgrade” its non-exclusive to an exclusive by paying FMV at that time.

Back to Top

Under any commercial license obtained by Company, it would be required to pay money for patent or other IP protections (50% for a non-exclusive, and 100% for an exclusive).  Independent of a license, Company could ask ºÚÁÏÕýÄÜÁ¿ to file IP protections on any ºÚÁÏÕýÄÜÁ¿ Foreground in any country at Company’s expense.  Either party could file IP protections on Joint Foreground, provided that title to the patents, etc. remain in both parties' names.  Contemplated that the parties split IP protection costs on joint filings, BUT a party could elect not to contribute initially and then reimburse the paying party for half the costs at the time the non-paying party decided to license out/use the Joint Foreground for commercial gain.

Back to Top

ºÚÁÏÕýÄÜÁ¿ expects its work product to be fundamental research.  ºÚÁÏÕýÄÜÁ¿ would not restrict participation by nationality.  Company would not pass any export controlled materials to ºÚÁÏÕýÄÜÁ¿ without letting ºÚÁÏÕýÄÜÁ¿ know and discussing arrangements.

Back to Top

Like other universities, ºÚÁÏÕýÄÜÁ¿ does its research on an AS-IS basis and does not offer warranties. 

Back to Top

Because ºÚÁÏÕýÄÜÁ¿ is a private, non-profit and cannot afford to handle claims arising out of its sponsors’ use of IP created at ºÚÁÏÕýÄÜÁ¿, ºÚÁÏÕýÄÜÁ¿ requires indemnification from its sponsors.  Company would indemnify ºÚÁÏÕýÄÜÁ¿ for any claims arising out of Company’s exercise of licenses granted to it by ºÚÁÏÕýÄÜÁ¿ under the agreement.

Back to Top

For a period of 2 years following the end of the agreement, ºÚÁÏÕýÄÜÁ¿ will provide Company 30 day pre-publication review to flag any Company confidential info or IP to be patented.  If Company wants to have patents filed, ºÚÁÏÕýÄÜÁ¿ delays publication for up to another 60 days to get patent applications filed.  Publication review/delay provision would not include pre-review or delays on student theses/dissertations.

Back to Top

Either party could terminate the agreement on 60 days’ advance notice.  ºÚÁÏÕýÄÜÁ¿ would be paid for work performed & non-cancelable commitments made through termination.  Provided ºÚÁÏÕýÄÜÁ¿ is paid for its work, ºÚÁÏÕýÄÜÁ¿ would pass along any work completed to that point and Company would have the licenses/options to them as described in the agreement.

Back to Top

Use of Names

Except for ºÚÁÏÕýÄÜÁ¿ acknowledging Company’s funding in publications, etc., neither party would use the name or trademarks of the other party or any member of its staff in sales promotion work, advertising or other publicity without consent.

Back to Top