Preservation of Preexisting Rights - May preserve certain preexisting interests in Intellectual Property as unaffected by the activities to be carried out under the terms of the agreement.
Law of Inventorship
• University owns those inventions created by its investigators;
• Sponsor owns those inventions created by its employees;
• Sponsor and University jointly own inventions created by employees of both;
• Many provisions do not address all these categories of ownership
Reasonably Anticipated Inventions
• One provision allocates ownership along different lines; all the inventions reasonably anticipated or contemplated to be developed pursuant to the study will belong to the Sponsor; everything else will belong to University. See Clause 10.
• This allocation is only appropriate under very narrow circumstances. Use it carefully and in accordance with the notes accompanying Clause 10.
Disclosure is Confidential
It should be clear that disclosure of inventions will be treated confidentially by the recipient(s).
License to Practice University Inventions
Option - This is always set out as an option, not as an outright grant of a license in the Sponsored Research or Clinical Trials Agreement.
Exclusive, Royalty-Bearing, Worldwide License
• Non-exclusive licenses would be appropriate where we actually have viable competitor licensees; otherwise, the chance to license others is an empty opportunity.
• The amount of time and money required to bring most pharmaceuticals to market is most likely to be rewarded by exclusive marketing rights; non-exclusive rights do not usually offer the proper incentives for development in this area (compare software where exclusive rights are superfluous because reverse engineering allows competitors easy entry into the field anyway).
Joint Ownership Issues
• Joint owners do not require a license to commercialize and have no obligation to account to other owners for profits.
• Our ability to find a licensee to compete with Sponsor will usually be very limited.
• Most provisions "dance around" those realities.
• One provision optimistically requires Sponsor to negotiate with us over the commercialization of jointly owned technologies; at least we should be able to sit down with Sponsor and discuss whether a license would be an appropriate way to acknowledge the contribution of University to the development of the jointly owned invention. See Clause 9.
Time Limits - Should contain reasonable time limits for disclosure, exercise of the option and negotiation of the license.
Patent Costs - Should require that where Sponsor acquires most of the economic benefit from a patented invention (by exclusive license) Sponsor should pay associated patent costs.
If Negotiations Break Down a. Right of first refusal. b. University to dispose of inventions without further obligation to Sponsor.
University usually files. Some clauses allow for negotiation as to who will file patent applications, choose counsel, etc. See Clause 9.
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