Â鶹´å

Â鶹´å 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

Â鶹´å owns (the University cannot do work-for-hire). Â鶹´å 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 Â鶹´å 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 Â鶹´å 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 Â鶹´å-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 Â鶹´å notifies Company of any disclosures of Â鶹´å Foreground or Joint Foreground, Company can let Â鶹´å 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).  Â鶹´å 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 Â鶹´å’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—Â鶹´å could not force certain faculty to work under these terms, as they would limit their opportunity to share in licensing proceeds as contemplated under Â鶹´å’s policies.  These alternatives are listed for discussion purposes because they are legally feasible for Â鶹´å.  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 Â鶹´å (even any Company Foreground or Joint Foreground).  Â鶹´å 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:  Â鶹´å 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 Â鶹´å 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 Â鶹´å 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 Â鶹´å to file IP protections on any Â鶹´å 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

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

Back to Top

Like other universities, Â鶹´å does its research on an AS-IS basis and does not offer warranties. 

Back to Top

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

Back to Top

For a period of 2 years following the end of the agreement, Â鶹´å 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, Â鶹´å 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.  Â鶹´å would be paid for work performed & non-cancelable commitments made through termination.  Provided Â鶹´å is paid for its work, Â鶹´å 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 Â鶹´å 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