|
G-40, University of California Patent Program, Appendix C, Summary of
Sponsor Patent Rights Applicable to Funding Agreements with Industrial
(For Profit) Sponsors of Research
August 1, 1994
(Office of Technology Transfer address/telephone information
(below) updated 9/99)
APPENDIX C
University of California
SUMMARY OF SPONSOR PATENT RIGHTS APPLICABLE TO FUNDING
AGREEMENTS WITH INDUSTRIAL (FOR PROFIT) SPONSORS OF RESEARCH
This summary provides guidance on the University of California patent
rights to its potential industrial sponsors of research.
A written agreement including a defined specific-term protocol and
detailed budget must be executed between University and Sponsor.
Subject to the conditions set forth below, research funding agreements
may provide to the Sponsor a time-limited first right to negotiate a
license to patentable inventions (other than plant patents) conceived
and reduced to practice in the course of the sponsored research. All
licenses will:
1. be royalty-bearing, rates negotiable and based on general industry
practice for the typo of invention involved;
2. provide for diligent development, commercial marketing, or use as
one condition for retention of the license; and
3. normally require a license issue fee and appropriate royalties.
Licenses under corresponding foreign patent may be granted where
possible on terms and conditions similar to U.S. licenses, except that
Sponsor must agree to reimburse University for its foreign patent
prosecution and maintenance costs.
The following categories have been established:
o When the Sponsor pays all direct and indirect costs (including an
appropriate share of the Principal Investigator's salary) for the
research to be undertaken, the Sponsor may be granted a first right
to negotiate an exclusive or non-exclusive license for the life of
any U.S. patent. Right to sublicense may be granted under an
exclusive license only.
o When the Sponsor pays less than all direct and indirect costs in the
form of money, expendable materials or supplies, or other substantial
assistance, the Sponsor may be granted a first right to negotiate a
non-exclusive license for the life of any U.S. patent.
o When the Sponsor pays only salary or stipend in support of a fellowship
or research assistantship for an individual, the Sponsor may not be
assured of a license but may be considered as a license.
For information, please contact: Campus Contract & Grant Office
or
University of California
Office of Technology Transfer
1111 Franklin Street, 5th Floor
Oakland, California 94607-5200
(510) 587-6000
Authority: Actions of The Regents of the University of California of 16
November 1956, 15 February 1957, and 17 February 1968.
March 1984 (subject to change without notice)
(address change, January 1989)
|
