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Research and Technology Transfer | Office of General Counsel

 

Intellectual Property Rights Clauses Checklist

for Sponsored Research Agreements and Clinical Trial Agreements

Use this Checklist to analyze a Sponsor-offered intellectual property rights clauses, determine what problems, if any, the clauses contain, and determine the editorial changes necessary to conform the clauses to the requirements of the Regents’ Rules and Regulations related to Intellectual Property. Because no two deals are identical, the best language for one transaction may not be the same as that for another transaction. If in doubt, please contact the Office of General Counsel with any questions.

 

Please open or print the following sample clauses for this Checklist: Intellectual Property Rights Clauses.

 

The answer to this Question will determine which portion of the Checklist to complete.

 

Is your study a Clinical Trial?

 

If NO, this s a Sponsored Research Study/Agreement. You may offer the Sponsor any of Clauses 1 through 9 (Clause 5 is probably the most comprehensive). If the Sponsor accepts one of these clauses as is, you are finished with the analysis of your intellectual property rights clause. If you are analyzing a Sponsor-offered clause, complete the Sponsored Research Study/Agreement section.

 

If YES, complete the Clinical Trial Agreement section.

 

Please check the boxes below if the answer to the question is YES.

 

Sponsored Research Study/Agreement

1. Is the allocation of ownership of intellectual property in accordance with U.S. Patent Law?

 

U.S. Patent Law says that if we invent it, we own it, if they invent it, they own it, and if we jointly invent it--that is if both an employee of the University and an employee of the Sponsor would be inventors under US Patent Law--then we would own in jointly. You should answer YES even if the clause does not fully address all possibilities, so long as it does not contradict the above scenario.

 

2. Regarding new inventions, does the clause grant Sponsor:

    a license?

    an option? or

    a right of first refusal to license?

 

If the answers to all three above are NO, do not answer Questions 3 and 4 and click Submit.

3. Does the license option establish time limits for the option to be exercised and time limits for negotiating terms of the license?

4. Does the clause require Sponsor to pay patent costs in order to exercise its option to negotiate a license?

Clinical Trial Agreement

1. Does the Investigator have his or her own reasons for participating in the Trial that could lead to the creation of intellectual property that the University should own?

 

If YES, offer the Sponsor any of Clauses 1 through 9 (Clause 5 is probably the most comprehensive). If Sponsor accepts one or these clauses as is, do not complete the remainder of this Checklist. If you are analyzing a Sponsor-offered clause, check the box and go to Question 2.

 

If NO, use Clause 10. If Sponsor accepts the clause as is, or if Sponsor's clause is substantially the same as ours, or if you are able to edit Sponsor's clause to make it substantially the same. For example, by incorporating the critical elements of our clauses (highlighted in the clause).

 

If Sponsor wants an option to license, skip to Question 3; if not, do not complete the remainder of this Checklist.

2. Is the allocation of ownership of intellectual property in accordance with U.S. Patent Law?

 

U.S. Patent Law says that if we invent it, we own it, if they invent it, they own it, and if we jointly invent it--that is if both an employee of the University and an employee of the Sponsor would be inventors under US Patent Law--then we would own in jointly. You should answer YES even if the clause does not fully address all possibilities, so long as it does not contradict the above scenario.

3. Does Sponsor want an option to license?

 

If YES, offer the Clinical Trial option (Clause 10). If Sponsor accepts the clause as is, do not complete the remainder of this Checklist. If Sponsor will not accept our option and has offered a clause containing a license right, continue to Question 4.

 

4. Regarding new inventions, does the clause grant Sponsor:

    a license?

    an option? or

    a right of first refusal to license?

 

If the answers to all three above are NO, do not answer Questions 3 and 4 and click Submit.

5. Does the license option establish time limits for the option to be exercised and time limits for negotiating terms of the license?

6. Does the clause require Sponsor to pay patent costs in order to exercise its option to negotiate a license?

 

Please direct questions or comments regarding this page to BethLynn Maxwell.

 

Last Updated: September 25, 2011