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?