research agreement, when the improvements are made within a defined period after the research agreement ends. In such cases, the university and sponsor should discuss the possibility of options and licenses to improvements. Generally, if the improvement by the university is small, a royalty-free license to the improvement is granted. If it is a substantial enhancement, such as a new algorithm for software in a major piece of equipment, a separate license may be required.
There are several different types of improvements possible. 16 The university and the sponsor need to agree on the definition of “improvements” for the purposes of the research agreement.
Contract language for “Improvements”—Improvements16 to copyrightable University Intellectual Property made by University within __ months following termination of this Agreement shall be provided to Sponsor on a non-exclusive, royalty-free basis, subject to the definition of University Intellectual Property agreed to by the parties. (For the purposes of this Agreement, “Improvements” means ___________.)
VII.
Conclusion/Summary
Four major intellectual property rights issues have been addressed in this document: (1) ownership of intellectual property; (2) rights to use intellectual property; (3) procedural issues; and (4) special considerations involving copyright. Given the different nature and culture of universities and industry, the scenarios and corresponding contract language represent compromises that university and industry representatives on the Task Force believe will provide negotiators with reasonable options for dealing with these issues and with a framework for the general consideration of intellectual property rights within research agreements.
The objective of the Task Force was to facilitate the negotiation of intellectual property rights in research agreements between universities and industry. To the extent this document is helpful in those endeavors, the Task Force will have accomplished its main objective.
