IP Question Ruth Tallman 06 Dec 2001 10:29 EST

Good Morning,

We have a "sticky" situation regarding intellectural property and I
would appreciate your counsel.  One of our faculty came to Lehigh with a
commercial software product which he will be using and improving through
his research activities at Lehigh.  The ownership of the product and
future enhancements has been reviewed, discussed and documented.  The
faculty member owns it and Lehigh doesn't want any rights now or in the

Here's the sticky part:  the faculty member wants to charge his grants a
license fee for two copies of the software each year.  I consider this
"sticky" because I'm not sure that there is a large market for the
software or if it is being marketed, at all.  Also, from the prior
discussions, it was clear that the software will continually be enhanced
and expanded through his work.  What should I do: make sure there are
other customers for/users of the software and that the grants are not
the only paying "customers"?  Confirm that the software is being
enhanced though the work, and then restrict the license to only the
first year for the initial "version" of the software?

Your input would be appreciated.


Ruth Tallman
Office of Research and Sponsored Programs
Lehigh University
526 Brodhead Avenue
Bethlehem, PA  18015
Phone:   (610)758-3024
FAX:    (610)758-5994
E-mail:   xxxxxx@lehigh.edu

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