I think there might very well be a problem of charging a license fee to federal
sponsors if their funding is also used for further developing the software.
Besides, if federal funding is used to further improve, enhance, or develop the
software, the federal government would retain a royalty-free non-exclusive
license to the enhanced software. It seems to me the givernment cannot be
charged a license fee for the use of software it is, in effect, paying to
improve, and for which it will have a royalty-free license to use.

Steve

"Herbert B. Chermside" wrote:

> Ruth, you may want to look at this as a possible conflict of interests
> issue, if the PI specifies the use of a program for which the grant must
> pay him a royalty or service fee.  Or if the grant enhances the value of a
> product which he owns.  COI might be reduced if he allows the grant to use
> it for no cost, and then free market would set a value for users other than
> himself -- if any.
>
> Chuck
>
> At 10:29 AM 12/6/01 -0500, you wrote:
> >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
> >future.
> >
> >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
> >
> >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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> Herbert B. Chermside, CRA
> Director, Sponsored Programs Administration
> Virginia Commonwealth University
> PO BOX 980568
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--
Stephen Erickson, Director
Office of Research Administration
Boston College, McGuinn Hall 600
Chestnut Hill, MA 02467
Telephone: 617-552-3345 - On-Campus Fax:  2-0747
Fax to my computer:  413-895-8328

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